WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
We Buy Any Car Limited v. Roger Masih
Case No. D2011-0907
1. The Parties
The Complainant is We Buy Any Car Limited of Rochdale, United Kingdom, represented by Hogan Lovells International LLP, United Kingdom.
The Respondent is Roger Masih of Birmingham, United Kingdom.
2. The Domain Names and Registrar
The disputed domain names <webuyanycarforcashtoday.com>; <webuyanycarnostress.com>; <webuyanycarrightnow.com>; <webuyanycarscam.com>; <webuyanycarstoday.com>; <wewillbeatanycarprice.com> are registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 25, 2011. On May 26, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On the same day, 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 June 3, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 23, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 24, 2011.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on July 1, 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.
4. Factual Background
According to the Complaint, the Complainant is in the business of buying and selling vehicles. More particularly, the Complainant offers a simplified procedure for people to sell their cars, by a combination of an Internet-based estimate, a confirmatory inspection, and a financial settlement. The business is substantial, with a 2009 turnover exceeding GBP 140 million and an advertising expenditure that year exceeding GBP 5 million.
The Complainant has used the relevant trademarks since August 2006 and has been independent of UK Car Group Limited since March 28, 2010. The Complainant submits the following information as to its trademarks:
WEBUYANYCAR, United Kingdom, Application No. 2541644, applied for March 11, 2010, class 35, pending;
WEBUYANYCAR.COM, stylized lower case with colour and device, United Kingdom, Registration No. 2445197, registered October 19, 2007, classes 12, 35, 36, 37, 39;
WEBUYANYCAR.COM, stylized lower case with colour and device, Community Trademark, Registration No. 8946303, registered September 2, 2010, classes 12, 35, 36, 37, 39;
Logo, as in CTM 8946303, without words, Community Trademark, Application No. 9501214, applied for November 5, 2010, classes 12, 35, 36, 37, 39, advertised;
WEBUYANYCAR.COM/WEBUYANYCAR.COM, stylized with colour and devices, United Kingdom, Registration No. 2442651, registered November 16, 2007, classes 12, 35, 36, 37;
WEBUYANYCAR.COM/WEBUYANYCAR.COM, stylized with colour and devices, United Kingdom, Registration No. 2457645, registered December 14, 2007, class 39;
WEBUYANYCAR.COM, stylized lower case with colour, United Kingdom, Registration No. 2541783, registered March 11, 2010, class 35.
No factual information has been provided by the Respondent except for the contact details provided for the purposes of registering the disputed domain names. The Complainant describes the Respondent as a United Kingdom based individual who appears to operate a car purchase business.
The disputed domain names were apparently registered by the Respondent on the following dates:
<webuyanycarforcashtoday.com>, January 19, 2011;
<webuyanycarnostress.com>, January 19, 2011;
<webuyanycarrightnow.com>, January 19, 2011;
<webuyanycarscam.com>, January 19, 2011;
<webuyanycarstoday.com>, January 7, 2011;
<wewillbeatanycarprice.com>, February 20, 2011.
5. Parties’ Contentions
The Complainant’s submissions include the following.
The Complainant has provided copies of search documents in support of its ownership of the trademarks listed in section 4 above.
The Complainant says that prior to its trademark registrations, the trademark WEBUYANYCAR was in use and gained common law rights from August, 2006. The Complainant advertises in the press in national and local newspapers and magazines, on television, on the Internet and on hoardings, thus the Complainant and its trademarks are publicly well-known. A Google search may preempt the search term “we buy any car” after as little as “we b” has been typed.
The Complainant contends that the disputed domain names are confusingly similar to its trademarks. In the cases of those five disputed domain names that contain WEBUYANYCAR, the generic or descriptive terms added, i.e., “forcashtoday”, “nostress”, “rightnow”, “scam” and “[s]today” respectively, do not avoid confusing similarity between the disputed domain names and the Complainant’s trademarks.
