WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bentley Motors Limited v. Sergey Nikolenko
Case No. D2011-0102
1. The Parties
The Complainant is Bentley Motors Limited of Cheshire, United Kingdom of Great Britain and Northern Ireland, represented by Demys Limited, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Sergey Nikolenko of Denver, Colorado, United States of America.
2. The Domain Name and Registrar
The disputed domain name <bentleypreowned.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 19, 2011. On January 19, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On January 9, 2011, GoDaddy.com, 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 January 25, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 14, 2011. The Response was filed with the Center on February 14, 2011.
The Center appointed Sir Ian Barker as the sole panelist in this matter on February 24, 2011. 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.
On February 24, 2011, the Complainant applied to the Center for leave to file additional submissions. This application was opposed by the Respondent. The Panel decided to view the Complainant’s additional submissions and to admit them because they dealt with matters that had arisen after the Complaint had been filed. A Panel Order, dated February 28, 2011, was issued. The Respondent was given seven days until March 13, 2011 within which to respond, he having earlier commented on the Complainant’s additional submissions before these had been filed with the Center. The Respondent duly filed his response on March 13, 2011. Because of these additional submissions, the date for the delivery of this decision was extended to March 22, 2011.
4. Factual Background
The Complainant’ is a United Kingdom company which manufactures and distributes Bentley luxury automobiles. It operates worldwide with some 4,000 staff and 212 facilities, including 38 in the United States.
The Complainant or its predecessors in interest have manufactured and marketed Bentley cars since 1919. The brand has achieved success in motor racing and in the luxury vehicle market.
The Complainant owns trademarks for the word “bentley” in the United States of Amercia, United Kingdom of Great Britain and Northern Ireland and European Community. The filing date for the United States of America mark was in April 1956.
The Complainant registered the domain name <bentleymotors.co.nz> on September 26, 1996 and has used the website as its online home page since.
The disputed domain name, and other disputed domain names incorporating the brand names of well-known motor vehicles, were registered by the Respondent on or about June 11, 2010. The disputed domain name resolves to a parking page which features pay-per-click advertising links including links to competitors of the Complainant (e.g. Jaguar).
The Complainant wrote to the Respondent on December 16, 2010 in an attempt to settle the dispute amicably. There was no reply.
After the Complaint had been filed, the Respondent contacted the Complainant as detailed in the narrative of the parties’ additional submissions.
5. Parties’ Contentions
A. Complainant – Complaint
The Respondent is an individual based in Denver, United States, who appears to be involved, not in the automotive industry, but in domain name speculation by virtue of his registration of several domains incorporating generic terms. Some of these names incorporate the word “olympic” which appears to be contrary to United States legislation protecting that word. He also registered, in June, 2010, domain names similar to the disputed domain name in that famous automotive marks are included in the domain name. In particular, he has registered <porschepreowned.com> and <hondapreowned.com>.
The disputed domain name is confusingly similar to the Complainant’s registered trademarks. Many cases decided under the Policy show that, where an entire trademark is incorporated in a domain name, the addition of a generic word or words will not distinguish the domain name from the trademark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant gave him none.
Nor does the Respondent qualify under any of the provisions of Paragraph 4(c) of the Policy. It is impossible to conceive of any legitimate interest the Respondent would have in registering such a name which is of worldwide renown.
The Respondent is not known by the disputed domain name. It can be inferred that the Respondent’s advertising links in association with a disputed domain name confusingly similar to the Complainant’s trademark is intended to generate consumer confusion. The Respondent has a responsibility for all material posted on his site, even a ‘click-through’ site.
Even if the Respondent were associated with the automotive industry, then the disputed domain name could not be used in a bona fide sense. This submission is based on the decision in Dr. Ing. h.c.F. Porsche AG v. Ron Anderson, WIPO Case No. D2004-0312, <porschesales.com>.
The absence of a reply by the Respondent to the Complainant’s letter indicates that the Respondent cannot reasonably explain his position.
