WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Haymarket Media Group Limited v. Whatcar Limited
Case No. DIE2007-0007
1. The Parties
The Complainant is Haymarket Media Group Limited of United Kingdom of Great Britain and Northern Ireland, represented by Lewis Silkin LLP, United Kingdom of Great Britain and Northern Ireland.
The Registrant is Whatcar Limited of Ireland, represented by David M. Turner Solicitors, Ireland.
2. The Domain Name and Registrar
The disputed domain name <whatcar.ie> is registered with IE Domain Registry Limited.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2007. On November 21, 2007, the Center transmitted by email to IE Domain Registry Limited a request for registrar verification in connection with the domain name at issue. On November 22, 2007, IE Domain Registry Limited transmitted by email to the Center its verification response confirming that the Registrant is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the .IE Dispute Resolution Policy (the “Policy”), the WIPO Dispute Resolution Rules of Procedure for .IE Domain Name Registrations (the “IEDR Rules”), and the WIPO Center Supplemental Rules for .IE Domain Name Dispute Resolution Policy (the “IEDR Supplemental Rules”).
In accordance with the Rules, paragraphs 2.1 and 4.1, the Center formally notified the Registrant of the Complaint, and the proceedings commenced on November 30, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 31, 2007. The Response was filed with the Center on December 20, 2007.
The Center appointed Adam Taylor as the sole panelist in this matter on January 10, 2008. 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 owns “What Car?” magazine, launched in 1973 in the United Kingdom and also operates two other monthly magazines: “What Car? Price Guide” and “What Car? New Car Guide”.
The Complainant has also operated a website at “www.whatcar.com” since 1999.
The “What Car?” magazine and website provide help and advice on buying and selling cars, reviews of cars and the latest automotive news. The website also includes valuations of cars, along with various calculators to assist users in working out the cost of insurance, tax and depreciation, and so on.
The Complainant owns the following United Kingdom trademarks for WHAT CAR?:
- number 1399605 dated September 22, 1989, in class 16
- number 2102739 dated June 13, 1996, in classes 3, 9, 12, 36 and 41
- number 2191598 dated March 12, 1999, in class 9
- number 2234933 dated June 3, 2000, in class 36.
The Complainant also owns registered trademarks for WHAT CAR? in various other countries including China, Russian Federation and United States of America. The magazine is published in Russian Federation, India and Spain and a licensed version appears in Italy.
A company by the name of A.L.R. Limited (incorporated in the Republic of Ireland on July 5, 1994) registered the disputed domain name on June 17, 2005. The company is controlled by Alan Stapleton.
Alan Stapleton is the registered owner of the business name “Whatcar.ie” registered in the Republic of Ireland on November 2, 2005.
At some point, the domain name was transferred to the Registrant, a limited liability company incorporated August 30, 2006. The Registrant is also controlled by Alan Stapleton. (Given the common control, the Panel sees no reason to distinguish between A.L.R Limited and the Registrant and references to “the Registrant” in this decision include A.L.R Limited unless the context requires otherwise.)
Since February 2007, the Registrant operated a website at the Disputed Domain Name principally facilitating the buying and selling of used and new cars.
The Complainant’s solicitor sent a cease and desist letter to the Registrant on August 30, 2007. There was no response.
5. Parties’ Contentions
Identical or Misleadingly Similar
The WHAT CAR? mark has become extremely well known, and has developed a significant international reputation and goodwill.
The What Car? magazine sells over 109,000 copies every month with an average issue readership figure of 942,000 according to a July 2006 – June 2007 survey. The magazine and the accompanying website attract advertising from internationally recognized brands and companies such as Renault, BMW and Land Rover.
The “www.whatcar.com” website attracts approximately 1.2 million hits per month including 92,110 visitors from Ireland in September 2007 (with 140,000 page impressions).
The disputed domain name is identical to the WHAT CAR? trademarks due to the use of the words “what” and “car”.
