WIPO Domain Name Decision: D2006-0515

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Clark Commercials (Aberdeen) Limited v. Vans Direct (UK) Ltd.

Case No. D2006-0515

1. The Parties

The Complainant is Clark Commercials (Aberdeen) Limited, Dyce, Aberdeen, Scotland, United Kingdom of Great Britain and Northern Ireland, represented by Raeburn Christie Clark & Wallace, Aberdeen, Scotland, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Vans Direct (UK) Ltd., West Lothian, Scotland, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Names and Registrar

The disputed domain names <clarkcommercials.com> and <clarkcommercials.org> are registered with NetBenefit plc aka NetNames.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 24, 2006. On April 25, 2006, the Center transmitted by email to NetBenefit plc aka NetNames NetBenefit plc aka NetNames a request for registrar verification in connection with the domain names at issue. On April 27, 2006, NetBenefit plc aka NetNames NetBenefit plc aka NetNames transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 May 4, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May 24, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 30, 2006.

The Center appointed Ian Blackshaw as the sole panelist in this matter on June 9, 2006. 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 was established in the UK as a Limited Company under the Companies Acts 1948 and 1976 on July 24, 1978, under the legal identity of Clark Commercials (Aberdeen) Limited Company No. SC65454. A certified copy of the Complainants’ Certificate of Incorporation has been provided to the Panel. The Complainant’s principal place of business is in Scotland.

The Respondent was established in the UK as a Limited Company under the Companies Act on October 13, 2000, under the identity Vans Direct (UK) Limited Company No. SC212001. The Respondent’s principal place of business is also in Scotland.

The Complainant and Respondent are competitors in the market of selling/and hiring motor vehicles, although the Respondent’s business activities are limited to commercial vehicles, whereas the Complaint provides a much wider range of services.

CLARK COMMERCIALS, previously a common law service mark and now a registered trademark, is the trading name of the Complainant and has been used by the Complainant in connection with the selling of motor vehicles and associated activities since 1978.

The Complainant is now the proprietor of the UK Trademark CLARK COMMERCIALS (registration Number GB 2402646) in accordance with the Trade Marks Act 1994. A print out from the UK Patent Office in relation to the Trademark CLARK COMMERCIALS has been provided to the Panel.

The Complainant also utilizes the website “www.clarkcommercials.co.uk”.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

A1. The domain names are confusingly similar to a trademark or service mark in which the Complainant has rights;

With the sole exception of their respective suffixes the domain names <clarkcommercials.com> and <clarkcommercials.org> are identical to the Complainant’s now registered Trademark and previous common law Trademark right to the service mark CLARK COMMERCIALS.

Under UK law, the use of domain names which, because of their similarity with a name of goodwill, would inherently lead to Passing Off and as such an instrument of fraud. The test for the Passing Off being (1) the establishment of goodwill; (2) the presence of a misrepresentation; and (emphasis added) (3) the misrepresentation must be deceptive, in that it confuses or is likely to confuse the public or a substantial part thereof.

This case satisfies all three tests and as such, the use of the domain names by the Respondent would on, a balance of probabilities, amount to a finding of Passing Off if the case were to be brought before a UK Court.

A2. The Respondent has no rights or legitimate interests in respect of the domain names;

The Respondent’s trading name is Vans Direct. The Complainant’s trading name is Clark Commercials. The Respondent and Complaint are competitors in the same market and both have their principal places of business in Scotland.

The domain names were purchased by the Respondent in full knowledge that they are identical to the Complainant’s Trademark (or rather at the time of purchase the Complainant’s Common Law Trademark rights) and trading name CLARK COMMERCIALS.

The Respondent does not nor has ever had any connection with the Complainant to warrant any association or right to use the Trademark CLARK COMMERCIALS.

A3. The domain names were registered and are being used in bad faith.

Prior to registering the domain names at issue, the Respondent knew of the Complainant’s goodwill in the market place and its commercial presence on the Internet.

The Respondent is disrupting the business of a competitor, namely the Complainant by using the domain names at issue to redirect Internet users to the Respondent’s website at “www.vansdirect.biz”. Arranging for the domain names to resolve to its website indicates bad faith.

The Respondent intends to profit in some way from potential customers who are looking for the Complainant’s website on the Internet and are preventing the owner of the Service Mark/Trademark CLARK COMMERCIALS from reflecting the Service Mark/Trademark in a corresponding domain name.

In Yahoo Inc v. Akash Arora and Another (1999) the High Court in Delhi held that a domain name served the same function as a Trade Mark and was entitled to protection. Where the domain names of a claimant and defendant are almost identical, there was every chance of an Internet user being confused or deceived into believing that the domain names had a common source or connection.

