WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
We Buy Any Car Limited v. Daniel Kirby
Case No. D2013-0678
1. The Parties
The Complainant is We Buy Any Car Limited of Manchester, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Harrison Goddard Foote, United Kingdom.
The Respondent is Daniel Kirby of Maldon, Essex, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <webuyanycaressex.com> (the “Domain Name”) is registered with Webfusion Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2013. On April 12, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 16, 2013, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 23, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 13, 2013. On May 7, 2013, the Center received an email communication from the Respondent indicating he wished to transfer the Domain Name. On May 8, 2013, the Center sent an email communication inviting the Complainant to submit a suspension request. On May 12, 2013, the Complainant indicated that no settlement had been reached between the parties. The Respondent did not submit a formal Response. Accordingly, the Center notified the parties of the commencement of the panel appointment process on May 15, 2013.
The Center appointed Ian Lowe as the sole panelist in this matter on May 23, 2013. 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 one of the principal providers in relation to the sale, valuation and purchase of motor vehicles in the United Kingdom. It has traded under the names “We Buy Any Car” and “webuyanycar.com” (the “Trademarks”) since 2006. The Complainant offers consumers a free valuation of their motor vehicle and a guaranteed sale no matter what the make, model, age or condition of the vehicle. The Trademarks have been used on the Complainant’s website at “www.webuyanycar.com” since August 2006.
The Complainant is the registered proprietor of a number of UK and Community trade marks comprising “We Buy Any Car” and “webuyanycar.com” including UK trademark number 2442651 “We buy anycar.com” and device registered as of January 3, 2007 in a number of classes including classes 12 and 35, and UK trademark number 2541644 in respect of the word mark WEBUYANYCAR registered as of March 11, 2010 in class 35, noted on the register as “proceeding because of distinctiveness acquired through use and trade evidence”.
The Domain Name was registered by the Respondent on February 8, 2010. At the time of filing the Complaint, the Domain Name resolved to a web page stating that “This website account has been suspended.”
In his email to the Center on May 7, 2013, following service of the Complaint, the Respondent stated: “The domain is no use to us and we will happily transfer it”. In a later email to the Center on May 12, 2013, the Respondent stated: “We have agreed to transfer the domain to complainant. This was what was originally suggested by them and now agreed by us. It hasn’t been any use to us and wont be in the future.”
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to its WE BUY ANY CAR and WEBUYANYCAR.COM trademarks, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Complainant says that it is “aware that the Respondent was using the domain name term “WEBUYANYCARESSEX.COM” via the website “www.webuyanycaressex.com” but that such use “was not bona fide given (a) they are a direct competitor of the Complainant, and (b) undoubtedly would have been aware of the Complainant’s activities in the market prior to their adoption and registration of the [Domain Name]”. The Complainant claims that the Respondent “has used the Domain Name with the intent of gaining a commercial advantage by way of misleading the public with an intent to divert consumers from the Complainant’s business to the Respondent’s business ‘tradepricecars’.”
The Respondent did not formally reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Leaving aside the “.com” suffix, that may be ignored when appropriate when assessing identity and confusing similarity for the purposes of paragraph 4(a)(i) of the Policy, the Domain Name comprises the entirety of the Complainant’s WEBUYANYCAR and WEBUYANYCAR.COM trademarks together with the non-distinctive, geographical term “Essex”. Although one of the registered trademarks relied upon in particular by the Complainant is a device mark, the text “We Buy Any Car” is by far the most distinctive element of the trademark. In addition the Complainant has traded under the names “We Buy Any Car” and “WEBUYABYCAR.COM” since 2006. The Panel is therefore satisfied that the Complainant has registered trademark rights in WE BUY ANY CAR and WEBUYANYCAR.COM and that it has also acquired unregistered trademark rights in those names as a result of its longstanding use of the names.
Accordingly, the Panel finds that the Domain Name is confusingly similar to the trademarks WE BUY ANY CAR and WEBUYANYCAR.COM in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent has not responded formally to the Complaint but merely indicated in emails to the Center that the Domain Name was of no use to the Respondent and never had been. The Panel considers that the Complainant has produced strong prima facie evidence that the Respondent has no rights or legitimate interests in the term “We Buy Any Car”, particularly in view of the extent to which it has become distinctive of the Complainant and its business. In the absence of a Response, there is no rebuttal of this strong prima facie case. To the contrary, the statements by the Respondent in his emails to the Center reinforce this position.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
The Panel considers that it is regrettable that the Complainant has produced only limited evidence as to the nature of the website to which the Domain Name resolved at the time of preparation of the Complaint. However, the Panel is in no doubt that the Respondent had the Complainant’s distinctive trademarks in mind when he registered the Domain Name. Given the nature of the Respondent’s business, his lack of any rights or legitimate interests in the Domain Name and the use to which he apparently put the Domain Name, the Panel considers that the Respondent registered the Domain Name in bad faith and, prior to the suspension of the domain account, used the Domain Name in bad faith, primarily with a view to diverting Internet users to his website and away from that of the Complainant.
In the circumstances, the Panel finds that the Domain Name was registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <webuyanycaressex.com> be transferred to the Complainant.
Date: June 6, 2013