WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sandown Motors Limited v. John Guest

Case No. D2016-1530

1. The Parties

The Complainant is Sandown Motors Limited of Poole, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”), represented by Stevens and Bolton LLP, United Kingdom.

The Respondent is John Guest of Poole, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name, <sandown-group.com>, is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2016. On July 27, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 8, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 28, 2016. At the request of the Respondent, the due date for Response was extended to September 1, 2016. The Response was filed with the Center on September 1, 2016.

The Center appointed Steven A. Maier as the sole panelist in this matter on September 9, 2016. 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

The Complainant is a company incorporated in England and Wales. It is a motor dealer specializing in Mercedes-Benz and Smart motor vehicles.

The Complainant is the owner of the domain name <sandown-group.co.uk>, which was registered on September 6, 2013.

The disputed domain name was registered on March 25, 2016.

The disputed domain name has been used to link to a website at “www.sandown-group.com”. According to evidence submitted by the Complainant (i.e., screen-shots dated July 26, 2016), the website:

(1) is headed “SANDOWN GROUP LIMITED”;

(2) contains the email address “md@sandown-group.com” immediately below the heading;

(3) includes a link to a Twitter username “@MDSandown”;

(4) states that Sandown Group Limited is not and does not wish to be affiliated with “The Sandown Group Mercedes Benz Dealers”;

(5) includes information concerning the Complainant and its parent and associated companies; and

(6) states as follows: “Our mission is to tell the absolute truth about ‘The Sandown Experience’, no more, no less. This is based on my business experiences with ‘The Sandown Group’ since its creation in the United Kingdom. If in the words of Sandown Motors Limited ‘Mercedes-Benz - The Best or Nothing’ Then chose nothing! (An opinion, no more no less.) The phrase would better read ‘Mercedes-Benz The Best of Nothing’”.

5. Parties’ Contentions

A. Complainant

The Complainant states that it is the parent of a group of companies, collectively known as the “Sandown Group”, which trades from six sites across the South of England. It states that it has traded under that name since January 1, 2014, but has over 30 years’ experience in selling and servicing Mercedes-Benz motor vehicles. It asserts that it has 45,000 customers on its database of whom 20,000 are contacted on a regular basis. It states that its total turnover for the year to December 31, 2015 was GBP 204 million and that it spent GBP 949,000 on marketing in that year. It says that it carries out marketing through press advertising, local media, Mercedes-Benz initiatives and social media including Facebook, Twitter and LinkedIn. The Complainant provides examples of its marketing materials.

The Complainant states that its primary marketing platform is located at “www.sandown-group.co.uk”, which has been active since September 2013 and receives 12,000 to 14,000 unique visits per month. It states that its email addresses are in the format “@sandown-group.co.uk”. The Complainant provides screen-shots of its website as at August 30, 2016.

The Complainant submits that, as a result of the matters set out above, it has acquired substantial goodwill and reputation in the mark SANDOWN GROUP.

The Complainant states that the Respondent is a former customer of the Complainant who was aggrieved when his car was damaged while being serviced by the Complainant. The Complainant claims that, while it used its best efforts to resolve the dispute, the Respondent has acted unreasonably in attempting to damage the Complainant through a public campaign of negative comments. The Complainant says that, in addition to registering the disputed domain name, the Respondent incorporated a UK company, Sandown Group Limited, on April 2, 2016. It also submits that the Respondent has operated the email address “MD@sandown-group.com” which is suggestive of the Managing Director of the Complainant and that he has created a Twitter account at “@MDSandown” at which he has also posted negative comments concerning the Complainant.

The Complainant submits that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant states that the significant part of the disputed domain name, <sandown-group.com>, is identical to its mark SANDOWN GROUP.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant submits that the Respondent has used the disputed domain name only for the purpose of expressing negative thoughts about the Complainant in an attempt to damage the Complainant’s reputation and goodwill. The Complainant submits that the Respondent’s actions do not represent any bona fide use of the disputed domain name or give rise to any rights or legitimate interests as contemplated by the circumstances set out in paragraph 4(c) of the Policy.

The Complainant submits that the disputed domain name has been registered and is being used in bad faith. The Complainant submits that the disputed domain name is confusingly similar not only to its SANDOWN GROUP mark but also to its <sandown-group.co.uk> domain name. The Complainant repeats that the Respondent has used the disputed domain name solely for the purpose of a campaign against the Complainant aimed at damaging its reputation, goodwill and business. The Complainant also relies on the Respondent’s incorporation of the company Sandown Group Limited and his use of the email address “MD@sandown-group.com” and the Twitter account at “@MDSandown” as further evidence of the Respondent’s bad faith.

The Complainant seeks a transfer of the disputed domain name.

B. Respondent

The Respondent states that he is the owner and CEO of the company Sandown Group Limited and that that is the only entity which legitimately uses the name “Sandown Group”. The Respondent submits that neither the Complainant nor any of its other group companies trades as “Sandown Group” and that the Complainant does not invoice under that name or use that name on any legal document. The Respondent states that the Complainant’s companies trade under names such as “Sandown Surrey & Hampshire Limited” (trading as “Mercedes Benz Guildford”) and “Sandown Motors Poole Limited” (trading as “Mercedes Benz Poole”) and that the Complainant’s “Sandown Group” is a non-existent construct. The Respondent submits that any use of the name “Sandown Group” on the Complainant’s website is rare and possibly unlawful given the Respondent’s exclusive rights in that name.