The rules for comparing names have been established in trademark case law such as Sabel Bv v. Puma AG Case C-251/95. The likelihood of confusion must be appreciated globally, taking account of all relevant factors. The matter must be judged through the eyes of the average consumer of the goods/services in question.
The major word element of the mark WHAT CAR? is identical, with just the removal of the punctuation. The removal of the punctuation is simply a consequence of the technical limitations of the domain name system, and the IE Domain Registry Naming Policy prevents inclusion of spaces or question marks. Many WIPO cases under the UDRP have held that an absence of punctuation from a domain name does not affect the nature of the similarity and confusion between a registered mark (with punctuation) and the corresponding domain name (without punctuation).
WIPO UDRP domain name decisions clarify that the addition of the suffix “.com” does not create any distinctiveness which helps to eliminate the possibility of confusion. This also applies to the addition of the suffix “.ie”.
Therefore it is clear that the disputed domain name is identical or confusingly similar to the Complainant’s trademark WHAT CAR?.
Rights or Legitimate Interests
The Registrant should be considered to have no rights or legitimate interest in respect of the disputed domain name.
There is no evidence that the Registrant has used, or has made demonstrable preparations to use the disputed domain name, or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. The Registrant’s website and related business is not bona fide in that it was registered and is being used in bad faith with the intention to benefit from the publicity and goodwill attached to the WHAT CAR? mark and the Complainant’s magazine and Internet services. In doing so, it has diverted potential consumers from the Complainant’s website, and is tarnishing the Complainant’s reputation.
The Complainant was in business and making use of the mark prior to the Registrant’s first commercial use of the disputed domain name in February 2007. The Complainant had its magazine in physical circulation within the United Kingdom, including Northern Ireland, prior to the Registrant’s registration and use of the disputed domain name.
Given the close links between the United Kingdom and Ireland, and particularly Northern Ireland and Ireland, the Registrant would have been well aware of the existence of What Car? magazine and the Complainant’s mark when he registered the disputed domain name.
It defies credulity to believe that anyone involved in the business of buying and selling cars in Ireland and the United Kingdom to the extent that they could establish a website dedicated to the subject would have been unaware of the magazine What Car? and the associated website.
There is no reasonable explanation for the Registrant’s use of the “What Car?” name.
The result of the Registrant’s use of the disputed domain name is that consumers have been, and will be misleadingly diverted to the disputed domain name. Given that the Complainant has registered trademarks and has built up substantial goodwill and reputation in the mark, customers and potential customers of the Complainant will attempt to access the Complainant’s site using the “What Car” phrase with the addition of a suffix such as .ie, or alternatively that they would assume that a website based at the disputed domain name is associated with or belongs to the Complainant. The Registrant is aware of this, and chose to use the What Car phrase for its domain name in order to benefit from diverting the Complainant’s customers to his website.
The Registrant is thereby benefiting from an unearned association with the Complainant. As a highly successful car-buying magazine with a history spanning thirty years, the Complainant’s mark is associated with trusted advice and tests relating to both new and used cars.
There is a diversion and confusion of consumers, particularly in Northern Ireland, as a direct result of the Registrant’s use of the disputed domain name.
The Registrant’s use of the question mark after the “What Car” name in its logo is further evidence of the Registrant’s attempt to confuse and mislead consumers.
The Registrant’s website lowers the Complainant’s services in the eyes of users who would expect a smooth, continuous online experience from the Complainant’s magazine, with a comparable look and feel to the physical magazine and official website.
Registered or Used in Bad Faith
The disputed domain name should be considered as having been registered and used in bad faith by the Registrant.
The registration by the Registrant of the disputed domain name has prevented the Complainant as the trademark owner from reflecting the mark in a corresponding domain name.
