WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
We Buy Any Car Limited v. Dean Kent
Case No. D2011-0496
1. The Parties
The Complainant is We Buy Any Car Limited of Lancashire, United Kingdom of Great Britain and Northern Ireland, represented by Hogan Lovells International LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Dean Kent of Southend-on-Sea, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <webuyanycars.com> is registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 16, 2011. On March 17, 2011, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On March 17, 2011, 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 March 21, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 10, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 11, 2011.
The Center appointed Charters Macdonald-Brown as the sole panelist in this matter on April 21, 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.
A supplemental filing was filed on April 20, 2011 by the Complainant.
4. Factual Background
The Complainant is in the business of buying cars. It operates online from “www.webuyanycar.com” and “www.webuyanycar.co.uk” where customers can obtain an instant price which the Complainant will pay for any given car.
The Complainant has been trading under the WE BUY ANY CAR and WEBUYANYCAR.COM marks since August 2006 and has registered several trade marks for stylized logos for WEBUYANYCAR.COM in the United Kingdom and at European Community level. The earliest registration of the Complainant’s trade marks for WEBUYANYCAR.COM was on October 19, 2007. The Complainant also has pending word mark applications (i.e., without stylization) in the United Kingdom for WEBUYANYCAR and WEBUYANYCAR.COM based on distinctiveness acquired through use.
It is unclear precisely when the Respondent acquired the Disputed Domain Name – it is said by the Complainant to have occurred between December 2, 2010 and January 4, 2011.
5. Parties’ Contentions
The Complainant contends that its brand is well-known in the United Kingdom as a result of heavy investment in advertising. The Complainant has provided evidence of advertising in many national publications, on national television and on billboards. In particular the Complainant’s brand is said to have achieved a high degree of penetration as a result of a memorable television advertising campaign. In addition to its registered trade mark rights and pending applications, the Complainant says that it has unregistered rights in WEBUYANYCAR and WEBUYANYCAR.COM in unstylized form.
The Complainant has also indicated that there has been correspondence between its representatives and those of the Respondent prior to the filing of the Complaint.
Identical or confusingly similar
The Complainant contends that the Disputed Domain Name is identical to the Complainant’s trade marks, unregistered rights and domain name. The addition of the letter “s” at the end of the Disputed Domain Name, which merely makes the last word “car” a plural, is said to be insignificant such that the Disputed Domain Name is at least confusingly similar to the Complainant’s marks, if not identical.
The Complainant also asserts that the webpages hosted at the Disputed Domain Name contain further elements which serve to maintain, rather than dispel the confusion, for example the prominent display of the WEBUYANYCARS.COM mark and the use of colours similar to those of the Complainant’s logos.
No rights or legitimate interest
The Complainant states that its searches have revealed no registered trade marks in the United Kingdom or the European Community in the name of the Respondent for WEBUYANYCARS.COM or variations thereof.
The Complainant contends that the Respondent’s website at the Disputed Domain Name offers an identical commercial service to that of the Complainant. Moreover, it is claimed that rather than using its own methodology to value cars, the Respondent is using the Complainant’s website to generate a price for each customer request that it receives. The Complainant has provided evidence of significantly increased traffic to its own website from the particular IP location from which the Respondent operates. The Complainant therefore asserts that the Disputed Domain Name is being used for commercial purposes and in bad faith.
The Complainant has also provided evidence that the Respondent’s website uses the Complainant’s marks as metatags. It is submitted that this supports the Complainant’s assertion that the Respondent is deliberately seeking to divert consumers from the Complainant’s business to its own.
The Complainant says that it has not authorized the Respondent to use its trade marks and that there is no connection between the Complainant and the Respondent. Furthermore, having conducted some searches, the Complainant has found no evidence that the Respondent has a similar name or trade mark rights to suggest that the Respondent is commonly known by the Disputed Domain Name.
Registered in and being used in bad faith
The Complainant alleges that the Respondent acquired the Disputed Domain Name in late 2010 or early 2011 and that at such time the Respondent must have been aware of the Complainant’s brand, particularly as they are active in the same commercial sector. In light of this and other aspects of the Respondent’s website, the Complainant contends that the Disputed Domain Name was acquired and is being used for the purpose of disrupting the business of the Complainant and to attract business by creating a likelihood of confusion that the Respondent’s business is associated somehow with that of the Complainant.
The Complainant has also provided evidence of one of the Respondent’s customers making a complaint against the Complainant as demonstrating that actual confusion is arising and that the Respondent’s use of the Disputed Domain Name is causing real harm to the Complainant’s reputation and marks.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To be satisfied that the Complaint is made out and to order the transfer of the Disputed Domain Name the Panel must be satisfied that each of the following three elements set out under paragraph 4(a) of the Policy is made out:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in the Disputed Domain Name; and,
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established that it has rights in WEBUYANYCAR and WEBUYANYCAR.COM. The Disputed Domain Name varies only by the addition of the “s” at the end of the word “car”. This difference is trivial and does not significantly distinguish the Disputed Domain Name from the Complainant’s brand. The Panel therefore has little hesitation in finding that the Disputed Domain Name is confusingly similar to the Complainant’s trade marks and that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
The Respondent is using the Disputed Domain Name to offer a commercial service which directly competes with the service offered by the Complainant. The offering of this service cannot be considered to be bona fide in light of the fact that the Disputed Domain Name seems to have been deliberately chosen to trade off the Complainant’s goodwill (see, for example, Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847) and the way in which the Respondent’s website is set up is aimed at creating in the minds of its customers a false association with the Complainant rather than dispelling such confusion.
The Complainant has conducted some searches to verify whether the Respondent is commonly known by the Disputed Domain Name. These searches have revealed nothing to suggest a legitimate interest on this ground.
The Panel’s view is that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name and the burden therefore shifts to the Respondent to rebut that case. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions. In the absence of any Response by the Respondent, the Panel draws the inference that the Respondent has no rights or legitimate interests (Betsson Malta Limited v. John Droker, WIPO Case No. D2010-0883). Accordingly, the Panel finds that the requirement under paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Given the high level of investment by the Complainant over the last few years in promoting its business and brand, it is highly unlikely that the Respondent was unaware of the Complainant’s business at the date it acquired the Disputed Domain Name. Especially since the Respondent operates in exactly the same business sector as the Complainant.
Moreover, the way in which the Respondent operates its business, by using the Complainant’s website to generate prices and using the Complainant’s marks as metatags for its website, is cogent evidence that the Respondent was well aware of the Complainant’s business and brand when it set up its competing website and that the intention of the Respondent, when acquiring the Disputed Domain Name, was to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s brand and business.
In light of these findings, the Panel is satisfied that the Respondent has acquired and is using the Disputed Domain Name in bad faith in accordance with paragraph 4(b)(iv) of the Policy. Accordingly, the requirement under paragraph 4(a)(iii) of the Policy is satisfied.
For 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 <webuyanycars.com> be transferred to the Complainant.
Dated: May 4, 2011