The Complainants are Global Car Group Pte Ltd., Singapore (the “First Complainant”), Cars24 Services Private Limited, India (the “Second Complainant”), and Global Access Cars Automobile Trading L.L.C., United Arab Emirates (the “Third Complainant”), represented by Sim and San, Attorneys at Law, India.
The Respondent is Saygin Yalcin, SellAnyCar.com FZE, United Arab Emirates, represented by Al Tamimi & Co, United Arab Emirates.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 3, 2021. On September 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 7, 2021, 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 a Complaint Deficiency Notification to the Complainant on September 8, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to cure deficiencies and submit an amended Complaint. The Complainant filed a first amended complaint on September 12, 2021, and a second amended complaint in September 19, 2021.
The Center verified that the Complaint together with the Amended Complaints 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 September 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 11, 2021. On October 5, 2021, the Respondent requested a 10-day extension of the due date for Response. On the same date, the Center granted the automatic four calendar day extension under Paragraph 5(b) of the Rules, so the due date for the Response was extended to October 15, 2021. The Response was filed with the Center on October 15, 2021.
The Center appointed Assen Alexiev, Ashwinie Kumar Bansal and Mohamed-Hossam Loutfi as panelists in this matter on November 9, 2021. The Panel finds that it was properly constituted. Each member of 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 First Complainant is an e-commerce company incorporated under the laws of Singapore. It is engaged through its subsidiaries in buying and selling used cars and auto parts to businesses and consumers in India, Australia and the United Arab Emirates. The Second Complainant is a subsidiary of the First Complainant, which operates in India through a network of 215 branches in 87 cities. The Third Complainant is a subsidiary of the First Complainant, which operates in the United Arab Emirates.
The First Complainant is the owner of the following trademark registrations for the term “cars24” (the “CARS24 trademark”):
Trademark Registration number Jurisdiction Registration date International Class(es) of goods or servicesCARS24
3004750
India
July 8, 2015
1
CARS24
3004751
India
July 8, 2015
9
CARS24
3004752
India
July 8, 2015
11
CARS24
3004753
India
July 8, 2015
12
CARS24
3004754
India
July 8, 2015
16
CARS24
3004755
India
July 8, 2015
35
CARS24
3004756
India
July 8, 2015
36
CARS24
3004757
India
July 8, 2015
37
CARS24
3004763
India
July 8, 2015
40
CARS24
3004764
India
July 8, 2015
42
In 2015, the First Complainant acquired the domain name
The Respondent is an online trader of used cars in the United Arab Emirates. It was founded by Mr. Saygin Yalcin who is its Chief Executive Officer.
The Respondent is the owner of the following trademark registrations (the “Respondent’s trademark”):
− the United Arab Emirates trademark CARS24 with registration No. 336214, applied for on September 29, 2020 and registered on December 14, 2020 for services in International Class 37; and
− the Saudi Arabia trademark CARS24 with registration No. 1442010184, registered on March 15, 2021 with a priority date of September 29, 2020 for services in International Class 37.
The disputed domain name was registered on September 9, 2020. It resolves to a website that offers a car buying service and contains a notice that it is an official partner of “SellAnyCar.com”.
5. Parties’ Contentions A. ComplainantThe Complainants state that the disputed domain name is confusingly similar to their CARS24 trademark, because the trademark is incorporated in the disputed domain name in its entirety.
According to the Complainants, the Respondent has no rights or legitimate interests in respect of the disputed domain name, because it is not a licensee of the Complainants and has not been authorized by them to use the CARS24 trademark in a domain name or otherwise, and because the Respondent is not commonly known by the name CARS24, since the Respondent’s name, SellAnyCar.com FZE, does not bear any resemblance to the disputed domain name. The Complainants also note that the Respondent has registered the disputed domain name under the “.me” country-code Top-Level-Domain (“ccTLD”) without having any rights or legitimate interests in Montenegro.
The Complainants state that the CARS24 trademark is significantly unique and used by the Complainants as a trademark for a vast array of business activities. According to them, the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services and has not made a legitimate noncommercial or fair use of the disputed domain name before being aware of the dispute, but is taking an unfair advantage of the goodwill in the Complainants’ CARS24 trademark to offer competing services by falsely suggesting an affiliation with the Complainants.
