WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pendragon PLC v. Mr. Patrick Meehan

Case No. D2010-1297

1. The Parties

The Complainant is Pendragon PLC of Nottingham, United Kingdom of Great Britain and Northern Ireland (the “United Kingdom” or "UK”), represented internally.

The Respondent is Mr. Patrick Meehan of Watford, United Kingdom, represented informally by Mrs. Linda Meehan, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <stratstone.mobi> is registered with Advantage Interactive Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2010. On August 3, 2010, the Center transmitted by email to Advantage Interactive Ltd., a request for registrar verification in connection with the disputed domain name. On August 4, 2010, Advantage Interactive Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 11, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 31, 2010. The Response was filed with the Center on August 10, 2010.

The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on August 27, 2010. 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

According to the Complainant, it is the largest operator of franchised motor car dealerships in the United Kingdom. The Stratstone division deals with luxury cars of numerous well-known makes and has 118 franchise points.

The Complainant, through its wholly owned subsidiary Pendragon Motor Group Ltd., is the registered proprietor of the following trademarks:

STRATSTONE, United Kindom Intellectual Property Office, registration number 2132927, registered November 5, 1997, classes 12, 36, 37, 39;

STRATSTONE, United Kingdom Intellectual Property Office, registration number 2356379, registered September 3, 2004, class 42.

The Respondent Patrick Meehan is an individual and the sole shareholder of a business known as Safeheat Limited. The Respondent submitted a formal Response dated August 10, 2010, with annexed a document entitled “Statement of Events and Full Response”. The Response and attached document are signed by Linda Meehan as Company Secretary of Safeheat Limited. The documents had been signed and dated after the Respondent had received a copy of the Complaint from the Complainant, dated August 3, 2010, but before receipt of formal notification of the Complaint from the Center, dated August 11, 2010. Since the Response was otherwise in order, it has been accepted as regular.

The disputed domain name was registered in the name of Patrick Meehan on February 27, 2009.

5. Parties’ Contentions

A. Complainant

The Complainant has produced copies of United Kingdom Intellectual Property Office documents in support of its claim to have rights in the trademarks listed in section 4 above The Complainant has produced additional evidence of its use of these trademarks in marketing and promotional materials, and of its use of the website “www.stratstone.com”.

The Complainant contends that the disputed domain name <stratstone.mobi> is confusingly similar and identical to its trademark STRATSTONE.

The Complainant further contends that the Respondent does not have rights or legitimate interests in the disputed domain name. In particular there is no evidence of the Respondent having used the disputed domain name in connection with a bona fide offering of goods or services. There is no evidence of the Respondent, or his business, being known by the disputed domain name. There is no evidence of the Respondent having made a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain or without intent to tarnish the Complainant’s trademark.

The Complainant further contends that the disputed domain name was registered and is being used in bad faith. It is asserted that the Respondent registered the disputed domain name solely and primarily for sale to the Complainant or a competitor for a sum in excess of registration costs, and in particular, attempted to sell it to the Complainant for a five figure sum in GBP (£).

The Complainant requests the transfer to it of the disputed domain name.

B. Respondent

The Respondent denies the Complaint.

The Response is submitted on essentially the standard form with a summary, and incorporates by reference an attachment comprising a lengthy and detailed letter. The salient points of the Response include the following.

The Respondent contends that the disputed domain name was not registered or acquired primarily for the purpose of selling, renting or otherwise transferring to the Complainant or a competitor for valuable consideration. The disputed domain name had been available for purchase since September 2006 and there was a Trademark Sunrise period prior to that date. The Complainant did not purchase the disputed domain name and showed no interest in it until June 2010, nearly a year and a half after the Respondent purchased it. When asked why the Complainant had not purchased the disputed domain name initially, its representative replied “we chose not to buy it”.

The Respondent says that the Complainant approached the Respondent first in a letter dated June 18, 2010, asking for transfer at cost, and the Respondent was surprised. It was the Complainant who first made a financial offer for the disputed domain name in a telephone conversation initiated by Linda Meehan, and the Complainant was told that further consideration would be required as the Respondent had not thought about sale. The Respondent says that the Complainant’s representative “has completely twisted the conversation”.

The Respondent says that the disputed domain name was not registered for the purpose of preventing the Complainant from reflecting the mark in a corresponding domain name and the Respondent has not engaged in a pattern of such conduct. The Complainant and the Respondent are not competitors and the disputed domain name was not registered primarily to disrupt the Complainant’s business. The disputed domain name was not registered in an intentional attempt to attract visitors for commercial gain or by confusion.

6. Discussion and Findings

Paragraph 4(a) of the Policy states that the Respondent is required:

“…to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.”

The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.

The Rules define a Respondent as “the holder of a domain-name registration against which a complaint is initiated”. The disputed domain name is registered in the name of Patrick Meehan, who is also named as the administrative contact. Nothing in the registration document links the disputed domain name with the Respondent’s company Safeheat Limited, except that the registrant gave a company email address for contact purposes, which is not in itself remarkable. The Panel can find no justification for the Complainant’s action in joining Safeheat Limited as a Respondent, and has amended the intituling accordingly. Taking into account the evident unfamiliarity of the Respondent with proceedings under the Policy, it is accepted that Linda Meehan, in having signed the Response in the style “Linda Meehan, Company Secretary, Safeheat Limited” has done so on behalf of Patrick Meehan as an individual and has acted for him throughout the dispute.

