Complainant is Arnold Clark Automobiles Limited, United Kingdom, represented by Demys Limited, United Kingdom.
Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / JAIRO PACHECO, Brazil. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 6, 2021. On January 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 6, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on January 7, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 7, 2021. 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 Respondent of the Complaint, and the proceedings commenced on January 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 4, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 5, 2021. The Center appointed Christopher S. Gibson as the sole panelist in this matter on February 11, 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 Founded in 1954, Complainant is one of the Europe’s largest independently owned family-run car dealerships, with over 200 new and used car dealerships throughout the United Kingdom. Complainant now sells more than 250,000 vehicles each year and generates an annual turnover of over GBP three billion. Complainant also supplies business motorcar leasing and fleet services, car finance and insurance, vehicle aftercare, servicing, and accident repairs. Complainant has submitted evidence of press and BBC references concerning its business. Complainant operates a major transactional website at “www.arnoldclark.com”, from which it sells new and used cars and offers related services. Complainant is the proprietor of a number of relevant United Kingdom trademarks, as listed below: Number Mark Jurisdiction Filing date Registration date Classes 2103334 ARNOLD CLARK United Kingdom June 20, 1996 April 4, 1997 36, 37 and 39 2300325 ARNOLD CLARK United Kingdom May 11, 2002 December 13, 2002 35 Complainant has also referenced 16 prior UDRP cases in which it has successfully enforced its rights. The Domain Name resolves to a pay-per-click (“PPC”) advertising page containing third party, commercial advertising links related to Complainant’s business and activities. As provided in the Complaint, they are comprised of terms such as: - “Used Cars”; “Van Rental”; and “Used Cars Sales” Clicking on a sample link takes users to a webpage containing headings such as: - “YesAuto - Shop New & Used Cars - Find Your Own Volvo – YesAuto Makes Car Buying Easy” - “Click And Collect On All Cars - Used Ford Cars - Deals on New & Used Cars” - “100’s of used cars online - Build your deal online” - “Used Cars For Sale - Choose a Quality Used Car - Search Now” Links from these headings lead to websites operated by Complainant’s competitors and other unrelated third parties. None of the websites to which the Domain Name ultimately resolves are affiliated with, endorsed by, or associated with Complainant. 5. Parties’ Contentions A. Complainant (i) Identical or confusingly similar Complainant notes that the registration of its earlier trademark pre-dates the registration of the Domain Name by more than 24 years. Complainant further notes that the Domain Name incorporates Complainant’s mark, ARNOLD CLARK, in its entirety, without any additional adornments. Complainant therefore submits that the Domain Name is identical to a name or mark in which it has rights in terms of the Policy. As is customary in proceedings under the Policy, the generic top-level domain (“TLD”) is usually disregarded for the purposes of comparison with Complainant’s trademarks. However, even if the TLD was included in the comparison, Complainant avers the TLD “.shop” would not distinguish the Domain Name from Complainant’s trademarks. Instead, given Complainant’s activities relating to the sale of vehicles, it would only further increase the potential for confusion among Internet users. (ii) Rights or legitimate interests Complainant contends that Respondent does not have any rights or legitimate interests in the Domain Name and seeks to make out a prima facie case to demonstrate that contention. Complainant has found no evidence that Respondent has been commonly known as ARNOLD CLARK prior to or after the registration of the Domain Name. Respondent is not a licensee of Complainant and has not received any permission or consent from Complainant to use its registered or unregistered trademarks. Complainant has found no evidence that Respondent owns any trademarks incorporating the term ARNOLD CLARK. Equally, Complainant has found no evidence that Respondent has ever traded as ARNOLD CLARK. Complainant further asserts that Respondent’s use of the Domain Name cannot be construed as legitimate noncommercial or fair use, given the use of the Domain Name for commercial purposes through its association with PPC advertising. Complainant contends that given the fame of its marks and that the Domain Name is identical to Complainant’s marks, there is no conceivable use to which the Domain Name could be put now, or in the future, that would confer any legitimate interest upon Respondent. Complainant contends that the PPC advertising links capitalize on the value of Complainant’s marks. The Domain Name uses the attractive force of Complainant’s well-known marks to misdirect users to third party