E-mail correspondence between the Complainant/the Complainant’s Representative and the Respondent, prior to the lodging of the Complaint, suggests that the domain names at issue are only two of several domain names now collected/acquired by the Respondent, copies of such correspondence have been provided to the Panel.

B. Respondent

The Respondent, having been duly notified of the Complaint and these proceedings, did not reply to the Complainant’s contentions or take any part in them.

6. Discussion and Findings

To qualify for transfer of the disputed domain names, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:

(i) The disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain names; and

(iii) The disputed domain names have been registered and is being used in bad faith.

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

In accordance with paragraph 14(a) of the Rules, in the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the complaint; and (b) if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.

In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.

In previous UDRP cases in which the respondent failed to file a response, the Panel’s decisions were based upon the complainant’s assertions and evidence, as well as inferences drawn from the respondent’s failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp, WIPO Case No. D2001-0936.

Nevertheless, the Panel must not decide in the complainant’s favor solely based on the respondent’s default (Cortefiel S.A. v. Miguel García Quintas, WIPO Case No. D2000-0140). The Panel must decide whether the complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.

A. Identical or Confusingly Similar

In accordance with prior UDRP decisions, where a domain name incorporates a complainant’s registered mark, this is sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See, for example, Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

The domain names at issue incorporate the trademark CLARK COMMERCIALS, which is owned and has been commercially used and promoted by the Complainant exclusively in and for the purposes of its business for many years. Thus, the Complainant’s trademark CLARK COMMERCIALS is well-established and well-known in the business of selling and hiring motor vehicles and associated activities, which, according to the List of goods and/or services in Class 35 shown in the UK Patent Office Trade Marks print out (referred to above), include “enabling customers to conveniently view and purchase those goods from an Internet web site specializing in motor vehicles and parts and fittings thereof…...”

Likewise, the addition of the suffixes ‘.com’ and ‘.org’, which are required for registration purposes only, is also irrelevant, for trademark purposes, and does not, therefore, serve to distinguish the domain names at issue from the trademark of the Complainant. See on this general principle, Pomellato S.p.A v. Tonetti, WIPO Case No. D2000-0493, in which the Panel found that the domain name <pomellato.com> is identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO, is not relevant. And Blue Sky Software Corp. v. Digital Sierra Inc., WIPO Case No. D2000-0165, in which the Panel held that the domain name <robohelp.com> is identical to the complainant’s registered ROBOHELP trademark, and that the “addition of the suffix .com is not a distinguishing difference”. The same principle and rationale also apply to the addition of the suffix ‘.org’.

The domain names at issue, which essentially incorporate the Complainant’s well-known trademark CLARK COMMERCIALS, are not only an infringement of the Complainant’s trademark, but also in breach of the Policy.

In view of all this, the Panel finds that the domain names registered by the Respondent are identical or confusingly similar to the trademark CLARK COMMERCIALS, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has well-established, well-known and commercially valuable rights through registration and also extensive exclusive commercial use for many years.

B. Rights or Legitimate Interests

In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain name (paragraphs 3(b)(ix)(2) of the Rules and 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:

- Whether before any notice to the Respondent of the dispute, there is any evidence of the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;

- whether the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights;

- whether the Respondent is making a legitimate non commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence to show that the Respondent was acting in pursuance of any rights or legitimate interests when registering the disputed domain names. In fact, the Respondent’s failure to answer the Complaint tends to show that the Respondent does not have any such rights or interests, otherwise the Respondent would have asserted them. In other words, the Respondent’s silence is tantamount to admitting the Complainant’s case (see Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624). Indeed, in view of the notoriety of the Complainant’s trademark CLARK COMMERCIALS and also the use by the Complainant of its domain name <clarkcommercials.co.uk> containing the trademark CLARK COMMERCIALS, the Respondent must have known that, when registering the disputed domain name, the Respondent could not have, or indeed, have claimed any such rights or interests. Conversely, in the view of the Panel, the registering of the domain names at issue, against such a background, can hardly be described as an innocent mistake on the part of the Respondent, but, in the absence of any evidence to the contrary, the Panel must conclude to have been deliberate.

In particular, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the domain names at issue in connection with a bona fide offering of goods or services. On the contrary, the Respondent has used the domain names for web sites that direct Internet users not to the Complainant but to the web site of its competitor, the Respondent, namely “www.vansdirect.biz”.

Likewise, no evidence has been adduced that the Respondent has commonly been known by the domain names at issue; nor is it making a legitimate non-commercial or fair use of the domain names; nor has the Respondent been authorized or licensed by the Complainant to use the Complainant’s well-known trademark CLARK COMMERCIALS in the domain names.