The disputed domain name was registered and is being used in bad faith.
B. Respondent - Response
The Respondent did not receive the Complainant’s letter of December 16, 2010 until January 18, 2011 – one day before the Complaint was filed. He had no opportunity to respond.
The disputed domain name is not confusingly similar to the disputed domain name because the Complainant trades as ‘Bentley Motors’ and not ‘Bentley’. The disputed domain name is not confusingly similar to the Complainant’s trademark.
The word ‘preowned’ in the disputed domain name distinguishes the Respondent’s operations from the Complainant’s sale of new automobiles. The case of Rolls-Royce and Bentley Motors Limited v Suood Al-Mansouri, WIPO Case No. D2000-0383, <bentley2000.com>, (relied on by the Complainant) can be distinguished because the Respondent there filed no Response and the word ‘preowned’ did not appear in the disputed domain name.
A domain name which uses the word ‘bentley’ alone does not infringe, confuse, mislead or interfere with the Complainant’s business interests. The domain name <bentley.com> relates to a firm of infrastructure professionals (Bentley Systems Incorporated) and <bentley.edu> relates to Bentley University. Other examples were offered of other domains using the word ‘bentley’.
The Complainant is not involved, as is the Respondent, with providing online advertising services to enable owners of Bentley vehicles to sell their vehicles without the intervention of a dealer. This is a legitimate business.
The Respondent registered several automotive-based names (including the disputed domain name) in June 2010 with the aim allowing owners of named-brand vehicles to sell them online, without a dealer’s involvement. Each of these domain names is ‘parked’ while the contents of the website are ‘under construction’.
The Respondent has completed websites for the domain names <preownedaudi.org> and <preownedford.net> without objection from Audi or Ford. The Respondent has no intention of selling Bentley vehicles himself. He merely intends to provide online internet advertising space for a fee to bring together owners of Bentleys with potential purchasers of Bentleys.
The Respondent has registered in good faith the other domain names named in the Complaint for bona fide purposes. The Respondent relies on Dr. Ing. h.c.F. Porsche AG v Del Fabbro Lauren, WIPO Case No. D2004-0481, <porschebuy.com> where the respondent was using the website under the disputed domain name as a marketplace for Porsche cars only and had placed a disclaimer on the website..
The Respondent did not register the disputed domain name for the purpose of selling, renting or otherwise transferring it to the Complainant or to a competitor of the Complainant, nor to prevent the Complainant from reflecting its trademark in a corresponding domain name, nor is the Respondent engaged in a pattern of such conduct or in cybers quatting or warehousing. The Respondent is not a competitor of the Complainant, nor did he register the disputed domain name for the purpose of disrupting the Complainant’s business; nor does he intend to attract internet users to his website by creating a likelihood of confusion with the Complainant’s products or services.
The Respondent intends to post a full disclaimer on the website stating that the website is not associated or affiliated with, or sponsored by the Complainant or its parent.
The disputed domain name currently displays a generic parking page assigned to all domains registered with the Registrar. The website is on ‘hold’.
C. Complainant’s Additional Submissions
Evidence of the Respondent’s conduct after the filing of the Complaint was supplied by two sworn affidavits from Matthew Smith, an official of the Complainant and from Timothy John Brown of the firm which represents the Complainant in these proceedings. Both deponents testified to conversations or emails with the Respondent after the Complaint had been filed. In these communications, the Respondent:
(a) indicated that his intended use of the Domain Name was to sell his pre-owned statue of a donkey (a photograph of the statute was emailed later);
(b) enquired of the Complainant or its agent on several occasions by telephone or email, without any prior solicitation on the part of the Complainant, whether the Complainant would make an offer to purchase the Domain Name:
(c) proposed to the Complainant by telephone that it enter into a partnership or ‘do business with’ with the Respondent to develop the website associated with the Domain Name; and
Shortly following the above communications, the Respondent configured and posted a series of advertisements on websites at <preownedaudi.org> and <preownedford.net>. The Respondent had mentioned these sites to Mr Smith in a telephone conversation on January 24, 2011.