The Registrant will have received the benefit of the goodwill towards the WHAT CAR? mark, without having contributed to the expense of attracting that goodwill and consumer interest. The date of registration of the disputed domain name suggests that the Registrant, as a professional involved in the business of buying and selling cars in the United Kingdom and Ireland, would have been aware of the existence of the Complainant when he registered the disputed domain name. The registration of the disputed domain name was calculated to attract Internet users to the Registrant’s website, for commercial gain, and in bad faith.
The choice of the phrase “What Car” for the disputed domain name was not coincidental, and was chosen as a result of an awareness of the Complainant’s business. Given that the Complainant has registered trademarks for the phrase “What Car?” specifically including electronic publications supplied from facilities provided on the Internet relating to motor vehicles, and that the marks are used as the title of the Complainant’s magazine and website, it is obvious and entirely natural that customers and potential customers of the Complainant would assume the Complainant’s website would include the “What Car” phrase plus the standard .ie suffix. The Registrant is aware of this, and chose to purchase and use the disputed domain name in bad faith, in order to benefit from diverting consumers to his website who would otherwise have looked at the Complainant’s website.
Any consumer attempting to find the Complainant on the Internet will also find the Registrant’s website. A Google.com search for “what car” reveals the disputed domain name as the ninth site on the list, while an identical Google.co.uk search reveals the disputed domain name as eighth. A search for “whatcar” on Google.com reveals the disputed domain name as the sixth site on the list, and on Google.co.uk as the fifth. In the case of the “whatcar” searches, the disputed domain name is situated between the Complainant’s official site and a review of the Complainant’s magazine. A consumer familiar with the Complainant’s mark would assume that the disputed domain name would direct them to an Irish version of the Complainant’s site.
Use of the disputed domain name misleads consumers into thinking that the Registrant is in some way affiliated with the Complainant. Consumers who visit the Registrant’s website thinking that it was related to the Complainant will be extremely disappointed, and as a result, the Complainant has suffered dilution of its brand, and damage to its reputation. Two emails received by the Complainant in October 2007 show that there is real confusion as to the ownership of the disputed domain name. One of the correspondents responded to further enquiries by the Complainant’s representatives stating that he had contacted the Complainant after he had received no response from the Registrant, as he believed that the Registrant was the Irish subsidiary of the Complainant.
The Registrant’s use of the disputed domain name has tarnished the trademarks and reputation of the Complainant. This is analogous to the US trademark law concerning the dilution of a trademark (US Trademark Dilution Revision Act of 2006), which provides for injunctive relief from dilution of a famous, distinctive trademark by blurring (an association arising from similarity between marks impairing the distinctiveness of the famous mark) and tarnishment (an association arising from the similarity between the marks that harms the reputation of the famous mark).
In determining whether a mark or trade name is likely to cause dilution by blurring, the court may consider all relevant factors. Here those include: the obvious and immediate similarity between trademark and disputed domain name; the high distinctiveness of the trademark acquired through use by the Complainant over the past thirty four years and the attention generated by being used as the title of the United Kingdom’s biggest car-buying brand; the Complainant uses the mark substantially exclusively, with a licensed Italian edition of the magazine; the magazine, published in three languages across five local market editions, is very well established and instantly recognised as the premier car-buying magazine; the Registrant has set out to benefit from diverting consumers to his website and from the implied association with the Complainant; and there is no actual association between Complainant and the Registrant.
The Registrant would have been aware of the existence of the Complainant’s magazine and site when it registered the disputed domain name. Any reasonable person setting up a business and considering domain names for registration would search for similar businesses and names in order to either gain inspiration or ensure that they were not overlapping with someone else’s name which would lead to confusion.
Until at least October 3, 2007, the disputed domain name was registered in the name of “ALR ltd”. “ALR ltd” does not, and only after some time did the Complainant discover the existence of “A.L.R. Limited”. This company has the same directors and registered office as the Registrant. The two companies are therefore closely linked. It is unusual, and further evidence of bad faith that the disputed domain name was owned by a different legal entity to Whatcar Limited which is listed on the “Contact Us” page of the website.
