WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
We Buy Any Car Limited v. Highway Auto Mart and Jason Collings
Case No. DAU2012-0004
1. The Parties
The Complainant is We Buy Any Car Limited of Lancashire, United Kingdom of Great Britain and Northern Ireland, represented by Harrison Goddard Foote, United Kingdom.
The Respondents are Highway Auto Mart of Queensland, Australia (“Respondent A”) and Jason Collings of Brisbane, Queensland, Australia (“Respondent B”), both represented by Anisimoff Legal, Australia. (Collectively, the “Respondents”).
2. The Domain Names and Registrars
The disputed domain name <webuyanycar.com.au> (“Disputed Domain Name A”) is registered with Crazy Domains Pty Ltd, and the disputed domain name <webuyanycar.net.au> (“Disputed Domain Name B”) is registered with Melbourne IT Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 17, 2012. On February 17, 2012, the Center transmitted by email to Crazy Domains Pty Ltd and Melbourne IT Ltd a request for registrar verification in connection with the disputed domain names. On February 20, 2012, Melbourne IT Ltd transmitted by email to the Center its verification response confirming that Highway Auto Mart, Mr. Lou Bouchet is listed as the registrant of <webuyanycar.net.au> and providing the contact details. On February 23, 2012, Crazy Domains Pty Ltd transmitted by email to the Center its verification response confirming that Jason Collings is listed as the registrant of <webuyanycar.com.au> and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 February 29, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 20, 2012. The Response was filed with the Center on March 20, 2012.
The Center appointed David Stone as the sole panelist in this matter on March 28, 2012. 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 specialises in the valuation and purchase of motor vehicles and is one of the largest private providers of such services in the United Kingdom. It operates through one hundred eleven (111) physical sites, through its website “www.webuyanycar.com” and also has a presence in the European Community and the United States of America.
The Complainant holds a number of different registered trademarks in the United Kingdom and the European Union dating from January 1, 2007. Trademark applications have also been filed in the United States, Canada, New Zealand and Australia. The Australian trademark application (number 1438440) is for a colour device mark including the term “webuyanycar.com”. It was filed on July 22, 2011 and is currently described on the website of IP Australia as “under examination”.
Respondent A operates a business for the valuation and purchase of motor vehicles in Australia under the name “We Buy Any Car”. It operates from seven (7) locations in Australia. It adopted “We Buy Any Car” in June 2011.
Disputed Domain Name B was registered on May 9, 2011. Disputed Domain Name A was created on July 17, 2009 but became registered to Respondent B on August 17, 2011. The Respondents have entered into an agreement allowing Respondent A to use Disputed Domain Name A for its business. Given this arrangement the Panel exercises its discretion under paragraph 10(e) of the Rules to consolidate the multiple domain name disputes presented by the Complainant in this proceeding. This appears to be the intention of the Respondents: Respondent A and Respondent B are represented by the same firm of solicitors and filed a single Response.
5. Parties’ Contentions
The Complainant claims significant rights in WEBUYANYCAR.COM through substantial use in the United Kingdom, the European Union and the United States. In addition to its rights through use the Complainant also claims trademark registrations and applications, including the Australian application referred to above. Whilst the Complainant does not claim to have carried on business in Australia, it claims that its website at “www.webuyanycar.com” is accessed from Australia.
The Complainant submits that its trademarks and Disputed Domain Name A and Disputed Domain Name B (collectively, “Disputed Domain Names”) have a near identical visual impression and substantially identical phonetic pronunciations. If they are not identical then the Complainant submits that they are confusingly similar and the addition of the “.net.au” or “.com.au” designators do not affect this.
The Complainant says that the Respondents have no rights or legitimate interests in respect to the Disputed Domain Names. While acknowledging that the Disputed Domain Names had been registered before the Complainant had given any notice to the Respondents, the Complainant submits that the Respondents must undoubtedly have been aware of the Complainant. This is due, the Complainant says, to its significant international reputation and online presence.