The Respondent’s two emails of January 19, 2011 were exhibited. In the first, he asked for a ‘reasonable monetary offer’ in exchange for the disputed domain name. In the second, he stated that his reason in purchasing the disputed domain name was to sell his pre-owned donkey statue which he called ‘Bentley’. He had been working on a website to sell the statue.
On February 21, 2011 the Respondent emailed the Complainant stating that he wanted only to receive out-of-pocket costs in registering the disputed domain name, i.e. about USD 10. This was the first mention of any price.
The content at his Audi and Ford sites was placed on February 3 and 4, 2011, following the Complainant’s rejection of the Respondent’s overtures to buy the disputed domain name. The Complainant submits that the contents were contrived by the Respondent to create an air of legitimacy around the registrations referred to in the Response. No agreements with either the Audi or Ford motor companies were produced and it is not likely that either company would know of these sites, given the short time since the sites were constituted.
The Respondent has filed no evidence in the way of business plans or website designs or what has happened in the time elapsed since registration of the disputed domain name in June 2010. Such evidence could have demonstrated bona fide preparations to create a website reflecting the disputed domain name.
The Respondent has vacillated in his approach between the ‘donkey’ sale, creating a partnership with the Complainant, the business purpose stated in the Response, a sale of the disputed domain name for a ‘reasonable’ sum and a sale for USD 10.
The Complainant relies on American Honda Motor Gr Inc. v Auto of St Louis, Jim Feeney ( WIPO Case No. D2010-0541).
D. Respondent’s Additional Submissions
The Respondent owns the statue of a donkey which is engraved with the name “Bentley”. His offer to sell the statue of a donkey was an attempt at humour.
The reason for the several telephone communications to the Complainant was because when the Respondent made an offer to the Complainant, he would be told to discuss it further with the Complainant’s agent. He did seek a reasonable monetary offer in an email, but in a telephone conversation with Mr Smith on February 1, 2011, the Respondent offered to sell the disputed domain name for USD 10. When this offer was repeated to Mr Brown by telephone on February 2, 2011, Mr Brown said that the Complainant had spent enough and would “see what WIPO will decide”.
The Respondent did not offer any ‘partnership’ to the Complainant. In the telephone conversation of February 1, 2011, the Complainant’s representative, Mr Smith, said words to the effect that the Respondent’s offer was appreciated and his services would be considered for any web design on Bentley Motors’ website.
The current websites of “www.preownedford.com” and “www.preownedaudi.org” are constantly being updated with new features such as the ability for an internet user to place images of a vehicle on the website and also to place videos of a vehicle on each of the Respondent’s corresponding websites. Friends of the Respondent who deal locally with preowned Fords and Audis, post their vehicles on the website “to help with the collaboration of the website.” With every change to the website’s programming, the outcome is that all placed advertisements are deleted by the operating system. The Respondent has exhibited an advertisement placed on his Ford website on August 19, 2010 as evidence of legitimate fair use of a similar domain to the dispute domain name.
The Respondent accepts the chronology in the Complainant’s additional submission but says it omits mention of his offer to transfer the disputed domain name for USD 10 being the registration fee.
The Respondent relies on his August 2010 advertisement for a Ford car as evidence of demonstrable preparations “to use the website of the present disputed domain name in connection with a bona fide offering of goods and services.” To design a website for a disputed domain name takes time. The Respondent wanted to copy all the ‘coded’ information from his current operating sites.
The Respondent relies on the decision in WIPO Case No. D2004-0481 (cit. supra). The appearances of ‘pay-per-click’ links is not of the Respondent’s choosing but an accompaniement of registration. He does not profit from the links.
6. Discussion and Findings
Under Paragraph 4(a) of the Policy, in order to prevail, a complainant must prove the following elements of a claim for transfer or cancellation of a respondent’s domain name:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the respondent’s domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
It is accepted jurisprudence under the Policy that the addition of one or more generic words to a registered trade mark in a domain name will not distinguish that name from the trademark Sony. Kabushiki Kaisha (also trading as Sony Corporation) v Inja, Kil, WIPO Case No. D2000-1409 is but an early example of a principle now well-established.
