The Complainant is Arnold Clark Automobiles Limited, United Kingdom, represented by Demys Limited, United Kingdom.
The Respondent is Quan Zhong Jun, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 17, 2019. On October 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 18, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 23, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 23, 2019. On October 23, 2019, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On October 23, 2019, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent, in English and Chinese, of the Complaint, and the proceedings commenced on October 31, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 20, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 21, 2019. The Center appointed Joseph Simone as the sole panelist in this matter on December 4, 2019. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant, Arnold Clark Automobiles Limited, was founded in 1954 and is among Europe’s largest independently owned family-run car businesses. It has over 200 new and used car dealerships throughout the United Kingdom. It sells more than 250,000 vehicles each year and generates an annual turnover of over GBP 3 billion. The Complainant also supplies business motorcar leasing and fleet services, car finance and insurance, vehicle aftercare, servicing, Ministry of Transport tests and accident repairs. The Complainant owns several trademark registrations for ARNOLD CLARK, including the following: - United Kingdom trademark registration No. 2103334 registered on June 20, 1996 in international classes 36, 37 and 39; The Complainant operates a website offering its services at “www.arnoldclark.com”. The disputed domain name was registered on September 25, 2019. Outside of China, it redirects to a pay-per-click (“PPC”) advertising page containing links related to the Complainant’s field of activity in the car industry. These links resolve to webpages containing additional links, among them, to websites operated by the Complainant’s competitors. Within China, the disputed domain name redirects users to a Chinese language website which displays links that direct users to the website “meiguo.com”. 5. Parties’ Contentions A. Complainant The Complainant contends that the conditions for transfer of the disputed domain name established under paragraph 4(a) of the Policy have been satisfied in this case. The Complainant contends that the disputed domain name is confusingly similar to its trademark ARNOLD CLARK, because it only differs by the omission of the final letter “k”. The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name for the following reasons. The Respondent is not commonly known by the names “Arnold Clark”, “Arnold Clar”, or any similar name. The Respondent is not a licensee of the Complainant and has not been authorized to use its trademarks. There is no evidence that the Respondent owns any trademarks incorporating the term “arnold clark” or “arnold clar” or has ever traded using these names. The website uses a “bait and switch” technique to redirect users to PPC advertising, and as such, it is not being used for a legitimate noncommercial or fair purpose. Finally, the Complainant submits that the Respondent registered and is using the disputed domain name in bad faith for the following reasons. The disputed domain name was registered as a typographical variant of its mark ARNOLD CLARK, which causes users looking for the Complainant’s website to be misled or deceived. The disputed domain name has been configured with MX and SPF records, which means it can be used to send email, and recipients of such email may confuse the sender with the Complainant. The disputed domain name is used for PPC advertising that capitalizes on the Complainant’s reputation. Even if the links were automatically generated, a party cannot disclaim responsibility for content which appears on its website. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the Proceedings In accordance with paragraph 11 of the Rules: “[…] the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” Therefore, the default language of the proceedings shall be Chinese. However, the Complainant filed the Complaint in English and requested that English be the language of the proceeding. The Complainant submits that the disputed domain name is in Roman letters, the term “arnoldclar” has no other meaning other than as a reference to the Complainant, and the website contains advertising in English. These factors indicate the Respondent is familiar with the English language. The key consideration in choosing the language of proceedings is to ensure that each party has a fair opportunity to present its case. The Respondent was notified of each step of the proceedings in both Chinese and English. The Respondent did not respond regarding the choice of language, or submit a formal response. Therefore, the Respondent had ample opportunity to present a case, and requiring the Complainant to submit the Complaint in Chinese for the Respondent would be an unwarranted burden and expense. In addition, the Respondent chose to register a domain name in Roman characters and outside of China, it resolves to PPC advertising in English. Therefore, it can be assumed the Respondent targets English-speaking consumers. The Panel believes there is no prejudice caused to the Respondent if the proceeding is conducted in English, therefore it shall proceed in English. 6.2 Substantive Issues A. Identical or Confusingly Similar Under the first element of the Policy, a complainant must prove that a disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights (paragraph 4(a)(i) of the Policy). The Complainant has provided evidence that it owns several trademark registrations for ARNOLD CLARK, and has therefore shown its rights in the trademark. The test for whether a domain name is identical or confusingly similar to the Complainant’s trademark is fairly straightforward and a domain name incorporating the entirety or dominant feature of the relevant mark will normally satisfy the threshold (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505; V&S Vin & Sprit AB v. Ooar Supplies,WIPO Case No. D2004-0962). It is standard practice to disregard the Top-Level Domain (“TLD”) (see, e.g. F. Hoffmann-La Roche AG v. Domain Admin/xcite,WIPO Case No. DCC2007-0003). In this case, the disputed domain name reproduces the Complainant’s trademark with only the omission of the letter “k”. It is otherwise identical in appearance and pronunciation. Therefore, the disputed domain name is confusingly similar to the Complainant’s trademark and the first requirement of the Policy is satisfied. B. Rights or Legitimate Interests Under the second element, a complainant must demonstrate that the respondent should be deemed as having no rights or legitimate interests in respect of the disputed domain name (paragraph 4(a)(ii) of the Policy). The Complainant states it has no affiliation with the Respondent and has never authorized it to register the disputed domain name. There is also no evidence that the Respondent is commonly known by the disputed domain name. In these circumstances, and where the disputed domain name is highly similar to the Complainant’s distinctive trademark, there are limited scenarios which could vest rights or legitimate interests in the Respondent. In accordance with paragraph 4(c) of the Policy, the Panel may consider whether the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent to mislead consumers, or, whether the Respondent can show it had demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The Respondent uses the disputed domain name to set up a webpage of PPC advertising links. Outside of China, these links are related to the Complainant’s field of activity in the car industry and resolve to further webpages including competitors’ websites. In China, these links appear to be unrelated. In either case, the purpose of the links appearing on the website is for commercial gain, derived from consumer confusion with the Complainant. This is not a bona fide use of the disputed domain name and cannot grant the Respondent rights or legitimate interests. As the Respondent failed to submit a response presenting any evidence otherwise, the Panel concludes that the second requirement of the Policy is satisfied. C. Registered and Used in Bad Faith Under the final element, the Complainant must prove that a disputed domain name was registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy). The Complainant has demonstrated a long history of using the mark ARNOLD CLARK as a company name and trademark, which is derived from the name of the company’s founder Arnold Clark. Given the fame of the Complainant, it is highly unlikely that the Respondent independently devised the disputed domain name containing “arnoldclar”. Therefore, the Panel concludes that the Respondent knew of the Complainant and its rights, and the registration is an intentional misspelling of the Complainant’s name. The Respondent then proceeded to use the disputed domain name to set up a website for PPC advertising. It is clear that the Respondent intends to generate revenue by virtue of the Complainant’s reputation, and the likelihood that Internet users may come across the website when searching for the Complainant’s official website at “www.arnoldclark.com”. The fact that some links resolve to competitors’ websites interferes with the Complainant’s business. It is possible that the PPC links are automatically generated and / or the Respondent does not directly profit from the links. However, this does not absolve the Respondent of its obligation to ensure that its registration does not infringe the legal rights of a third party. Therefore, the Panel concludes that the disputed domain name was registered and is being used in bad faith, and the third requirement of the UDRP is satisfied. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name Joseph Simone
- United Kingdom trademark registration No. 2300325 registered on December 13, 2002 in international class 35.
Sole Panelist
Date: December 18, 2019
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