World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

We Buy Any Car Limited v. DYL Motor Group

Case No. D2010-1978

1. The Parties

The Complainant is We Buy Any Car Limited of Lancashire, United Kingdom of Great Britain and Northern Ireland represented by Harrison Goddard Foote, United Kingdom of Great Britain and Northern Ireland.

The Respondent is DYL Motor Group of Lincolnshire, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <wewannabuyyourcar.com> is registered with Tucows Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2010. On November 18, 2010, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On November 18, 2010, Tucows Inc. 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 November 22, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 12, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 13, 2010.

The Center appointed David Perkins as the sole panelist in this matter on December 20, 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

4.A. The Complainant

4.A.1 The Complainant is one principal provider in relation to the sale, valuation and purchase of motor cars in the United Kingdom. It operates both through 112 physical sites spread geographically across the United Kingdom and through its well-known website “www.webuyanycar.com”. It has been using the WE BUY ANY CAR trademark since August 2006.

The WE BUY ANY CAR trademarks

4.A.2 The Complainant is the proprietor of the following United Kingdom and Community Trademark registrations and applications:

Country

Reg. No.

Mark

Class(es) of goods and services

Dates of Application and Registration

United Kingdom

2,445,197

WE BUY ANY CAR.COM & device

12, 35 to 37 and 39

Filed: 31 January 2007 Registered: 19 October 2007

United Kingdom

2,442,651

WE BUY ANY CAR.COM & device

12 and 35 to 37

Filed: 3 January 2007 Registered: 16 November 2007

United Kingdom

2,457,645

WE BUY ANY CAR.COM & device

39

Filed: 5 June 2007 Registered: 14 December 2007

United Kingdom

2,541,784

WE BUY ANY VAN.COM & device

12, 35 to 37 and 39

Filed: 11 March 2010 Registered: 9 July 2010

European Community

CTM 008946303

WE BUY ANY CAR.COM & device

12, 35 to 37 and 39

Filed: 11 March 2010 Registered: 2 September 2010

European Community

CTM 009431131

WE BUY ANY VAN.COM & device

12, 35 to 37 and 39

Filed: 7 October 2010

European Community

CTM 009501214

Coloured Cars device

12, 35 to 37 and 39

Filed: 5 November 2010

4.A.3 The devices variously consist of the silhouette of a car over the words “any car” for the UK ‘645 and ‘651 registrations, in relation to the UK ‘197 registration, a line of 5 silhouettes of cars below the word mark “webuyanycar.com” and in relation to the UK ‘784 registration, a line of 5 silhouettes of vans and trucks below the word mark “webuyanyvan.com”. The registered CTM and the two pending CTM applications also feature respectively the 5 car / 5 van silhouettes below the word marks.

4.A.4 The Complainant also asserts common law trademark rights in the marks WE BUY ANYCAR, WE BUY ANYCAR.COM, WEBUYANYCAR.COM and Device and the coloured cars logo based on extensive use of those marks in the United Kingdom since August 2006. Since that time the Complainant estimates the turnover in goods sold under those marks as some £467 million. Specific turnover for the years 2007 to 2009 is given as £52 million, £79 million and £142 million respectively.

4.A.5 The WEBUYANYCAR marks have also been extensively advertised since August 2006 at a cost of over £21 million. Specific advertising and marketing costs for the years 2007 to 2009 is given as £1,867,30, £2,977,800 and £5,201,975. This advertising has comprised television (both digital and terrestrial channels), radio (national and local stations), press (national, local and auto press), online (through pay per click search engines including Google, Yahoo and MSN (bing)), and outdoor advertisements (comprising billboards, phone boxes and point of sale materials). Examples of these categories of advertising are exhibited to a signed witness statement from the Complainant’s Finance Manager, Mr. Couturier.

4.A.6 As further evidence of the well-known status of the “webuyanycar” and “webuyanycar.com” trademarks, Mr. Couturier exhibits printouts against both marks from Google and also from “www.youtube.com”. He refers to the Complainant even releasing its dance routine advertisement for customers to play online due to popular demand from the public. Mr. Couturier explains that the Complainant also promotes those trademarks through its own Newsletters which provide customers the opportunity to win products in competitions.

4.A.7 Finally, Mr. Couturier exhibits a printout from the website “www.asylum.co.uk” of June 2010 which rates the “webuyanycar” advertisement as eighth in the top ten television advertisements in the United Kingdom.

4.B. The Respondent

4.B.1 In the absence of a Response, what is known of the Respondent and its activities is derived from the Complaint.

4.B.2 First, the disputed domain name was registered by the Respondent on February 15, 2010.

4.B.3 The disputed domain name is used by the Respondent for an online motor vehicle business competing with that of the Complainant. Exhibited to the Complaint by Mr. Couturier are advertisements placed by the Respondent in a motor trade magazine and a banner on display at the Respondent’s place of business in Halifax. Both feature the disputed domain name and depicted below a line of silhouettes of motor cars.

4.B.4 The text of the advertisement placed by the Respondent featured below the disputed domain name and line of silhouetted motor cars reads:

“Yes we wanna buy your car, we want old ones, new ones, black ones, blue ones, wewannabuyyourcar.com we just can’t get enough of them. We’ll consider buying any car, whatever year or mileage and we’ll beat any genuine like for like quote by £100.”

4.B.5 Also exhibited to the Complaint are “cease and desist” letters sent by the Complainant’s patent and trademark attorneys, Harrison Goddard Foote, to the Respondent dated March 22, 2010, a reminder dated April 12, 2010, an email from Ms. Murtagh of the Complainant dated April 14, 2010 to a Mr. Gulshan Rashid of the Respondent following a telephone conversation with him, and finally a further letter from Harrison Goddard Foote dated September 7, 2010 sent by recorded delivery. No response from the Respondent was received to any of those communications.