The Complainant contends that because its trademarks are based on the well-known string WE...ANYCAR, therefore the disputed domain name <wewillbeatanycarprice.com>, by containing the same string, is confusingly similar to its trademarks.
The Complainant further contends that the Respondent does not have rights or legitimate interests in the disputed domain names. Any use to which the Respondent puts the disputed domain names cannot be bona fide in the terms of paragraph 4(c)(i) of the Policy because the Respondent, by incorporating the Complainant’s trademark, is trading on the good name of the Complainant and therefore not legitimately. The Respondent is using the Complainant’s trademarks and variants of them to attract Internet visitors by confusion. Furthermore the Respondent has placed the Complainant’s trademarks WEBUYANYCAR and WEBUYANYCAR.COM into the metatag components of the source code of the Respondent’s websites as a device to improve its profile with search engines. Copies of the source code are produced in evidence.
It is contended that the Respondent has never been authorized to use the Complainant’s trademarks, has not been commonly known by a name similar to the disputed domain names, and that the disputed domain names have not been used non-commercially.
The Complainant further contends that the disputed domain names were registered in bad faith.
The Complainant is so well known that it is inconceivable that the Respondent was not aware of the Complainant’s trademarks when incorporating WEBUYANYCAR into the relevant disputed domain names. Websites of the Respondent display the Complainant’s trademarks or adaptations of them.
The disputed domain names have also been used in bad faith. In the terms of paragraph 4(b)(iii) of the Policy the Respondent as a competitor of the Complainant has used the disputed domain names to divert business from the Complainant and to disrupt the business of the Complainant. In the terms of paragraph 4(b)(iv) of the Policy the Respondent has traded on the Complainant’s goodwill by the diversion of Internet users by confusion with the Complainant’s trademark for the Respondent’s commercial gain.
The Complainant states that it has established contact with the Respondent that has not led to a solution.
The Complainant has cited previous decisions under the UDRP that it wishes the Panel to take into consideration as possible precedent.
The Complainant requests the transfer to it of the disputed domain names.
The Respondent did not reply to the Complainant’s contentions.
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.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has rights in the registered trademark WEBUYANYCAR.COM. It is not essential to consider the claim to common law rights in the trademark WEBUYANYCAR.
The disputed domain name <wewillbeatanycarprice.com> will be considered first. The Complainant must prove that the disputed domain name is confusingly similar to its trademark. The test must of necessity be confined to the alphanumeric string comprising this disputed domain name and the trademark, or their aural equivalents.
The Complainant’s trademark relies for its distinctiveness on a sentence comprising ordinary words: “we buy any car”. That sentence projects solely and explicitly that the Complainant buys cars, which is consonant with its stated business model: “Put simply, webuyanycar.com was set up to make selling a car as simple and stress-free as possible. [...]”. Conversely, the Panel considers the words “price” or “car price” in <wewillbeatanycarprice.com> to have stronger connotations of purchase from a dealer, than of sale to a dealer. Furthermore the words “beat” or “beat any ... price” are widely used in advertising and in the context are generally associated with low, competitive, cheap or undercut selling prices. Given the inherent weakness of a trademark comprising an ordinary sentence of common words, confusing similarity with it must be clear, visually or aurally, and the Complainant’s trademark must reasonably be recognizable within the disputed domain name. The Panel does not accept the Complainant’s contention that a similarity of selected parts of the disputed domain name to those parts of the trademark WE...ANYCAR is sufficient in this instance. The Panel does not find that the Complainant has succeeded in proving, on the balance of probabilities, that Internet users would be more likely than not to confuse <wewillbeatanycarprice.com> with the trademark WEBUYANYCAR.COM. Whilst previous cases under the UDRP are not binding precedent, the case of We Buy Any Car Limited v. DYL Motor Group, WIPO Case No. D2010-1978, cited by the Complainant, may be distinguished in part because in that case the disputed domain name <wewannabuyyourcar.com> appears to this Panel to project the concept of a sale to a dealer.
