WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Arnold Clark Automobiles Limited v. Domain Administrator, Fundacion Privacy Services Ltd.

Case No. D2021-1080

1. The Parties

The Complainant is Arnold Clark Automobiles Limited, United Kingdom, represented by Demys Limited, United Kingdom.

The Respondent is Domain Administrator, Fundacion Privacy Services Ltd., Panama.

2. The Domain Name and Registrar

The disputed domain name <aŕnoldclark.com> (xn--anoldclark-85b.com) is registered with Media Elite Holdings Limited dba Register Matrix (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2021. On April 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 10, 2021, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 2, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 3, 2021.

The Center appointed David H. Bernstein as the sole panelist in this matter on May 6, 2021. 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 owns several United Kingdom trademark registrations, including Nos. UK00002103334 and UK00002300325, which are both for ARNOLD CLARK and, together, cover classes 35 (provision of goods in a motor vehicle and spare parts goods outlet), 36 (insurance services), 37 (vehicle installation and repair services), and 39 (vehicle rental, towing, transport, and hiring) and were registered on April 4, 1997 and December 13, 2002, respectively. The Complainant owns and operates the “www.arnoldclark.com” website, at which it sells new and used cars and offers automotive-related services such as repair services, car rentals, and car insurance.

The Respondent registered the disputed domain name on March 15, 2021. The disputed domain name is a mix of Latin and Slovak characters, with the second letter of the disputed domain name being the accented letter ŕ from the Slovak alphabet. The disputed domain name resolves to a pay-per-click (“PPC”) website on which the first advertisement link is for “car insurance.” These links direct Internet users to third party websites that compete with the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant states that it is Europe’s largest independently owned family-run car dealership, with over 200 new and used car dealerships throughout the United Kingdom. The Complainant sells more than 250,000 vehicles each year and also supplies automotive-related services including motorcar leasing and fleet services; car finance and insurance; vehicle aftercare; servicing; and accident repairs.

The Complainant contends that the disputed domain name is confusingly similar to its ARNOLD CLARK marks with the only difference being the replacement of the Latin character “r” with the accented letter “ŕ” from the Slovak alphabet. As such, the Complainant contends that the disputed domain Name is an example of an internationalized domain name (“IDN”) homograph attack. The Complainant avers that the Respondent intentionally picked the disputed domain name as a homograph or typographical variant of the Complainant’s ARNOLD CLARK marks in order to spoof the Complainant’s domain name.

The Complainant contends that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Complainant contends that there is no conceivable use to which the disputed domain name could be put now, or in the future, that would confer any legitimate interest upon the Respondent.

The Complainant further contends that the disputed domain name was registered and is being used in bad faith. The Complainant contends that the Respondent intentionally attempted to attract, for commercial gain, web users to its website by creating a likelihood of confusion with the Complainant’s marks as the source, sponsorship, affiliation, or endorsement of it web site. The Complainant contends that the disputed domain name was registered as a homograph or typographical variant of its ARNOLD CLARK marks. The Complainant contends that the disputed domain name will result in users looking for the Complainant’s website being misled or deceived.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.¹

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements that the Complainant must prove by a preponderance of evidence in order to obtain transfer of the disputed domain name:

(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 interest in respect of the disputed domain name; and

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

Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) addresses the potential impact of the Respondent’s default:

“Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.”

Thus, notwithstanding the Respondent’s failure to respond to the Complaint, the burden remains on the Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.

A. Identical or Confusingly Similar

The Complainant has submitted evidence of its ownership of registrations for the ARNOLD CLARK mark in the United Kingdom. As such, the Complainant has clearly established that it has rights in the ARNOLD CLARK trademark. See section 1.2.1 of WIPO Overview 3.0 (“Where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.”).

The Complainant also has established that the disputed domain name is confusingly similar to the Complainant’s ARNOLD CLARK trademark in that the disputed domain name incorporates the ARNOLD CLARK trademark in its entirety. The addition of an accent mark on the “r” does nothing to undermine the confusing similarity between the disputed domain name and the ARNOLD CLARK trademark. Seesection 1.9 of WIPO Overview 3.0 (“A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark . . . [e]xamples of such typos include . . . (iv) the use of non-Latin internationalized or accented characters.”)