A. Identical or Confusingly Similar

The Panel accepts on the evidence that the Complainant has rights in the trademark STRATSTONE. The disputed domain name is <stratstone.mobi> which, disregarding the mTLD directory indicator “.mobi”, is clearly identical to the Complainant’s trademark. The Panel finds for the Complainant in the terms of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has asserted prima facie that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Respondent has not made any submission in the terms of paragraph 4(c) of the Policy, or otherwise, to the effect that he has any such rights or legitimate interests, other than the right of ownership. The Panel finds on the balance of probabilities that the Respondent does not have rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant is required to prove in the terms of paragraph 4(a)(iii) of the Policy that the Respondent registered and has used the disputed domain name in bad faith.

The Panel is confronted with two accounts of events and circumstances surrounding the Complainant’s assertion of bad faith on the part of the Respondent. These accounts are substantially in agreement as to the central facts, which include: that the Complainant wrote first to the Respondent on June 18, 2010 asking for the transfer of the disputed domain name in exchange for costs; that Linda Meehan telephoned the Complainant to discuss the matter the day after receiving the letter; and that the Complainant wrote to the Respondent on July 2, 2010, stating among other things: “... as a gesture of goodwill and for the sake of expediency, we are willing to offer you a sum of £1000 in order to effect the transfer of the Domain Name to us ...”.

The letter incorporated into the Response by reference, signed by Linda Meehan, offers extensive detail of her telephone call of June 25, 2010. The letter comments, among other things, that the disputed domain name had been available through a Sunrise period in June - August 2006, and was not purchased by anyone until by the Respondent in September 2009.

Key events in the account of the telephone conversation according to Linda Meehan include the following. The Complainant’s representative said words to the effect of “lets get to the point, how much do you want?”, and offered £100. He later said, “right, how much?” Linda Meehan states, “I told him I couldn’t possibly put a figure on it as we had not thought that far ahead and that if, and only if, we wished to transact with him it should reflect the market value.” The purchase offer was then raised to £1,000 on the condition of immediate acceptance, to which Linda Meehan said any offer would have to be discussed with Patrick Meehan.

What Linda Meehan writes next is subject to differing interpretations by the Parties and should be reproduced verbatim: “He then replied that he wanted a decision there and then, so I said on that basis £1000 seemed derisory. He then said words to the effect of “so what are you looking for, a five figure sum?” to which I replied “maybe” because we needed time to look into it. He pressurised further by replying “well, what end of a five figure sum, because that could mean £9,999 [sic] and we won’t pay that”. I reiterated the point that I would discuss it with Mr Meehan and get back to him in due course.”

The Complainant’s interpretation of events is substantially embodied in two brief passages of the Complaint under the heading of bad faith, which read: “... the Respondent registered the domain name solely and primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the owner of the trademark ... or possibly to a competitor of the Complainant, for [profit]”; and “... the Respondent attempted to sell the domain name back to the Complainant for an undisclosed five figure sum in pounds sterling (£)”. The Respondent robustly contests these assertions.

The contention of bad faith in the Complaint pertains primarily to paragraph 4(b)(i) of the Policy whereby a ground of bad faith includes:

“circumstances indicating that you [the Respondent] 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”.

Insufficient evidence has been produced to the effect that the Respondent registered or used the disputed domain name for the primary purpose of sale to the Complainant or “possibly to a competitor of the Complainant”, although the concept of a competitor can be wide (Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D2000-0279).

The provisions of paragraph 4(b) of the Policy are illustrative, however, and bad faith may be found on alternative grounds. It has been held in certain previous decisions under the Policy that the use of a domain name obviously connected with a well-known product by someone having no connection with the product may support a finding of opportunistic bad faith (Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163). Conversely, the possession of a trademark word does not necessarily carry exclusive rights to the same word in an unrelated context. The decision may pivot, therefore, upon whether the Respondent knew of the trademark STRATSTONE, and whether he had a bona fide non-conflicting use for the disputed domain name.

Within the Panel’s limited powers to pursue matters of public record in reaching a decision (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 4.5), it is readily verifiable that the trademark STRATSTONE is associated with little other than up-market vehicle sales in the UK, where the Parties reside, and that numerous franchises exist, including in the area of the Respondent’s address. The Complainant’s trademark may reasonably be considered well-known, and the Respondent has not denied knowledge of it.

The Panel can conceive of no logical reason why Patrick Meehan, either as an individual or for purposes connected with his business Safeheat Limited, should register a domain name comprising solely the distinctive trademark STRATSTONE, and he has offered none. The flavour of the telephone conversation was of the Respondent needing time to consider offers, of not having thought that far ahead, and of expecting market value, but notably absent was any explanation of a planned use for the disputed domain name or of it being plainly not for sale. The inescapable conclusion on the balance of probabilities is that the Respondent, having noticed the availability of the disputed domain name as stated in the Response, may have recognised its possible significance and purchased it.

Trademark owners are under no obligation to make a precautionary registration of every relevant domain name upon release or at any particular time. Whilst the non-registration of the disputed domain name by the Complainant left it available for legitimate use, the Respondent, having acquired it, has merely parked it as what appears to be a perfunctory click-through site and has not attempted to establish any significant legitimacy. Having regard to all the facts of this case, the Panel finds on the balance of probabilities that the disputed domain name was acquired and used by the Respondent in bad faith.

The Panel finds bad faith within the concept of paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <stratstone.mobi> be transferred to the Complainant.

Clive N.A. Trotman
Sole Panelist
Dated: September 10, 2010