Use of “A.L.R. Limited” as the registered owner of the disputed domain name until mid-October 2007, was a deliberate attempt on the part of the Registrant to make it difficult to identify the correct owner of the disputed domain name, leading to confusion such as the emails mentioned above.
As a result of the above points, the Registrant intentionally intended to attract, for commercial gain, Internet users to the Registrant’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Registrant’s website and the services available on the Registrant’s website. The aim of the registration of the disputed domain name was to take advantage of the confusion between the disputed domain name and any potential Complainant rights.
Identical or Misleadingly Similar
The Complainant has failed to provide any or any sufficient evidence of a protected identifier in which it alleges to have rights in Ireland.
It is accepted by the Registrant that the Complainant is the owner of the trademarks registered in the United Kingdom. However it is denied that such marks are such as to constitute a protected identifier under the Policy.
The Complainant is not the owner of any trade or service mark registered in Ireland nor is any application pending.
The only designations made by the Complainant under the Madrid protocol were in respect of China and the Russian Federation. Had the Complainant designated Ireland such would have amounted to a declaration on the part of the Complainant of an intention that the mark would be used by it Ireland. The Complainant had no such intention.
The Complainant has greatly exaggerated its international reputation for its magazine. ABC circulation figures for the six issues of What Car? Magazine between the January 1, 2007, and June 30, 2007, reveal that the average net circulation per issue of the Complainant’s magazine outside the United Kingdom and the Republic of Ireland for that period was a mere 2,482. This flies in the face of the Complainant’s assertion to an international reputation. This extent of the reputation should be looked in light of the fact that it has registered its mark in countries making up the bulk of the population of the planet. The total circulation for the same period of six months in the Republic of Ireland amounted to 7,200 copies or an average of 1,200 copies per month.
The Complainant’s website indicates that the Complainant does not consider Ireland a territory in which it carries on business at all. Under the heading “Brands”, it lists China, India, Italy and Russia.
The predominant business and reputation of the Complainant is confined to the United Kingdom and it enjoys a modest niche readership in other countries.
The Complainant has no enforceable common law rights and would not succeed in an action for passing off before the courts of Ireland. This is tacitly acknowledged by the failure by the Complainant to initiate such proceedings and by the absence of any evidence to support such rights and in particular evidence of any or any significant trading activities or reputation in Ireland.
The Complainant’s mark is not a “well known trademark” for the purposes of the Paris Convention or s. 61 of the Trademarks Act, 1996.
To establish an unregistered trademark a Complainant “must show that the name has become a distinctive identifier associated with the Complainant or its goods and services. Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition...”. Department of Arts, Sport and Tourism v. Odyssey Internet Portal Limited, WIPO Case No. DIE2005-0002.
If the Complainant enjoys an international reputation, which is doubted, it is a reputation for publishing a magazine with information on purchasing motor vehicles. The business of the Registrant is to facilitate the online purchase and sale of motor vehicles in the Republic of Ireland. While the Registrant’s website allows users to search for the identity of car dealers in Northern Ireland, the site does not contain any vehicles for sale from Northern Ireland.
The Complainant has confused what it alleges to be a reputation attaching to its name from the common and general use of the word “What” to preface the names of similar publications providing consumer buying information. This has long been used in publishing and is not unique to the Complainant. For example in the United Kingdom the title “WhatBike?” is published by Emap Consumer Media, “WhatDiesel” is published by Trojan Limited, “WhatVan?” is published by Wilmington Group.
It is indisputable that the trademark and domain name are similar.
The Complainant would not in all likelihood be able to convince the IEDR or a real and substantive connection with Ireland in accordance with the IEDR registration policy.
The Complainant should fail as having not established, prima facie, a protected identifier in which the Complainant has rights in Ireland.