Furthermore, the adoption by the Respondent of domain names confusingly similar to the Complainant’s trademark inevitably leads to the diversion of the Complainant’s consumers, wishing to access the Complainant’s web site, to the web site (referred to above) of the Respondent, who is a competitor of the Complainant (see further on this point below), with the consequential tarnishing of the Complainant’s trademark CLARK COMMERCIALS. In other words, the Respondent is trading, for commercial gain, on the good name, notoriety and well-earned reputation of the Complainant’s business and its well-known trademark and thereby unfairly attracting to its own business and activities the goodwill that the Complainant has established over many years in its trade name and mark, sufficient evidence of which has been provided to the Panel, without any right or legal justification for doing so.

Indeed, as was pointed out in Red Bull GmbH v. Bayer Shipping & Trading Ltd., WIPO Case No. D2003-0271, the linking to competitive third-party websites “shows that Respondent is well aware of Complainant as well as of its products and activities, and, instead of making a bona fide use of the domain name, rather intends to have a free ride on the fame and goodwill of Complainant and its trademarks”. Furthermore, as was stated in Hoffman-La Roche Inc. v. WhoisGuard, WIPO Case No. D2005-1288: “Whether or not Respondent profits directly from the redirection of the disputed domain name to a commercial website is not determinative. The fact is that someone other than Complainant is profiting from the use of the disputed domain name – a name that is confusingly similar to Complainant’s mark. Consequently, the for-profit nature of the use of the disputed domain name may be imputed to Respondent. Also, it is simply not reasonable to assume that Respondent is merely providing a public service when redirecting Internet users to a particular commercial website”.

Therefore, for all the above reasons, the Panel concludes that the Respondent has neither rights to nor legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.

Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:

“(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on its website or location.”

Based on the evidence provided in the Case File, the Panel agrees with the Complainant’s contention that the Respondent, by registering the domain names at issue, is trading on the Complainant’s valuable goodwill established in its well-known trademark CLARK COMMERCIALS during many years. Furthermore, the Respondent must also have been aware of and the commercial use by the Complainant of its domain name <clarkcommercials.co.uk>, which also incorporates as its main element the Complainant’s well-known trademark CLARK COMMERCIALS. As previously mentioned, in the absence of any evidence to the contrary, of which none is forthcoming on the part of the Respondent, the Respondent’s registration of the domain names would not appear to be accidental, but deliberate and calculated to exploit the Complainant’s goodwill in the motor vehicle industry. This conduct, without any explanation by the Respondent to the contrary, of which none has been forthcoming, constitutes bad faith.

Again, by registering and using the domain names at issue incorporating the Complainant’s trademark, CLARK COMMERCIALS, the Respondent is misleading Internet users and consumers into thinking that it is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which, according to the Case File is, in fact, the situation. Such misleading conduct, in the view of the Panel, is another sign of bad faith on the part of the Respondent.

The Panel agrees with the Complainant’s contentions that, by using the domain names at issue to resolve to the Respondent’s competitive website “www.vansdirect.biz”, is preventing the owner of the trade mark CLARK COMMERCIALS, namely, the Complainant, from reflecting that mark in a corresponding domain name and also disrupting the business of a competitor, namely the Complainant, contrary to paragraphs 4(b)(ii) and (iii) respectively of the Policy, both of which activities constitutes further evidence of bad faith on the part of the Respondent.

The Panel has been referred to and has reviewed the e-mail correspondence between the Respondent and the Complainant and the Complainant’s representative regarding the possible sale of the domain names at issue by the Respondent to the Complainant and notes, in particular, the admission by the Respondent in its e-mail of 8 November to the Complainant’s representative that “[i]n the time your client has been deliberating the payment of £500,00 we have purchased another 34 domain names.” The Panel deduces from this statement that the Respondent is in the business of acquiring domain names for resale. As such this is further evidence of bad faith on its part, contrary to paragraph 4(b)(i) of the Policy, which provides that there is evidence of bad faith where the Respondent has registered or acquired the domain names at issue “… primarily for the purpose of selling, renting or otherwise transferring …. “ them to the Complainant.

Finally, the Respondent’s failure to file any answer to the present Complaint or otherwise participate in the present proceedings, in the view of the Panel, also indicates bad faith on the part of the Respondent.

Therefore, for all the above reasons, the Panel concludes that the Respondent has registered and is using the domain names at issue in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <clarkcommercials.com> and <clarkcommercials.org> be transferred to the Complainant.

Ian Blackshaw
Sole Panelist

Dated: June 13, 2006