The Complainant is Arnold Clark Automobiles Limited, United Kingdom (“UK”), represented by Demys Limited, UK.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Carolina Rodrigues, Fundacion Comercio Electronico, Panama. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 24, 2020. On November 24, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 24, 2020, 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 November 26, 2020, 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 November 26, 2020. 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 of the Complaint, and the proceedings commenced on December 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 27, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 29, 2020. The Center appointed Gabriela Kennedy as the sole panelist in this matter on January 15, 2021. 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 is a large independent car dealer in Europe with over 200 car dealerships throughout the UK. The Complainant now sells more than 250,000 vehicles each year and generates an annual turnover of over GBP 3 billion. The Complainant also offers a variety of vehicle-related services, such as business motorcar leasing and fleet services. The Complainant owns exclusive rights over the ARNOLD CLARK trade mark. In particular, the Complainant is the proprietor of a number of trade mark registrations for the ARNOLD CLARK mark in the UK, including, inter alia, the ARNOLD CLARK trade mark (Registration No. 2103334) registered on April 4, 1997, and the ARNOLD CLARK trade mark (Registration No. 2300325) registered on December 13, 2002. The Complainant also owns and operates various domain names that contains the ARNOLD CLARK trade mark, including The Respondent registered the Disputed Domain Name on March 4, 2020, and it resolves to a pay-per-click (“PPC”) page with some of the links connected to the Complainant’s competitors. 5. Parties’ Contentions A. Complainant The Complainant’s primary contentions can be summarised as follows: (a) The Disputed Domain Name is confusingly similar to the Complainant’s ARNOLD CLARK trade mark. The Disputed Domain Name incorporates the Complainant’s ARNOLD CLARK trade mark in its entirety with the addition of the word “sell”. The word “sell” is closely associated with the Complainant’s business activities, being the sale of vehicles, and it does not distinguish the Disputed Domain Name from the Complainant’s ARNOLD CLARK trade mark. The addition of the word “sell” in fact increases the potential for confusion among Internet users; (b) The Respondent does not have any rights or legitimate interests in the Disputed Domain Name. There is no evidence to demonstrate that the Respondent has been commonly known by the Disputed Domain Name and the Complainant has never authorised or given permission to the Respondent, who is not associated with the Complainant in any way, to use its ARNOLD CLARK trade mark. The Respondent’s use of the Disputed Domain Name does not constitute legitimate noncommercial or fair use as the Disputed Domain Name has been used for commercial purposes through pay per click advertising, which capitalises on the value of the Complainant’s ARNOLD CLARK trade mark; and (c) The Disputed Domain Name was registered and is being used in bad faith as the Respondent, through PPC advertising, attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s ARNOLD CLARK trade mark. The Disputed Domain Name is capable of being used for email communication and there is a possibility that the customers who receive an email originating from the Disputed Domain Name may mistakenly assume that it was sent from the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. The fact that the Respondent has not submitted a Response does not automatically result in a decision in favour of the Complainant. However, the Respondent’s failure to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complainant as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies,WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403). 6. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements: (i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used by the Respondent in bad faith. A. Identical or Confusingly Similar The Panel accepts that the Complainant has rights in the ARNOLD CLARK trade mark, based on its various trade mark registrations. It is well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the Top-Level Domain extension (“.com” in this case) may be disregarded. See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Disputed Domain Name incorporates the Complainant’s ARNOLD CLARK trade mark in its entirety with the addition of the word “sell”. UDRP panels have consistently found that the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) to a mark will not alter the fact that the domain name at issue is confusingly similar to the mark in question. See section 1.8 of the WIPO Overview 3.0. Therefore, the mere addition of the word “sell” does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s ARNOLD CLARK trade mark. As such, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s ARNOLD CLARK trade mark, and accordingly, paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests Once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent in a disputed domain name, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0. The Panel accepts that the Complainant has not authorised the Respondent to use the ARNOLD CLARK trade mark, and there is no relationship between the Complainant and the Respondent, which would otherwise entitle the Respondent to use the ARNOLD CLARK trade mark. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to show rights or legitimate interests in the Disputed Domain Name. As the Respondent has not submitted a Response, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence. Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following: (i) before any notice to him of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services; (ii) the Respondent has been commonly known by the Disputed Domain Name, even if it has acquired no trade mark or service mark rights; or (iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue. There is no evidence to suggest that the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services. The Panel agrees with the Complainant that the Respondent’s use of the Disputed Domain Name cannot be regarded as legitimate noncommercial or fair use as the Disputed Domain Name resolves to a website that contains commercial PPC links, which ultimately resolve to websites operated by the Complainant’s competitors and other unrelated third parties. Such use of the Disputed Domain Name gives a false impression that the Disputed Domain Name is associated with and/or endorsed by the Complainant and is capable of misleading and diverting visitors, and tarnishing the Complainant’s ARNOLD CLARK trade mark. In addition, there is also no evidence to prove that the Respondent has trade mark rights corresponding to the Disputed Domain Name, or that it has become known by the Disputed Domain Name. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trade mark by an unaffiliated entity (particularly domain names which incorporate the mark plus a descriptive term) can already by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0. The Complainant’s ARNOLD CLARK trade mark appears to be fairly well known. A quick Internet search shows that the top search results returned for “Arnold Clark” are the Complainant’s official website and several third party websites making references to the Complainant’s products and services. Therefore, the Respondent must have been aware of the Complainant and its rights in the ARNOLD CLARK trade mark when registering the Disputed Domain Name. The fact that the Disputed Domain Name incorporates the Complainant’s ARNOLD CLARK trade mark in its entirety plus the word “sell” related to the Complainant’s business also creates a presumption of bad faith. In addition, the Panel finds that the following factors further support a finding that the Disputed Domain Name was registered and is being used by the Respondent in bad faith: (i) the Respondent failed to respond to the Complainant’s contentions and has provided no evidence of any actual or contemplated good faith use by it of the Disputed Domain Name; (ii) the Respondent registered the Disputed Domain Name using a privacy shield to conceal its identity (see Primonial v. Domain Administrator, PrivacyGuardian.org / Parla Turkmenoglu,WIPO Case No. D2019-0193); (iii) it is difficult to conceive of any plausible use of the Disputed Domain Name that would amount to good faith use, given that the Disputed Domain Name is confusingly similar to the Complainant’s ARNOLD CLARK trade mark and official domain name (iv) the Respondent has already been involved in several previous UDRP cases filed by the Complainant. For example, Arnold Clark Automobiles Limited v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2019-1811, Arnold Clark Automobiles Limited v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2019-1810, and Arnold Clark Automobiles Limited v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2019-1034. In the circumstances, the Panel finds that the Respondent registered and has been using the Disputed Domain Name in bad faith, and paragraph 4(a)(iii) of the Policy has been 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 Gabriela Kennedy
Sole Panelist
Date: January 29, 2021
Full & Egal Universal Law Academy