The Complainants point out that the Respondent was aware of them since 2016 and has registered the disputed domain name being aware of the impending entry of the Complainants to the market of the United Arab Emirates. On September 6, 2020, the Respondent emailed the Co-Founder and Chief Operating Officer of the Complainants stating:
“I hear you are looking at the UAE. Can I help?”
The addressee of this email did not respond to it. On September 9, 2020, the Respondent registered the disputed domain name, and on September 10, 2020, it sent a further message to the same representative of the Complainants stating “I need to understand what your mission is. Maybe there is a better solution than trying to compete”. On September 24, 2020,the Respondent filed for registration of the Respondent’s trademark. The Complainants add that the Respondent has not used the brand CARS24 prior to September 2020, when it became aware of the Complainants’ intentions to enter the market of the United Arab Emirates. Afterwards, the Respondent included the terms CARS 24 and cars24.me in its branding. According to the Complainants, this sequence of facts shows that the Respondent registered the disputed domain name and its trademark many years after the Complainants started using the CARS24 trademark and subsequent to its knowledge about the entry of the Complainants into the market of the United Arab Emirates, and did so to cause hurdles and prevent the entry of the Complainants there and to divert the Internet traffic to the Respondent’s competing services and exploit the goodwill and reputation of the Complainants’ CARS24 trademark by impersonation.
The Complainants contend that the disputed domain name was registered and is being used in bad faith. They note that the Respondent registered the disputed domain name on September 9, 2020, by which time the Complainants’ CARS24 trademark had been in continuous and extensive use for more than 5 years in connection with used cars, and had acquired considerable goodwill and renown worldwide, including in the United Arab Emirates, where the Respondent is based. According to the Complainants, the Respondent registered the disputed domain name primarily for the purpose of disrupting the business of the Complainants and their smooth entry into the market in the United Arab Emirates, which is evident from the correspondence between the Parties exchanged in September 2020.
The Complainants maintain that the Respondent is using the disputed domain name to intentionally attract, for commercial gain, internet users to its website by creating a likelihood of confusion with the Complainants’ CARS24 trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Complainants add that the disputed domain name, which is confusingly similar to the Complainants’ CARS24 trademark, is currently being used by the Respondent to point to a website promoting a similar service for commercial gain, thus misdirecting Internet users, who may be seeking the Complainants’ services, and gaining an unfair advantage of the Complainants’ goodwill and reputation.
B. RespondentThe Respondent requests the Panel to deny the remedies requested by the Complainant, and maintains that there is no basis for transferring the disputed domain name to the Complainant.
The Respondent maintains that it has rights and legitimate interests in the disputed domain name. It submits that its business started in 2013 with the flagship brand SELLANYCAR with registration No. 5071609, registered on November 1, 2016 followed by its related brands BUYANYCAR and CASHANYCAR. On January 31, 2016, Mr. Saygin Yalcin registered the domain name
The Respondent refutes the Complainants’ allegations that there has been no use of the disputed domain name in connection with a bona fide offering of goods and services before becoming aware of the Complainants’ disputes. It notes that it holds valid trademark registrations in the United Arab Emirates and Saudi Arabia, which are prior to the rights that the Complainant may have in the United Arab Emirates and prior to any notice of the present dispute. It claims that it was the first user of the brand CARS24 in the United Arab Emirates, and that the Complainants only entered this market in early 2020.
The Respondent states that he has neither registered nor used the disputed domain name in bad faith. The Respondent notes that the Complaint is solely based on the Complainants’ rights to the CARS24 trademark in India – a territory where the Respondent does not operate. The Respondent points out that trademark rights are territorial and the Complainants will need to establish the existence of its alleged trademark rights before the competent United Arab Emirates courts in order to overcome the Respondent’s earlier trademark registration rights there. The Respondent states that it cannot have registered the disputed domain name in bad faith, as the Complainants had no use or rights to the disputed domain name at that time.
According to the Respondent, its use of the disputed domain name does not suggest an association with the Complainants, because its flagship SELLANYCAR trademark is included in the disputed domain name.
The Respondent points out that he has no intention to associate with the Complainants nor to impersonate with them as alleged by the Complainants.