The Complainant claims that the Respondents have done significant research on the Complainant, producing advertisements and jingles clearly inspired by those of the of the Complainant, and having a number of identical features on the respective websites, including the phrase “any make, any model, any age” which has been used in the Complainant’s marketing campaigns and displayed on the Complainant’s website since April 2009. The Complainant says that these similar features and identical services on the website give a similar overall experience. The Complainant says that the respective websites are likely to be associated or confused.
The Complainant submits that it is highly probable that the Disputed Domain Names were registered for the purpose of preventing the Complainant’s plans to expand its business into Australia. Furthermore the registration was done with the deliberate intention of preventing the Complainant from using its trademarks in the Disputed Domain Names.
The Complainant submits that the Respondents registered and are using the Disputed Domain Names in bad faith: the similarities have been employed by the Respondents intentionally in an attempt to take advantage of the Complainant’s significant international reputation and attract customers, for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark as to the source of the services offered by the websites found at the Disputed Domain Names.
The Complainant requests that the Disputed Domain Names be transferred to the Complainant.
The Respondents submit that the Complainant holds no trademark rights which are applicable to the Disputed Domain Names and that the Respondents have rights to and a legitimate interest in the Disputed Domain Names.
The Respondents refer to GE Capital Finance Australasia Pty Ltd v, Dental Financial Services Pty Ltd, WIPO Case No. DAU2004-007 for the proposition that where a company has not started trading in a country or established a reputation there, it cannot be assumed that its international trademarks are known there. The Respondents submit that the Complainant has never advertised its business in Australia, has little reputation in Australia, and has never traded in Australia.
The Respondents submit that Respondent A’s subsidiary, Kar Land Pty Ltd, holds various trademarks and business names related to “We Buy Any Car”. Its earliest trademark application, filed in Australia on June 22, 2011 predates the Complainant’s earliest Australian application. Furthermore the Respondents say they have a legitimate interest in conducting business in Australia under the Disputed Domain Names.
Respondent A submits that Disputed Domain Name A was registered for the sole purpose of operating and marketing its own business under the name “We Buy Any Car”, while Respondent B registered Disputed Domain Name B with the intention of establishing his own website relating to automobiles. Respondent B subsequently allowed Respondent A to utilise Disputed Domain Name B in relation to its business, without receiving consideration in excess of the out of pocket expenses related to acquiring Disputed Domain Name B. The Respondents did not register the Disputed Domain Names with the intention of preventing the Complainant from registering them or to prevent its business - the Respondents say that they did not and could not have known that the Complainant may want to do this as there were no signs of the Complainant’s intended expansion to Australia.
The Respondents submit that the expression “We Buy Any Car” is descriptive and it is not surprising that at least two traders in different parts of the world would seek to use the same expression in relation to the services they describe. The use of the expression has a close and substantial connection with the Respondents’ business and as such amounts to a legitimate, fair use of the Disputed Domain Names. The Respondents’ conduct, they say, does not amount to bad faith simply because different traders have adopted this expression independently in completely separate markets.
The Respondents submit that it is not likely consumers would confuse the respective websites as the Respondents’ target consumer is not likely to be aware of the Complainant’s business. Moreover the Respondents have not sought to divert customers from the Complainant, having not sought customers from areas in which the Complainant operates.
The Panel notes that no application was made for a declaration of Reverse Domain Name Hijacking.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove each and all of the following three elements in order to prevail in these proceedings:
i) the Disputed Domain Names are identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights; and
ii) the Complainant has no rights or legitimate interests in respect of the Disputed Domain Names; and
iii) the Disputed Domain Names have been registered or subsequently used in bad faith.
A. Identical or Confusingly Similar
The Complainant has a clear and established reputation in the United Kingdom for the mark WEBUYANYCAR.COM. The panel was referred to multiple decisions of UDRP and Nominet panels confirming the reputation of the Complainant in the United Kingdom. The Complainant may also have reputation elsewhere, but it has never, even according to its own Complaint, traded in Australia. The Panel refers to the decision in GE Capital Finance Australasia Pty Ltd v. Dental Financial Services Pty Ltd, supra in which the panel said that it cannot be assumed merely because of a complainant’s assertions that international trademarks are known in a country or that the reputation would enure to the benefit to the complainant.