In the automotive context, the situation is well described by the Panelist in Dr. Ing. h.c.F. Porsche AG v Kudos Trust /Domains by Proxy Inc. and Standard Tactics LLC, WIPO Case No. D2006-0164 where the disputed domain name was <porschepartsite.com> in these words.
The relevant part of the Domain Name is “porschepartsite”. The term “porschepartsite” includes the trademark PORSCHE in its entirety. The word “site “obviously refers to website and “part” can be considered to be a reference to car components. The descriptive nature of the added words “part” and “site” leads to the conclusion that PORSCHE is the dominant and distinctive part of the Domain Name. In accordance with previous UDRP decisions, the Panelist is of the opinion that the addition of descriptive words, in the present case “part” and “site”, does not reduce the likelihood of confusion between the PORSCHE trademarks and the Domain Name e.g. Microsoft Corporation v. J Holiday Co. WIPO Case No. D2000-1493 and Telstra Corporation Limited v. Ozurls WIPO Case No. D2001-0046. As a result thereof, the Panelist considers the Domain Name, of which the distinctive part is identical to the PORSCHE trademarks, confusingly similar to the PORSCHE trademarks.
Dr. Ing. h.c.F. Porsche AG v. Ron Anderson, WIPO Case No. D2004-0312 related to the domain name <porschesales.com> through which the respondent in that case planned to sell used PORSCHE motorcars. The Panel held:
“The Domain Name is <porschesales.com>. PORSCHE is a registered trademark of Complainant. The Domain Name therefore consists of Complainant’s trademark to which the general term “sales” is added. The Panelist agrees with the principle established by numerous prior decisions, that when a domain name contains in full a complainant’s registered mark, that is sufficient to establish confusing similarity.”
… and later:
By incorporating Complainant’s mark with the generic term “sales”, the Domain Name will create an association with the activity carried out by Complainant and identified by the PORSCHE trademark, thus increasing the likelihood of confusion. As stated in the case Koninklijke Philips Electronics N.V. v. NicNax, WIPO Case No. D2001-1245, the combination of the complainant’s trademark “with the term “sales” is under trademark law principles likely to be understood by consumer as being a variation of the trademark (….) and when used as a domain name it is likely to be understood as providing a link to a web site belonging to a sales department of the Complainant or to a web site of an authorised sales agent of the Complainant” (on domain names consisting of a trademark followed by a generic addition with no distinctive character, see also Heineken Brouwerijen B.V. v. Mark Lott, WIPO Case No. D2000-1487, Dr. Ing. H.c.F. Porsche AG v. Sabatino Andreoni, WIPO. Case No. D2003-0224).”
The circumstances in the presence case mirror those set out in the decisions noted above. The additional word “preowned” in the Domain Name does not make the disputed domain name sufficiently distinguishable from the Complainant’s BENTLEY marks.
The word “preowned” is a marketing expression for ‘secondhand’. When attached to a well-known automobile trademark, the concept of the sale of an automobile of that brand is clearly implied. This case is indistinguishable from the Dr. Ing. h.c.F. Porsche AG v. Ron Anderson, WIPO Case No. D2004-0312 (cit. supra) in this respect.
Accordingly, the Complainant has established the first limb of Paragraph 4(a) of the Policy and has shown that the disputed domain name is confusingly similar to the Complainant’s trademarks.
B. Rights or Legitimate Interests
The Complainant gave no rights to the Respondent to use the trademark in a domain name. Accordingly, the onus shifts to the Respondent to show whether he can establish a defence under Paragraph 4(c) of the Policy. The only possible defence of relevance is under Paragraph 4(c)(i), despite a rather weak attempt in his additional submissions to rely on Paragraph 4(c)(iii). The Respondent needs to show that, before receiving notice of the Complaint, the Respondent has made demonstrable preparations to use the disputed domain name in connection with a genuine offering of goods or services.