Rights or Legitimate Interests
The Registrant was incorporated with the primary object of carrying on the online sourcing of vehicles for clients and related activities. The business of the Registrant was formerly carried on by A.L.R. Limited.
The Registrant is the only party who can rightfully claim ownership of a right in a protected identifier in this country.
The business Whatcar.ie was commenced in or about June 2005. The business model of the Registrant was to assist consumers in purchasing motor cars, vans or bikes. The intention was to bring buyer and seller together and to make the process easier and the transaction more cost effective.
Initially the business of the site was commenced without any marketing expenditure. On foot of positive feed back from both customers and motor dealers during 2005 and 2006 it was decided to create a series of interconnecting websites to assist in the sale and purchase of motor vehicles, vans and motorbikes.
In or about June 2006, the marketing and design of the websites was developed in association with Inish Technologies and Mor Solutions. Development and testing of the website was a long and difficult process.
The get up of the logo for WhatCar.ie is very distinctive comprising of a bold yellow typeface with a distinctive rounded font.
In February 2007, WhatCar.ie, WhatVan.ie, Whatbike.ie, What4X4.ie and WhatCarHire.ie went live and were officially launched to the public in May 2007. All of the associated websites are linked and carry the same distinctive livery.
The launch of WhatCar.ie was heavily marketed over a period of three months in the motoring sections of three national newspapers and In Dublin Magazine. The Registrant also engaged in various car racing promotions including sponsoring Formula 1 Grand Prix coverage with the sports satellite television broadcaster Setanta and use of cars with the Registrant’s logo in “DriftCar” races.
At no time has “WhatCar.ie” been marketed or advertised outside Ireland. The market created by the users of the Registrant’s website is by definition confined to Ireland. It is Irish sellers (both private and from the trade) advertising motor vehicles to Irish buyers.
The Complainant never made any complaint to the Registrant prior to making this complaint.
No evidence whatsoever has been adduced by the Complainant to support the allegation that the disputed domain name is not being used in connection with a bona fide offering for good or services. A cursory look at the Registrant’s website reveals a fully operational business for the sale of motor vehicles.
To date the Registrant has invested approximately €150,000 in the development and promotion of the site at the disputed domain name as well as those at WhatVan.ie, Whatbike.ie, What4X4.ie and WhatCarHire.ie.
The Registrant has attracted 1245 Irish motor dealers to its site and approximately 500 private sellers presently participate at any given time. The website enjoys approximately 50,000 page views per week.
Quinn Direct, Ireland’s largest private motor insurer, advertises on the Registrant’s website. The site won an award in the category of “Best Online Trader” in the Net Visionary and Enterprise Ireland Awards, 2007. (Enterprise Ireland is the Irish state development agency for Irish industry).
It is intended to launch two further websites: “WhatClassic.ie” and “WhatCarAccessories.ie”.
The respective businesses of the Complainant and the Registrant and the services they offer their customers while generally relating to motor vehicles could not be more different. The Complainant offers information and advice on buying new and used cars. The Registrant promotes the purchase and sale of motor vehicles between members of the public and a network of motor dealers throughout Ireland.
In the premises, before the Registrant received any notice of this dispute, the Registrant had been engaged in the bona fide use of the disputed domain name in connection with the offering of goods and services though its website.
At no time did the Registrant offer to sell or transfer the disputed domain name to the Complainant nor has it any intention of doing so in the future.
The Registrant has both rights in law and a legitimate business interest in the disputed domain name.
Registered or Used in Bad Faith
The Registrant repeats and relies upon the facts and matters set forth above as demonstrating the bona fides on the part of the Registrant.
The Complainant has failed to provide any or any sufficient evidence of lack of faith on the part of the Registrant and at best has made bald allegations.
It has not been, nor indeed could it be alleged that the disputed domain name was registered or has been used or sought to be used whether primarily or at all for the purpose of selling, renting, licensing or otherwise transferring the registration to the Complainant or any other person for valuable consideration in excess of the Registrant’s documented expenses which are directly related to the registration of the domain name.