The Panel therefore concludes that the disputed domain name is confusingly similar to the Complainant’s ARNOLD CLARK mark. Accordingly, the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant has the burden of making a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Once this burden is met, the burden of production shifts to the Respondent to demonstrate its rights or legitimate interests in the disputed domain name (though the burden of proof remains on the Complainant at all times). See Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110. If the Respondent does not satisfy its burden of coming forward with some evidence to rebut the Complainant’s prima facie showing, or if the Respondent fails to file a response at all, the Complainant’s prima facie showing will be sufficient to meet its burden of demonstrating that the Respondent has no rights or legitimate interests in the disputed domain name. Moroccan Financial Board v. Abdullah Riahi, WIPO Case No. D2011 0751.

The Complainant has made the requisite prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant has demonstrated that it owns the ARNOLD CLARK trademark worldwide and that it has not granted the Respondent any right to use that mark. The Complainant further alleges that they have found no evidence that Respondent has not been commonly known by, nor acquired trademark rights incorporating, either arnold clark or aŕnold clark. Further, the Complainant has found no evidence that the Respondent has ever traded as aŕnold clark.

The Complainant also alleges that, “given the fame of its marks and the confusing similarity of the disputed domain name to said marks, there is no conceivable use to which the disputed domain name could be put now, or in the future, that would confer any legitimate interest upon the Respondent.” That is somewhat of an overstatement; the Policy does recognize that there are certain uses that can constitute a legitimate interest, even of a domain name that is identical to a famous trademark. See, e.g., Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. But this case presents an additional element; the disputed domain name is an IDN homograph typo being used to impersonate the Complainant. Such conduct is not legitimate. The Panel also notes that the PPC website to which the disputed domain name resolves is not a legitimate use (see, generally, section 6.C. below), there is no evidence in the record that could support a finding of legitimate interests, and the Respondent’s default means that the Respondent has failed to sustain its burden of production to come forward with evidence of a legitimate interest.

For these reasons, the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant has established that the disputed domain name is an IDN homograph of its ARNOLD CLARK marks. The Respondent’s effort to deceive Internet users with a spoofed domain name based on an IDN homophone of the Complainant’s distinctive trademark, mixing letters from different alphabets, is itself sufficient to support a finding of bad faith registration and use.

Bad faith registration and use also is established because the Respondent “intentionally attempted to attract, for commercial gain, Internet users to [its] website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [its] website or location or of a product or service on [its] website or location.” Policy, paragraph 4(b)(iv). The fact that the Respondent provides PPC links that ultimately redirect users to websites operated by the Complainant’s competitors and other unrelated third parties is further proof of the Respondent’s bad faith. Such use of PPC landing pages that take advantage of the trademark value of the disputed domain name (such as by confusingly advertising car insurance, a service the Complainant also offers), rather than the dictionary meaning of the disputed domain name, long has been recognized as proof of bad faith registration and use. See, e.g., Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.

The Panel therefore concludes that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

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 <aŕnoldclark.com> (xn--anoldclark-85b.com) be transferred to the Complainant.

David H. Bernstein
Sole Panelist
Date: May 21, 2021

¹ Given the absence of a Response, the Panel has carefully reviewed the record to ensure that the Center discharged its obligations to give the Respondent fair notice of this proceeding. Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415. In an attempt to provide notice to the Respondent, the Center sent notification of the Complaint to the Respondent via email and (DHL) courier. The Center did not attempt to send notice by fax because the Respondent did not provide any fax number in the available information. The Center’s email appears to have been delivered to the Respondent as the Center did not receive any notice that the email address was invalid or that the message could not be delivered. The courier package sent to the Respondent could not be delivered because the address that the Respondent provided was not a valid address. Although it is not clear whether the Respondent received actual notice, the Panel finds that the Center has discharged its obligation to provide fair notice to the Respondent under paragraph 2(a) of the Rules. Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647.