The Respondent claims that he registered several disputed domain names in June 2010, each combining the word ‘preowned’ with a well-known automobile brand name. The idea was to create and operate an electronic market for individual owners of such automobiles to sell them directly without the intervention of a dealer or the automobile company. He claims already to have created such markets with Audi and Ford without objection from either company.
In respect of the disputed domain name, he says that the site is “being developed”; that he intends to post a prominent disclaimer on the eventual website but that the site is currently ‘parked’; that the service provider maintains a ‘click-through’ temporary website from which he personally does not derive any benefit.
The Panel considers that the Respondent has not established the defence. Paragraph 4(c)(i) speaks of ‘demonstrable preparations’. One might therefore have expected the Respondent to have offered some evidence such as proposed website designs, contracts with web designers, marketing plans, for example. There is nothing other than the Respondent’s uncorroborated assertions which would have carried greater weight had they been incorporated in an affidavit or declaration made under penalty.
Considerable skepticism must be accorded to the Respondent’s plea under Paragraph 4(c)(i) because of his conduct after the Complaint had been filed. He vacillated between wanting to sell the disputed domain name first for a ‘reasonable sum, then for USD 10, wanting to sell the statute of a donkey, creating a partnership with the Complainant and his defence articulated in the Response. If he were totally genuine about creating the website, one wonders why he has suggested other contradictory alternatives. He claims that he was only trying to be funny with his suggestion about the donkey. Even if this were so, that does not explain his inconsistent behaviour as demonstrated by his several stances.
The Respondent relied on the case of Dr. Ing. h.c.F. Porsche AG v. Del Fabbro Laurent, WIPO Case No. D2004-0481 as supporting his position. In that case, the registrant used the domain names <Porsche-buy.com> and <porschebuy.com> to sell exclusively pre-owned Porsche cars on a web site which bore a prominent disclaimer. The case may be distinguished from the present in that the disputed domain name has been used only to display ‘pay-per-click’ advertising. Even if and when the Respondent’s proposal eventuates, he would not himself be selling Bentley cars but would only be placing the advertisements of possible vendors on a website.
The Dal Fabbro Laurent case, whilst decided on its own facts, is not easy to distinguish in its result. As in the present case, there were links on the website to other brands of luxury cars for sale.
The Respondent there made no charge and relied on Paragraph 4(c)(iii) of the Policy asserting a legitimate non-commercial use. The Panel upheld this defence on the facts.
Authorities more relevant to the present case are:
First, American Honda Motor Co. Inc. v. Auto of St. Louis, JIM FEENEY, WIPO Case No. D2010-0541 (variants of <hondaoffrontenac.com>).
In that case, the disputed domain names initially resolved to a website at which the respondent solicited owners of used Honda automobiles who were interested in selling those vehicles. The Panel held:
“Respondent has every right, like any other consumer or business, to buy and sell Honda automobiles … what is at issue here is whether Respondent has the right to use Complainant’s marks as a dominant feature of the disputed domain names. As to that, the answer is clear. Complainant has never authorized any such use, and Respondent provided no evidence that it was commonly known by any business name that included the word Honda. Respondent’s use of the disputed domain names is not legitimate under the Policy. Until notice of this dispute Respondent’s use was undeniably commercial, and undeniably made use of Complainant’s marks to attract consumers to Respondent’s business.”
Later the Panel noted:
“Again, the Panel distinguishes between the legitimacy of Respondent’s business, which no one contests, and the legitimacy of Respondent’s right to make use of Complainant’s famous trademark without permission in its business name and in the disputed domain names.”