The Complainant and the Registrant are not competitors. Not only can the businesses of the Complainant and the Registrant be wholly differentiated, the business of the Registrant is confined to Ireland.
The disputed domain name was not registered nor has it been used by the Registrant for the purpose of interfering with or disrupting the business or activities of the Complainant or any other person. The circulation of the Complainant’s magazine in the Republic of Ireland is negligible.
In so far as the Complainant’s website offers users a search facility for those wishing to research cars for sale such users are re-directed to a site called Autocar.
The Registrant has not, through its use of the disputed domain name attempted (whether intentionally or otherwise) to attract Internet users to its website or any other on-line location by creating confusion with a protected identifier in which the Complainant has rights. It is denied that the Complainant has established a protected identifier in Ireland. Even if it had, the intention of the Registrant is to attract members of the public and the motor trade to transact business in the sale and purchase of motor vehicles. There is and could be no benefit to the Registrant to create such confusion were that its intention which it is not.
Irish users of the Internet are directed to Google.ie. Here the Complainant’s website is first in the list and the disputed domain name is second. If one searches on Irish pages only the Registrant is listed first.
There is no question of confusion being created as the listings are materially different.
The Registrant has not and by definition cannot interfere with the Complainant’s business given the differing activities of the respective parties. No dilution has occurred, nor has any misleading information been provided.
The disputed domain name has not been used in a way that is likely to dilute the reputation of a trade or service mark in which the Complainant has rights.
There is no evidence to suggest that misleading or false information was tendered by the Registrant when applying for the domain name registration.
It is clear that when formulating its complaint, the Complainant was unaware of the nature and extent of the Registrant’s business. While it may be correct that an Irish citizen may wish to carry out research in respect of a particular model of vehicle they shall have great difficulty in locating a dealer in a particular part of Ireland stocking the vehicle they are interested in purchasing on the Complainant’s site and similarly they will be disappointed it they visit the Registrant’s site to carry out research.
Use of the disputed domain name cannot of itself be evidence of bad faith. It is the intention of the Registrant in registering the domain name and the use that it has been put that is relevant.
In the premises, the disputed domain name has not been registered nor is it being used in bad faith.
Abuse of Administrative Proceeding
This is a case of reverse domain name hijacking. The Complainant had ample opportunity to register the disputed domain name but neglected to do so. The Complainant has set out that it is the owner of a number of “whatcar” domain names but few are in active use. They were registered by the Complainant not for legitimate business use but to prevent domain name hijacking. The Complainant has parked them and has not even gone to the trouble to re-direct users to its website.
In circumstances where the Complainant alleges that it has a reputation in Ireland it is curious that it has taken no steps whatsoever to protect its interests in Ireland. The reason is that the Complainant knows from its circulation figures that a market for its magazine in Ireland does not exist in published media and it has nothing to protect.
As to the email from the allegedly confused customer, the Registrant has no record of having received any communication from this individual nor was the Registrant in receipt of the sum of €18.00 as alleged. One would have expected the individual making the complaint to have given details of the advertisement he alleges he placed, when he placed it, the type of vehicle advertised and so forth yet surprisingly he did not. He provides no address to which to send the refund he demands. The correspondence from the Complainant’s solicitors appears to have courted a biased response. The Registrant believes that the said email communication has been concocted. An email was sent to the writer of this email requesting details of the payment and no response was received.
The other email relied upon by the Complainant is equally suspicious. It was signed with a different name to that shown in the “from” line.
The complaint is silent in relation to the Registrant’s website and its business. If one uses the website it is immediately apparent that it is a fully functioning market place for buying and selling motor vehicles. This must be abundantly clear to the Complainant as it is to any visitor to the site.
6. Discussion and Findings
Paragraph 1.4 of the Policy states: “the Complainant carries the burden of proving, prima facie, that the three conditions specified in paragraph 1.1 are met”.