Despite the Complainant’s assertions that there has been Australian traffic to its website, this is not sufficient, of itself, to establish reputation in Australia. Indeed, it seems to the Panel inherently unlikely that an Australian consumer would sell a motor vehicle in Australia through a United Kingdom-based website and business that does not purport to offer services in Australia. The Panel therefore finds that the Complainant does not have sufficient reputation in Australia to establish unregistered rights in Australia.
The Complainant also relies on its application of an Australian trademark for WEBUYANYCAR.COM. That application is still under examination. Without wishing to second guess IP Australia, it appears to the Panel that the term “webuyanycar.com” is , in the absence of proof of acquired distinctiveness, not distinctive for the services for which registration is sought. That was the position for a similar application that the Complainant made in the United Kingdom: it was able to overcome that objection based on its substantial use in the United Kingdom. Of course, the application may be saved by the colour and device elements depicted in the mark, but to this Panel’s view there would appear to be a real risk that the Complainant’s Australia trademark will never be registered.
The Panel therefore finds that the Complainant has failed to prove that it has rights to a name, trademark or service mark which is identical or confusingly similar to the Disputed Domain Names. It is therefore not necessary to consider the other requirements for a finding under the Policy. However, these are addressed briefly for completeness.
B. Rights or Legitimate Interests
The burden is on the Complainant to establish that the Respondent has no rights or legitimate interests in the Disputed Domain Names. The Respondent may then rebut this position.
The Panel considers that the Respondents have demonstrated rights or legitimate interests in the Disputed Domain Names at least by virtue of paragraph 4(c) of the Policy. That is, before any notice of the present dispute, the Respondents had already made bona fide use of the Disputed Domain Names in connection with an offering of services.
Respondent A was operating its business via the Disputed Domain Names prior to any notice of the Complainant’s concerns. While the Complainant seeks to say that the Respondents knew about them due to many similar features on the website, similar advertisements and an identical business model, the Respondents have given adequate responses to explain these similarities. Furthermore the descriptive nature of the Disputed Domain Names must be taken into account. The term “We Buy Any Car” merely describes a service – as the Respondents point out, there are other very similarly-worded websites offering the same services in Australia. The Panel accepts that it is not unlikely that two companies should set up similar services under the same name in different parts of the world. This is especially so given the entirely descriptive nature of the term “We Buy Any Car.”
Furthermore Respondent A has, through a subsidiary, filed various Australian trademark applications of its own in relation to the term “We Buy Any Car” which predate those of the Complainant.
auDA’s published Domain Name Eligibility and Allocation Policy Rules for the Open 2LDs (2005-01) state that “Domain name licences are allocated on a ‘first come, first served’ basis. Provided the relevant eligibility rules are satisfied, the first registrant to apply for a particular domain name will be permitted to license it”.
The Panel finds this is what has happened here: the Respondents have demonstrated rights and legitimate interests in the Disputed Domain Names.
C. Registered or Subsequently Used in Bad Faith
Many of the factors discussed above are relevant to the question of whether the Disputed Domain Names have been registered or subsequently used in bad faith and lead to the Panel’s decision that this is not the case.
The Respondents have clearly provided evidence to show that they registered the Disputed Domain Names in order to carry out legitimate business interests relevant to the descriptive term in the Disputed Domain Names and they have subsequently done so. Furthermore, due to the limited reputation of the Complainant in Australia and its lack of trading in Australia, there is a similarly limited chance of any likelihood that the Respondents sought to gain from this. Further, the Respondents say they did not know of any plans the Complainant would expand its business to Australia.
Finally, the Panel mentions in conclusion the comments of the eminent Panel in Schark Holdings Pty Ltd and Surf Coast News Australia Pty Ltd v. Nicholas Soames, WIPO Case No. DAU2011-0032: “[t]he Policy is of limited scope intended to deal with deliberate instances of cyber squatting. It is not intended to resolve conflict between competing interests.”
For the foregoing reasons, the Complaint is denied.
Dated: April 11, 2012