The Respondent denies the Complainants’ claims that the Respondent registered the disputed domain name in order to disrupt the Complainants’ business plans in the United Arab Emirates. The Respondent does not deny prior knowledge of the Complainants and that the Parties have competing business interests. However, according to the Respondent, this did not play any role in the adoption and use of the disputed domain name. According to the Respondent, there is no correlation of the Parties’ communications in September 2020 with the Respondent’s registration of the disputed domain name, and these communications provide no indication of the Respondent’s bad faith. On the contrary, the Complainants have engaged in acts of unfair competition when they decided to solicit several key employees of the Respondent in an act of unfair competition and unethical business practices. The Parties’ communications were in relation to those former employees of the Respondent who were employed by the Complainants.
The Respondent submits that these matters are not within the scope of the UDRP and will be dealt with separately between the Parties before the United Arab Emirates courts for unfair competition and unethical business practices committed by the Complainants.
6. Discussion and Findings 6.1. Procedural issue - Consolidation of ComplainantsThe three Complainants have jointly filed the Complaint against the Respondent. They submit that the First Complainant is the owner of the CARS24 trademark, while the Second Complainant and the Third Complainants are its subsidiaries. The Respondent has made no comments on this issue.
The Panel is satisfied that a consolidation of the three Complainants in this proceeding against the Respondent in respect of the disputed domain name is justified and would be appropriate in the circumstances.
As summarized in section 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), in assessing whether a complaint filed by multiple complainants may be brought against a single respondent, UDRP panels look at whether the complainants have a specific common grievance against the respondent or the respondent has engaged in a common conduct that has affected the complainants in a similar fashion, and whether it would be equitable and procedurally efficient to permit the consolidation. Prior UDRP panels have held that a “specific common grievance” is shown where the complainants have a common legal interest in the trademark rights on which the complaint is based or have been the target of common conduct by the respondent, which has clearly affected their individual legal interests in a similar fashion.
The prerequisites for consolidation appear to be present in the case at hand. The Complainants have submitted evidence that the First Complainant holds registered trademark rights in the CARS24 trademark, submit that they are affiliates and they all use the CARS24 trademark for their businesses, and are represented by the same counsel in this proceeding. The conduct they allege that the Respondent has engaged into may affect, if present, the rights and legitimate interests of each of them. Neither of the Parties has made the Panel aware of any reason why a consolidation of the proceeding would not be equitable or procedurally inefficient.
In view of the above, the Panel decides to allow the consolidation of the three Complainants in a single proceeding against the Respondent in respect of the disputed domain name.
6.2. Unsolicited Supplemental FilingThe Complainants made an unsolicited supplemental filing on October 28, 2021, after the filing of the formal Response.
The Panel notes that the Complainants have not raised convincing arguments why their supplemental filing should be admitted in the proceeding, and its content does not justify such admission. The document reiterates some of the arguments already raised in the Complaint and refers to already submitted pieces of evidence, without referring to any new evidence, or discusses facts that could have been discussed in the Complaint, since they had occurred and were known to the Complainants prior to the filing of the Complaint, such as the trademark registrations of the Respondent.
In view of the above considerations, the Panel decided not to allow the Complainants’ supplemental filing in this proceeding. However, the Panel notes that even if such unsolicited supplemental filing was to be considered, its content would not have changed the outcome of this decision.
6.3. Substantive issuesPursuant to the Policy, paragraph 4(a), the Complainants must prove each of the following to justify the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Complainants have jointly filed the Complaint and provide evidence that the First Complainant is the owner of the CARS24 trademark, registered in India. They submit that they are affiliates and they all use the CARS24 trademark for their businesses. As discussed in section 1.4.1 of the WIPO Overview 3.0, a trademark owner’s affiliate is considered to have rights in a trademark under the UDRP for purposes of standing to file a complaint. As discussed in section 1.1.2 of the WIPO Overview 3.0, noting in particular the global nature of the Internet and Domain Name System, the jurisdiction where the trademark is valid is not considered relevant to panel assessment under the first element. In view of the above, the Panel accepts that the Complainants have rights in the CARS24 trademark for the purposes of the Policy and have standing to jointly file the Complaint.
The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the TLD section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of the WIPO Overview 3.0. The Panel sees no reason not to follow the same approach here, so it will disregard the “.me” ccTLD section of the disputed domain name.
The relevant part of the disputed domain name for purposes of the first element analysis is therefore the sequence “cars24”, which is identical to the word element of the CARS24 trademark.
In view of the above, the Panel finds that the disputed domain name is identical to the CARS24 trademark in which the Complainants have rights.