A. Identical or Misleadingly Similar
The first condition in paragraph 1.1 of the Policy is that the Domain Name is identical or misleadingly similar to a protected identifier in which the Complainant has rights.
Under paragraph 1.3.1 of the Policy, “protected identifiers” include “trade and service marks protected in the island of Ireland”. The Panel infers that “the island of Ireland” means either the Republic of Ireland or Northern Ireland as these are different legal jurisdictions.
Here, the Complainant’s United Kingdom registered trademarks for WHAT CAR? are protected in Northern Ireland and therefore constitute “protected identifiers” under paragraph 1.3.1.
For reasons explained below, the Panel makes no finding that the Complainant has acquired common law rights in either part of Ireland.
The disputed domain name differs from the Complainant’s protected identifiers only by omission of the question mark. This distinction is immaterial and the Panel concludes that, disregarding the domain suffix “.ie”, the disputed domain name is misleadingly similar to a protected identifier in which the Complainant has rights.
B. Rights or Legitimate Interests
The second condition in paragraph 1.1 of the Policy is that the Registrant has no rights in law or legitimate interests in respect of the Domain Name.
Paragraph 3.1 of the Policy specifies three non-exhaustive factors which may be considered as evidence of rights or legitimate interests.
Only paragraph 3.1.1 is potentially applicable here: “where the registrant can demonstrate that, before being put on notice of the complainant’s interests in the domain, it had made demonstrable good faith preparations to use the domain name in connection with a good faith offering of goods or services, or operation of a business”.
The Registrant says that it is carrying on a serious business at its website at the disputed domain name which brings together buyers and sellers of cars. The Registrant claims to have invested approximately €150,000 in the site (and in related sites such as <whatvan.ie>) and has provided a thick bundle of invoices showing advertising campaigns in national newspapers in the Republic of Ireland as well as sponsorship and other marketing activities.
The Registrant says that the disputed domain name has never been marketed outside Ireland and that the market created by the users of the Registrant’s website is by definition confined to Ireland, namely Irish sellers (both private and from the trade) advertising motor vehicles to Irish buyers. The Registrant says that in fact the site does not contain any vehicles for sale from Northern Ireland but acknowledges that the site does allow users to search for the identity of car dealers in Northern Ireland.
The Registrant claims to have attracted 1245 Irish motor dealers to its site and says that approximately 500 private sellers presently participate at any given time.
The Complainant says that the Registrant’s site was not bona fide in that the domain name was registered with the intention of benefitting from the publicity and goodwill attached to the “WHAT CAR?” mark and to the Complainant’s magazine and Internet services. In doing so, the Complainant claims, it has diverted potential consumers from the Complainant’s website, and is tarnishing the Complainant’s reputation. The Complainant points out that it started trading well before the Registrant and that, given the close links between the United Kingdom and Ireland as well as the nature of the Registrant’s business, it must have been aware of the Complainant’s mark when it registered the disputed domain name.
The Panel thinks it likely that the Registrant was indeed aware of the Complainant’s mark at the time of registration of the disputed domain name and the response does not deny this. But this is not enough of itself, given that this case is concerned with use of a .ie domain name denoting Ireland, that the Registrant’s business is clearly targeting Irish customers and that there is evidence that the “What …?” branding for consumer products is not unique to the Complainant in the United Kingdom even in respect of motor vehicles.
Nonetheless if there were evidence that at time of registration of the domain name the Complainant undertook a significant degree of trade in the Republic of Ireland or Northern Ireland, the Panel may well have inferred that the Registrant lacked bona fides on the basis that it probably chose the domain name with the intention of capitalising on confusion on the part of the Complainant’s Irish customers or at least knowing that this was likely to happen.