advertising. Such “bait and switch” use is to the clear detriment of Complainant’s rights. Therefore, the related advertising does not and cannot confer any legitimate interest on Respondent. Complainant avers that even if the PPC advertising was placed automatically on the website associated with the Domain Name by the Registrar or other third party, Respondent is still responsible and accountable for the website and the advertising on it. Finally, Complainant emphasizes the Domain Name is registered in the TLD “.shop” and contends that when the TLD is descriptive of or relates to goods or services (including their natural zone of expansion), Respondent’s selection of the TLD would tend to support a finding that Respondent obtained the Domain Name to take advantage of Complainant’s mark. As such, Respondent lacks rights or legitimate interests in the Domain Name. Complainant’s main business is the sale of new and used vehicles, and Complainant avers that the TLD “.shop” is associated with Complainant’s activities and is further evidence that Respondent lacks rights or legitimate interests in the Domain Name. In view of these circumstances, Complainant asserts that it has established a prima facie case that Respondent has no rights or legitimate interests in the Domain Name. (iii) Registered and used in bad faith Complainant contends that Respondent intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of its website in terms of the Policy, paragraph 4(b)(iv). Complainant notes it is well established under the Policy that in most circumstances the display of PPC advertising in association with a domain name that is confusingly similar to a complainant’s trademark is sufficient on its own for a finding of registration and use in bad faith, regardless of whether it was directly placed by the registrant or the registrar. Complainant contends that Respondent cannot disclaim responsibility for third-party generated material automatically appearing on the website associated with the Domain Name. Neither the fact that such links are generated by a third party such as a registrar or auction platform, nor the fact that Respondent itself may not have directly profited, would by itself prevent a finding of bad faith. Thus, Complainant contends that even if the advertising was placed by the Registrar or other third party, Respondent cannot disclaim responsibility for it. The Domain Name is configured with MX and SPF records and is therefore capable of email communication. Complainant avers that, since the Domain Name incorporates Complainant’s marks in their entirety, anyone receiving an email originating from the Domain Name would reasonably assume that it was sent from Complainant. Finally, as previously noted, Complainant highlights that the TLD in question is “.shop”. Considering that Complainant’s main business is the sale of new and used vehicles, Complainant asserts that the TLD “.shop” is closely related to its activities and as such should be taken into account in assessing whether Respondent’s registration of the Domain Name is in bad faith. Complainant therefore concludes that in all these circumstances it is clear on balance that the Domain Name was registered and used in bad faith in terms of the Policy. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings In order to succeed on its Complaint, Complainant must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that: (i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and (iii) Respondent has registered and is using the Domain Name in bad faith. A. Identical or Confusingly Similar The Panel finds that Complainant has established rights in its long-standing and registered trademark, ARNOLD CLARK. See Arnold Clark Automobiles Limited v. Super Privacy Service LTD c/o Dynadot / Zhichao,WIPO Case No. D2020-1406 (finding that Complainant has rights in the mark ARNOLD CLARK). Further, the Panel determines that the Domain Name is identical to the ARNOLD CLARK mark, as the Domain Name incorporates the mark in its entirety, while being registered in the “.shop” TLD. As noted in section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the “applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.” Accordingly, the Panel finds that that the Domain Name is identical to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Regarding the second element of the Policy, section 2.1 of the WIPO Overview 3.0, states that “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”. Moreover, the Policy provides guidance to respondents on how to demonstrate rights or legitimate interests in the domain name. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name, including: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”. In this case, however, Respondent did not submit a reply to the Complaint. Indeed, the Panel determines that Complainant has made out a prima facie case, while Respondent has failed to reply to Complainant’s contentions. The Panel finds that Complainant has not authorized Respondent to use its ARNOLD CLARK trademark; that Respondent is not commonly known by the Domain Name; that Respondent has not used the Domain Name for a legitimate noncommercial or fair use, nor used it in connection with a bona fide offering of goods or services – instead, the Domain Name has been used for PPC advertising. As stated in section 2.9 of the WIPO Overview 3.0: “Applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.” Here, as Complainant has shown, the PPC advertising links on the webpage linked to the Domain Name capitalize on the value of Complainant’s ARNOLD CLARK marks. Therefore, Respondent’s use of the Domain Name in this manner does not give rise to any right or legitimate interest in it. Moreover, as stated in section 2.14 of the WIPO Overview 3.0, “[p]articularly when the TLD is descriptive of or relates to goods or services (including their natural zone of expansion), a geographic region, or other term associated with the complainant, the respondent’s selection of such TLD would tend to support a finding that the respondent obtained the domain name to take advantage of the complainant’s mark and as such that the respondent lacks rights or legitimate interests in the domain name.” As Complainant has demonstrated, its main business is sale of new and used vehicles, and as such, the TLD “.shop” is associated with Complainant’s activities and is further evidence that Respondent lacks rights or legitimate interests in the Domain Name. Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in respect of the Domain Name, which has not been rebutted by Respondent. The Panel therefore finds that Complainant has established the second element of the Policy in accordance with paragraph 4(a)(ii). C. Registered and Used in Bad Faith The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Names in bad faith. Section 3.1 of the WIPO Overview 3.0, states that “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”. Here, the Panel determines that the Domain Name was registered and is being used in bad faith. Based on the evidence, there is little doubt that Respondent was aware of Complainant and its well-established ARNOLD CLARK marks, and intentionally targeted those marks, when registering the Domain Name. The Panel observes that Respondent registered the Domain Name, which incorporates Complainant’s distinctive ARNOLD CLARK trademark in its entirety, with no adornments. Given the reputation of the ARNOLD CLARK trademark and the fact that the Domain Name is so obviously connected with Complainant’s mark, the Panel considers that the only logical conclusion is that Respondent targeted Complainant and its mark when registering the Domain Name. See Accenture Global Services Limited v. ICS Inc. / PrivacyProtect.org,WIPO Case No. D2013-2098 (finding that it was unlikely that the respondent was unaware of complainant and its ACCENTURE mark at the time the disputed domain name was registered, as complainant demonstrated that its mark is well-known globally and is vested with significant goodwill). This point is further confirmed by Respondent’s use of the Domain Name in connection with PPC advertising links. As discussed above, the website to which the Domain Name resolves includes PPC advertising links to goods and services that compete with those offered by Complainant under its ARNOLD CLARK mark. See Arnold Clark Automobiles Limited v. Super Privacy Service LTD c/o Dynadot / Zhichao,WIPO Case No. D2020-1406 (finding the respondent traded on the goodwill of Complainant’s ARNOLD CLARK marks when the respondent used the disputed domain name to resolve to a PPC website offering links to information regarding “employee benefits” as well as automobile and vehicle sales and rentals, which are goods and services that compete with those offered by Complainant). In view of this use, the Panel determines that Respondent intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of its website. See Policy, paragraph 4(b)(iv). Further, as section 3.5 of the WIPO Overview 3.0 states, Respondent cannot disclaim responsibility for the content on the website linked to the Domain Name, even if that content is automatically generated: “Particularly with respect to ‘automatically’ generated pay-per-click links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (nor would such links ipso facto vest the respondent with rights or legitimate interests). Neither the fact that such links are generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith.” Finally, in accordance with section 3.2.1 of the WIPO Overview 3.0 – which sets out additional bad faith consideration factors and includes “the chosen top-level domain, particularly where corresponding to the complainant’s area of business activity” – the Panel in making an assessment of bad faith registration and use can consider that the TLD “.shop” is closely related to Complainant’s main business, the sale of new and used vehicles. In conclusion, in this case, where Respondent failed to submit a reply to Complainant’s contentions, the Panel determines that, for all of the above reasons, the Domain Name was registered and is being used in bad faith. Accordingly, Complainant has satisfied the third element of the Policy 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 Domain Name Christopher S. Gibson
Sole Panelist
Date: March 17, 2021
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