The Complainant is Arnold Clark Automobiles Limited, United Kingdom, represented by Demys Limited, United Kingdom.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.
2. The Domain Names and RegistrarThe disputed domain names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2021. On November 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 24, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 25, 2021, 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 25, 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 the Respondent of the Complaint, and the proceedings commenced on November 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 20, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2021.
The Center appointed Christos A. Theodoulou as the sole panelist in this matter on January 10, 2022. 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 BackgroundThe Complainant is one of Europe’s largest independently owned family-run car dealerships. It sells more than 250,000 vehicles each year and has an annual turnover of GBP 3 billion, according to the uncontested allegations of the Complainant.
The Complainant is the owner of several and relevant United Kingdom trademark registrations:
Reg. No. 2103334 for ARNOLD CLARK, registered on April 4, 1997;
Reg. No. 2300325 for ARNOLD CLARK, registered on December 13, 2002;
The disputed domain names
The Complainant contends that the disputed domain names are identical or confusingly similar to trademarks or service marks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in the disputed domain names, and that the Respondent registered and is using the disputed domain names in bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsBefore engaging in the threefold discussion of paragraph 4(a) of the Policy, the Panel will briefly address the procedural issue relating to the default of the Respondent. The implications of a default in this case are telling since the Complainant has the burden of proof, according to paragraph 4(a) of the Policy (“In the administrative proceeding, the complainant must prove that each of these three elements are present”). As such, the Panel cannot merely grant the Complainant’s request automatically due to the default, but it has to examine instead the evidence presented to determine whether or not the Complainant has proved its case, as required by the Policy. See FNAC v. Gauthier Raymond,WIPO Case No. D2004-0881; Sonofon A/S v. Vladimir Aleksic,WIPO Case No. D2007-0668; Gaudi Trade SpA v. Transure Enterprise Ltd, WIPO Case No. D2009‑1028.
The Panel shall now proceed to the analysis of the evidence in this case, based on the three elements of paragraph 4(a) of the Policy.
A. Identical or Confusingly SimilarThe Complainant has presented evidence to demonstrate that it owns registered trademark rights for ARNOLD CLARK.
The trademark ARNOLD CLARK is included in its entirety in the disputed domain names. The fact that the Respondent has changed one letter in each disputed domain name and added the generic Top-Level Domain (”gTLD“) “.com” in the disputed domain names does not prevent a finding of confusing similarity. In the circumstances of this case, the Complainant has established the criterion of identity or confusing similarity for purposes of the Policy, as many previous UDRP panels have found. See e.g., Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001‑0903; Koninklijke Philips Electronics N.V. v. K. Harjani Electronics Ltd., WIPO Case No. D2002-1021; DFDS A/S v. NOLDC INC, WIPO Case No. D2006‑1070; American Automobile Association, Inc. v. Bladimir Boyiko and Andrew Michailov, WIPO Case No. D2006‑0252.
In view of the above, the Panel finds that the Complainant has discharged its burden of proof on this point and holds that the disputed domain names are confusingly similar to the Complainant’s trademark ARNOLD CLARK.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy provides a non-exhaustive list of circumstances which, if found by a panel to be proved based on its evaluation of the evidence presented, shall demonstrate a respondent’s right to or legitimate interest in a domain name.
Noting that the Respondent is using the disputed domain names to attract users from the Complainant’s website to its own website, in order to deceive Internet users that the disputed domain names are associated with the Complainant, the Panel finds that the Respondent is not in this case making a bona fide offering of goods or services.
With respect to paragraph 4(c)(ii) of the Policy, in this case there is no indication from the present record that the Respondent has been commonly known by the disputed domain names.
With respect to paragraph 4(c)(iii) of the Policy, in this case there is no indication from the record that the Respondent is using the disputed domain names for a legitimate noncommercial or fair use.
Moreover, the Respondent does not seem to have any trademark registrations including the term “Arnold Clark”. Additionally, it is to be noted that the Respondent did not present evidence of any license by the Complainant, with whom there seems to exist no relationship whatsoever.
As a conclusion on this point, the Panel finds that the Complainant has established an uncontested, prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names, and the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithParagraphs 4(b)(i) to 4(b) (iv) of the Policy mention circumstances in order to demonstrate bad faith registration and use of a disputed domain name.
According to the uncontested allegations of the Complainant, the Panel notes that the Complainant already had an established and well-known trademark at the time the disputed domain names were registered.
Further, the Respondent is using the disputed domain names, inter alia, resolving to a variety of websites, some of which attempt to deceive Internet users into downloading and installing malicious software, according to the uncontested allegations of the Complainant. This is not a bona fide use (see eg Andrey Ternovskiy dba Chatroulette v. Transfer Service, Sedo.com, LLC,WIPO Case No. D2018-2510).
Finally, the default of the Respondent in the present circumstances seems to reinforce “the inference of bad faith registration and bad faith use” (The Hong Kong and Shanghai Banking Corporation Limited v. Bill Lynn,WIPO Case No. D2001-0915).
In view of all the circumstances stated above, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names
Christos A. Theodoulou
Sole Panelist
Date: January 17, 2022