The Complainant has, however, provided no evidence about its trading activities or reputation in either part of Ireland. The only information relevant to Ireland is an assertion in the complaint, unsupported by evidence, of some 92,000 Irish visitors to the Complainant’s website in September 2007. The Complainant does produce an Audited Bureau of Circulations certificate for January 1, 2007 to June 30, 2007, showing magazine circulation of 106,890 in “United Kingdom and RoI” but with no breakdown showing how much of this figure is referable to the Republic of Ireland or Northern Ireland. (In fact the Registrant comes up with a circulation of 7200 for the Republic of Ireland over that period but does not provide any evidence.)
In any case, all of this postdates registration of the disputed domain name on June 17, 2005. The Complainant was at something of a disadvantage here as the whois information provided by the IE Domain Registry does not show the domain registration date. In those circumstances the Complainant might have considered it prudent to provide as much evidence as it could about its trading activities in both parts of Ireland going back to the earliest date possible (assuming that there is any evidence to produce). If there had been no response, the Panel might have been prepared to draw inferences in favour of the Complainant but there is a response and it places these matters squarely in issue.
Nor, in the Panel’s view, is there any evidence relating to the Registrant’s actual use of the disputed domain name which suggests a lack of bona fides. The Panel disagrees that the Registrant’s use of the question mark after the “What Car” name in its logo on the website is evidence that its offering lacks good faith. In the Panel’s view it is entirely logical to use a question mark as part of a name which is formulated as a question.
The Complainant suggests that the initial registration of the disputed domain name in the name of “ALR Limited” was designed to conceal the true ownership of the disputed domain name. However, the Panel sees nothing sinister in the use of this company as registrant given that it was under common ownership with the “Whatcar Limited”, the company shown on the site and the ultimate registrant of the domain name, a fact which was readily ascertainable (and was ascertained by the Complainant) on carrying out a company search. Nor does the Panel draw any adverse inference from the use of “ALR Limited” instead of the correct name “A.L.R Limited”, no doubt due to a mistake.
For the above reasons, the Panel is of the view that, on balance, the Registrant has demonstrated rights or legitimate interests in that before being put on notice of the Complainant’s interests in the domain (by means of a letter of August 30, 2007), it had used the domain name in connection with a good faith offering of goods or services in accordance with paragraph 3.1.1 of the Policy.
C. Registered or Used in Bad Faith
In view of the Panel’s conclusions under “rights or legitimate interests” it is unnecessary to consider this factor. However, it is likely that the Complainant would have failed here for the same reasons mentioned above.
The Panel stresses that this decision is not intended to prejudge any other proceeding, and this decision does not of course prejudice the Complainant’s right to pursue this matter in the relevant national court.
D. Abuse of Administrative Proceeding
The Registrant submits that the complaint is an abuse of the administrative proceeding. Paragraph 14.6 of the IEDR Rules states: “If after considering the submissions the Panel finds that the complaint was brought in bad faith, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
The Registrant claims first, in essence, that the Complainant alleged that it had a reputation in Ireland whereas it knew from its circulation figures that there was no market for its magazine in Ireland. In fact the Complainant did not expressly claim that it had a reputation in Ireland. And, in any case, the Panel is not in a position to conclude that the Complainant knew there was no Irish market for its magazine. All the Panel can say is that the Complainant has produced no evidence of trading activities or reputation in Ireland.
The Registrant casts doubt on the authenticity of two emails of allegedly confused customers produced by the Complainant but the Panel does not have sufficient information before it to assess this claim.
Finally, the Registrant observes that it must have been clear to the Complainant or any other visitor to the site that it was a fully functioning market place for buying and selling motor vehicles. However, the fact of a fully functioning website did not of itself mean that the Registrant had rights or legitimate interests in the disputed domain name or that it was not registered or used in bad faith.
Accordingly, the Panel rejects the Registrant’s assertion that this complaint constitutes an abuse of the administrative proceeding.
For all the foregoing reasons, the Complaint is denied.
Dated: January 24, 2008