Secondly, the Ron Anderson case (cit. supra) is also supportive of the above approach. The Panel there said:
“In addition in the Panel’s opinion, the fact that Respondent trades in automobiles (and specifically in pre-owned Porsche cars) would in any case not give right to Respondent to use the PORSCHE mark as a trade name to carry on its business in order to make commercial gain and to attract consumers. Respondent could not be prevented from using Porsche in a non-trademark sense on its web site but this is not the way he was planning to use the Domain Name. Respondent’s projected web site would in fact be accessible through the Domain Name, which would misleadingly appear to be a domain name of the Complainant. Consumers would realize that this is not the case only once they had actually accessed the site and could see the disclaimer added by Respondent after it had received Complainant’s objections. At this point, however, they had already been diverted and misled.”
The above quotation encapsulates the situation in the present case.
In the present case, the Respondent may well be entitled to buy and sell Bentley cars and to act as an agent for potential vendors. What he cannot do is make use of the Complainant’s trademark in doing so. To the extent that the Del Fabbro Laurent decision differs from the above two decisions cited, this Panel prefers these two decisions. WIPO Case No. D2006-0164 (cit. supra) is also supportive of this approach.
The Respondent’s claim that Ford and Audi have not as yet objected to the Respondent’s activities in respect of their brand names is hardly helpful. Clearly, there has been little time for this to have happened. A cynic might think that it would be only a question of time before these companies took the same approach as the Complainant in this case and Porsche and Honda in the cases cited. Whatever, his conduct in respect of other automotive brands, the Panel is concerned only with the facts of the present case. It does not follow that because he has produced these Ford and Audi websites, that in the absence of any evidence such as the letting of a website design contract, that the Respondent will necessarily develop the Bentley website.
The Respondent claimed in his additional submissions that he might qualify under Paragraph 4(c)(iii) of the Policy in that he was making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or tarnish the trademark.
He claimed that he has made nothing from the present content of the website which is imposed on him by the Registrar whilst the disputed domain name is “parked”. This submission is naïve at best. Paragraph 4(c)(iii) envisages a non-commercial enterprise. If what he claims as his object is correct, the Respondent is intending to conduct a commercial enterprise and the current situation is merely a holding situation.
Many UDRP decisions under the Policy have held that operating a link parking page using a trademark in a domain name and providing connections with services competitive with those of the mark’s owner does not establish rights or legitimate interests – See the summary of authorities in Get Away Today .Com Inc v. Warren Gilbert, WIPO Case No. DCO2010-0021. That same decision noted (and this is approved by the present Panel) that the fact that a respondent may be providing its link parking page through passive acceptance of a designation by its Registrar,does not alter the impact on a Complainant from the standpoint of diversion of prospective customers.
Accordingly, any defence under Paragraph 4(c)(i) and (iii) of the Policy must fail and the Complainant has established Paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The fame of the BENTLEY mark in the luxury car market for close on a century, makes it clear that any registration of a domain name incorporating that mark in conjunction with a genteel generic sales term, shows that no registrant of a domain name such as the Respondent would have registered it without cognisance of the Complainant’s mark.
The Respondent alleges that he did not register the disputed domain name for the purpose of transferring it to the Complainant or to the competitor of the Complainant. This statement is open to question in view of his dealings with the Complainant after the filing of the Complaint. He denies all the other situations envisaged by Paragraph 4(b) of the Policy.
Evidence of the Respondent’s intent with regard to this disputed domain name can be seen from the completed sites for <preownedaudi.org> and <preownedford.net>. There will be a real risk of confusion by internet users who may think that the Respondent’s website has some affiliation with or endorsement from the Complainant, should the Bentley website be developed on similar lines.
As was envisaged in the part of the Ron Anderson decision quoted above, the Respondent’s projected website would be accessed through the disputed domain name which would misleadingly appear to be a domain name of the Complainant. A consumer would not realise that this was not the case until the site had been accessed. By the time the disclaimer had been seen, the consumer would already have been diverted and misled.
Accordingly, the Complainant has proved that the disputed domain name had been registered and is being used in bad faith. Paragraph 4(a)(iii) of the Policy has been proved.
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 <bentleypreowned.com> be transferred to the Complainant.
Sir Ian Barker
Dated: March 22, 2011