The Respondent states that he formed the company Sandown Group Limited for his “own reasons” without objection from the UK registry, Companies House. He submits that in these circumstances he was entitled to register the disputed domain name, <sandown-group.com>, and also questions the Complainant’s entitlement to the domain name <sandown-group.co.uk>. He also objects to the Complainant’s registration on June 29, 2016 of the UK trademark SANDOWN. The Respondent states that he is not obliged to give reasons for his lawful registration of the disputed domain name or the UK company. He adds that the trademark SANDOWN GROUP does not legally exist and that, if it did, he would be the rightful owner of it.

The Respondent submits that his website clearly states that he has nothing to do with the Complainant. He states that he has never “bad mouthed” the Complainant (as the Complainant submits) but has only ever told the truth about the Complainant and notes that the Complainant has not sued him for libel. The Respondent adds that the “MD” in the email address “MD@sandown-group.com” stands for “Machina ex Deus”.

The Respondent makes extensive further allegations concerning the ownership of the Complainant, the conduct of its business and the actions of its Managing Director in connection with the dispute concerning the Respondent’s vehicle. The Respondent also submits exhibits including a photograph of his damaged vehicle and press reporting of the road accident in which the damaged was sustained.

The Respondent submits that this is a frivolous Complaint which is intended to deprive him of a domain name which he rightfully owns.

6. Discussion and Findings

In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:

(i) that the disputed 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 respect of the disputed domain name; and

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

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has traded under the name and mark SANDOWN GROUP since at least 2014. The Panel accepts the Respondent’s submission that this is not the name of any legal entity registered by the Complainant, nor the trading name that it uses in official documentation or most prominently in its promotional activities. Nevertheless, it registered the domain name <sandown-group.co.uk> in 2013 and (as verified by the Panel from the “Internet Archive” website) has operated an active website at “www.sandown-group.co.uk” including the term “Sandown Group” since at least July 24, 2014. While the Panel agrees with the Respondent that the Complainant’s references to this name on its website are limited (it more commonly using simply “Sandown”) they are nevertheless present and include, for example, the statement “Welcome to Sandown Group” on the website homepage in the course of 2015. The Panel finds in all the circumstances that, whatever other names it also uses, the Complainant has acquired reputation and goodwill in connection with the name and mark SANDOWN GROUP such that that name is likely to be associated by members of the public with the Complainant and its services. The Complainant therefore has rights in the name and mark SANDOWN GROUP in the nature of unregistered trademark rights.

The disputed domain name, <sandown-group.com> is identical to the Complainant’s mark, save for the hyphen in place of a space and the generic Top-Level Domain (“gTLD”) “.com” which is typically to be ignored for the purpose of the present analysis. In the circumstances, the Panel finds that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Respondent submits that he has rights in the name and mark SANDOWN GROUP by virtue of his incorporation and ownership of the UK limited company Sandown Group Limited. The Panel disagrees. The registration of a company under a particular name does not of itself give rise to trademark rights in that name and the acceptance of the name for registration by Companies House is of no significance in that regard. Appropriate rights may be acquired either by a trademark registration or by trading under the name such that it becomes distinctive of the relevant party, but the Panel finds no evidence of any such activity in this case. In particular, the Respondent has used the disputed domain name solely for the purpose of a criticism site aimed at the Complainant, which does not amount to use in connection with a bona fide offering of goods or services.

In certain circumstances, a domain name which incorporates a party’s trademark may legitimately be used for the purposes of a website which criticizes that party. However, in the view of the Panel, this does not extend to the use of a domain name which by its nature represents that it is likely to be owned or operated by, or otherwise associated with, the trademark owner. In the view of the Panel the disputed domain name, which comprises an unadorned adoption of the Complainant’s mark SANDOWN GROUP, does give that misimpression and does not, therefore, represent legitimate noncommercial or fair use of the disputed domain name. While the Panel accepts that a visitor to the Respondent’s website would be likely immediately to realize that it is not the Complainant’s website, that is irrelevant to the fact that the visitor has been misleadingly induced by the disputed domain name to visit the website in the first place.

There being no other evidence of relevant rights or legitimate interests on the Respondent’s part, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

Similar considerations arise in connection with the question of bad faith. In view of the nature of the disputed domain name, namely an unadorned adoption of the Complainant’s trademark, the Panel finds that the Respondent registered and has used the disputed domain name with the intention of inducing Internet users to visit his website in the mistaken belief that that website is owned or operated by, or otherwise associated with, the Complainant. The Respondent is not assisted in this regard by his registration of the UK company Sandown Group Limited for his “own reasons”, nor by his use of the email address “MD@sandown-group.com”. The Panel finds the Respondent’s explanation for the use of this email address to be wholly unavailing and accepts the Complainant’s submission that “MD” is likely to be understood as meaning “Managing Director”. The Panel therefore finds that the adoption of this email address was in all probability intended to cause additional disquiet to the Complainant.

Having reviewed the Response and the exhibits submitted by the Respondent, the Panel is in no doubt that the Respondent’s grievances against the Complainant are sincerely held. However, this proceeding must be decided in accordance with the Policy and the Rules, and the Panel finds no justification for the Respondent’s registration and use of a domain name which misleadingly suggests that it is owned or operated by, or otherwise associated with, the Complainant but is in fact used for the purposes of a website which is critical of the Complainant. In the circumstances, the Panel finds that the disputed domain name has been registered and is being used in bad faith.

7. Decision

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, <sandown-group.com>, be transferred to the Complainant.

Steven A. Maier
Sole Panelist
Date: September 14, 2016