The content of a website to which a disputed domain name resolves is not generally relevant to a decision under paragraph 4(a)(i) of the Policy. Any alleged infringement of the Complainant’s trademark on a website may be a matter to be pursued outside of the UDRP.
The disputed domain name <wewillbeatanycarprice.com> is not referred to in any of the discussion below.
The disputed domain names <webuyanycarforcashtoday.com>, <webuyanycarnostress.com>, <webuyanycarrightnow.com>, <webuyanycarscam.com> and <webuyanycarstoday.com> (hereafter, the “five disputed domain names”) each clearly embody the Complainant’s trademark WEBUYANYCAR.COM with the insertion of generic or descriptive elements “forcashtoday”, “nostress”, “rightnow”, “scam” or “[s]today” after the main message “we buy any car”. The Panel finds that the additional words do not detract from confusing similarity between the disputed domain names and the Complainant’s trademark and accordingly finds for the Complainant in respect of these five disputed domain names.
B. Rights or Legitimate Interests
The Complainant has stated, and it has not been contested, that it has not authorized the use of its trademarks by the Respondent.
The Respondent has not attempted in the terms of paragraph 4(c) or otherwise to assert any rights or legitimate interests in the five disputed domain names. Since the five disputed domain names evidently have traded on the strength of the Complainant’s trademarks without permission, the Panel does not find a realistic possibility that the Respondent could claim bona fide use of them for an offering of goods or services.
There is no evidence that the Respondent has been commonly known by any of the five disputed domain names, or that he has made a legitimate noncommercial or fair use of them.
C. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain names have been registered and are being used in bad faith. Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith, namely:
(i) 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; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your website or location.
The provisions of paragraph 4(b) of the Policy are without limitation and bad faith registration or use may be found otherwise.
The Complainant has produced evidence in the form of screenshots of the Respondent’s websites, to which the five disputed domain names resolve. They project a clear impression of commercial sites, some with areas under construction, designed for the purpose of carrying on a business essentially identical to and in competition with the Complainant’s. Prominently displayed signs and logos are identical to the Complainant’s trademarks, or are confusingly similar with, for example, vehicle symbols subtly reordered and recoloured. The Respondent has adopted techniques, other than the appropriation and display of the Complainant’s trademarks, including the incorporation of the Complainant’s trademarks as HTML metatags, logically with the intention of achieving search engine success in competition with the Complainant. The Panel finds in the terms of paragraph 4(b)(iv) of the Policy that the Respondent has attempted to attract Internet visitors for commercial gain by intentional confusion with the Complainant’s trademarks, and that the five disputed domain names were registered in bad faith for this purpose.
The Complainant has submitted that the Respondent’s conduct has been disruptive to its business in the terms of paragraph 4(b)(iii) of the Policy. Whilst the finding above of bad faith under paragraph 4(b)(iv) of the Policy is sufficient, and paragraph 4(b)(iii) of the Policy is commonly applied in the case of denigration or destructive targeting of a Complainant, in the present case the nature of the imitation of the Complainant’s business on the Respondent’s websites, and the use of HTML metatags as already described, is blatant to the extent that the Panel finds potential damage to the Complainant to be highly probable. It is further found that the five disputed domain names were registered in bad faith primarily for this purpose.
The Panel finds for the Complainant in terms of paragraphs 4(a)(iii), 4(b)(iii) and 4(b)(iv) of the Policy in respect of the five disputed domain names.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <webuyanycarforcashtoday.com>, <webuyanycarnostress.com>, <webuyanycarrightnow.com>, <webuyanycarscam.com> and <webuyanycarstoday.com> be transferred to the Complainant; and that the Complaint in respect of the domain name <wewillbeatanycarprice.com> be denied.
Dr. Clive N.A. Trotman
Dated: July 7, 2011