5. Parties Contentions

5.A. Complainant

Identical or Confusingly Similar

5.A.1 The Complainant relies on both its registered trademarks, two of which precede registration of the disputed domain name by three years and another by two years, and also on its common law trademarks developed since first use beginning in August 2006, some three and a half years before registration of the disputed domain name. By February 2010 when the Respondent registered the disputed domain name and began using it, the Complainant says that the evidence (set out in Mr. Couturier’s Statement) is overwhelming that WEBUYANYCAR trademarks were very well known in the United Kingdom.

5.A.2 The Complainant’s case is that the disputed domain name is confusingly similar to its trademarks, the disputed domain name using the words “we”, “buy” and “car” thus giving a similar visual impression. Further, the Complainant says that the disputed domain name projects the identical conceptual meaning to the consumer which is conveyed by the WEBUYANYCAR trademarks. Both those trademarks are the disputed domain name convey the message that the advertisers will buy any car.

5.A.3 Additionally, the Complainant says that phonetic pronunciation of their marks and the disputed domain name is similar due to the beginning and ending of the WEBUYANYCAR trademarks and the disputed domain name being identical, namely “we” and “car”, and that is where the marks have the most impact on the consumer.

Rights or Legitimate Interests

5.A.4 The Complainant says that the Respondent cannot demonstrate that any of the circumstances set out in paragraph 4(c) of the Policy apply. This, the Complainant says, is because the Respondent would clearly have been well aware of the WEBUYANYCAR trademarks before first using the disputed domain name and, because the disputed domain name is confusingly similar to the WEBUYANYCAR marks, such use in relation to a business competing with that of the Complainant cannot be bona fide. Furthermore, such use is clearly, the Complainant says, both commercial and also designed to mislead the public into believing there is a connection between the services offered under the disputed domain name and associated with those provided by the Complainant under its WEBUYANYCAR marks. In that way the Respondent, according to the Complainant, intends to divert consumers from the Complainant’s business and to tarnish and dilute its WEBUYANYCAR trademarks.

Registered and Used in Bad Faith

5.A.5 The Complainant’s case is that the evidence provided in Mr Couturier’s Statement falls within paragraphs 4(b)(ii) to (iv) of the Policy. Specifically, the Complainant says that when the disputed domain name was registered in February 2010, it was with an intent to prevent the Complainant from reflecting the mark in a corresponding domain name. Further, such registration was primarily for the purpose of disrupting its (the Complainant’s) business. Still further, by piggy-backing onto the well-known reputation of the WEBUYANYCAR trademarks, the Respondent has intentionally attempted to attract for commercial gain Internet users to its website and premises by creating a likelihood of confusion with the Complainant’s trademarks. The Complainant points to the way in which the Respondent’s website to which the disputed domain name resolves and also the banner outside its Halifax premises both use precisely the same coloured cars get-up that is used by the Complainant below the WEBUYANYCAR word mark.

5.B. The Respondent

As stated, no Response has been filed.

6. Discussions and Findings

6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding

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

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent's rights or legitimate interest in the domain name in issue.

6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.

6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant to the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.

6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant to the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.

Identical or Confusingly Similar

6.5 The Complainant has registered trademark rights in the mark WEBUYANYCAR.COM in the form described in paragraphs 4.A.2 and 4.A.3 above.

6.6 The Panel is also satisfied that, on the evidence presented by Mr. Couturier, the Complainant has common law trademark rights in both that mark and the mark WEBUYANYCAR.

6.7 Accordingly, the Complaint satisfies the first requirement of paragraph 4(a)(i) of the Policy by establishing its rights in those trademarks.

6.8 As to the second requirement of paragraph 4(a)(i) of the Policy, the Panel also accepts that the similarities asserted by the Complainant, which are summarized in paragraphs 5.A.2 and 5.A.3 above, amount to “confusing similarity”.

Rights or Legitimate Interests

6.9 In the absence of a Response and on the evidence presented with the Complaint, there is no indication that the Respondent could demonstrate that any of the circumstances set out in paragraph 4(c) of the Policy apply in this case. Given the Panel’s finding of confusing similarity, the timing of the registration of the disputed domain name, and the fact that it is being used for a directly competing business to that of the Complainant, the Respondent’s use of the disputed domain name cannot – in the Panel’s view – be regarded as bona fide. Furthermore, the evidence of the Respondent’s use of the disputed domain name is clearly both commercial and also designed to divert customers wrongly associating its business with that of the Complainant.

6.10 Accordingly, the Complaint satisfies the requirement of paragraph 4(a)(ii) of the Policy.

Registered and Used in Bad Faith

6.11 The Panel does not accept that paragraph 4(b)(ii) of the Policy applies in this case, since there is no evidence that the Respondent has engaged in a pattern of conduct as required by that paragraph.

6.12 However, the Panel has no hesitation in finding bad faith under paragraphs 4(b)(iii) and (iv) of the Policy. Plainly, in February 2010 when the disputed domain name was registered, the Respondent must have been well aware of the Complainant’s WEBUYANYCAR trademarks and business. Further, the manner of use of the disputed domain name equally plainly demonstrates an intention to trade off the benefit of those trademarks. Consequently, it is, in the Panel’s view, inevitable that Internet users will be confused into believing there is some association or connection between the Respondent’s business and that of the Complainant. Still further, the Respondent’s repeated failure to respond either to the “cease and desist” letters preceding this Complaint or the Complaint itself are also indicative of bad faith.

6.13 On the evidence before it, the Panel finds that the Complaint meets the two requirements 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 disputed domain name <wewannabuyyourcar.com> be transferred to the Complainant.

David Perkins
Sole Panelist
Dated: January 6, 2011

 

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