B. Rights or Legitimate InterestsWhile the overall burden of proof in UDRP proceedings is on the complainant, prior UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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. See section 2.1 of the WIPO Overview 3.0.
The Complainants contend that the Respondent has no rights or legitimate interests in the disputed domain name, because it is not commonly known by the name CARS24 and has not been authorized by the Complainants to use the CARS24 trademark. The Complainants also note that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services and has not made a legitimate noncommercial or fair use of the disputed domain name before being aware of the dispute. According to the Complainants, the Respondent registered and used the disputed domain name subsequent to its knowledge about the entry of the Complainants into the market of the United Arab Emirates, and did so to cause hurdles and prevent the entry of the Complainants there and to divert the Internet traffic to the Respondent’s competing services and exploit the goodwill and reputation of the Complainants’ CARS24 trademark by impersonation. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent submits that it registered the disputed domain name as a continuation to its other domain name
The Complainants’ CARS24 trademark was registered in 2015. They acquired the domain name
In addition, the Panel notes that the disputed domain name is registered in the “.me” ccTLD, which is the ccTLD for Montenegro. The Respondent has however not submitted any arguments or evidence that its activities have any relation to this jurisdiction.
In view of the above, the Respondent’s explanation that it registered the disputed domain name as a continuation to its other domain name
The Respondent has registered trademarks for CARS24 in the United Arab Emirates and in Saudi Arabia. As discussed in section 2.12 of the WIPO Overview 3.0, Panels have recognized that a respondent’s prior registration of a trademark which corresponds to a domain name will ordinarily support a finding of rights or legitimate interests in that domain name for purposes of the second element. The existence of a respondent trademark does not however automatically confer rights or legitimate interests on the respondent, and Panels have generally declined to find respondent rights or legitimate interests in a domain name on the basis of a corresponding trademark registration where the overall circumstances demonstrate that such trademark was obtained primarily to circumvent the application of the UDRP or otherwise prevent the complainant’s exercise of its rights (even if only in a particular jurisdiction). The Panel accepts that the circumstances of the present case support such a conclusion, as the Respondent’s trademarks were filed only after the exchange of correspondence between the Parties in September 2020, when the Respondent must have become aware that it would not achieve to reach an agreement with the Complainants that would prevent the competition between the Parties in the United Arab Emirates, and the evidence in the case submitted by the Respondent itself shows that since 2016, the brand that the Respondent operates under is what it calls its “flagship” brand SELLANYCAR.COM. Therefore, it appears to the Panel that, similarly to the registration of the disputed domain name, the registration by the Respondent of its trademarks for CARS24 in the United Arab Emirates and in Saudi Arabia is likely to have been made not as a good faith evolution of its brand, but to strengthen its bargaining position vis-à-vis the Complainants or block their expansion to the United Arab Emirates.
Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The disputed domain name is identical to the CARS24 trademark and was registered five years later. It resolves to a website that offers services that compete with the services offered by the Complainants, but contains no disclaimer for the lack of relationship between the Parties. This may confuse Internet users that the Respondent’s website and the services featured on it originate from or are affiliated to the Complainants. The Respondent does not deny that it knew the Complainants when it registered the disputed domain name, and that the Parties are competitors.
As discussed in the section on rights and legitimate interests, the correspondence exchanged between the Parties and the Respondent’s actions, including the registration of the disputed domain name and the activation of the associated website, as well as the circumstances surrounding the registration by the Respondent of its trademarks for CARS24 in the United Arab Emirates and in Saudi Arabia appear as more likely to have been made not as a good faith evolution of its brand, but targeting the Complainants and their CARS24 trademark in an attempt to strengthen the Respondent’s bargaining position vis-à-vis the Complainants or block their expansion to the United Arab Emirates.
In view of the above, the Panel concludes that the Respondent was well aware of the goodwill of the Complainant’s CARS24 trademark when it registered the disputed domain name, and that it is more likely that the Respondent registered and used it for the purpose of disrupting the expansion of the business of the Complainants who are its competitors, or in an intentional attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainants’ CARS24 trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the services featured on it.
Therefore, the Panel finds that the disputed domain name has been registered and is being used 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 name
Assen Alexiev
Presiding Panelist
Ashwinie Kumar Bansal
Panelist
Mohamed-Hossam Loutfi
Panelist
Date: December 7, 2021