WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
We Buy Any Car Limited v. Memoweb
Case No. D2013-0960
1. The Parties
1.1 The Complainant is We Buy Any Car Limited of Middleton, Manchester, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Harrison Goddard Foote LLP, United Kingdom.
1.2 The Respondent is Memoweb of London, United Kingdom.
2. The Domain Name and Registrar
2.1 The disputed domain name <webuyanycarsandvans.com> (the “Domain Name”) is registered with GoDaddy.com, LLC. (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 30, 2013. On May 30, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 31, 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.
3.2 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”).
3.3 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 June 6, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 26, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 27, 2013.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on July 3, 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
4.1 The Complainant is a company incorporated under the laws of England and Wales. It is engaged in the business of the sale, valuation and purchase of cars and vans. It began to use the term “Webuyanycar” in relation to its business in August 2006 and “Webuyanyvan” in March 2010. From 2007 to 2012 turnover of sales under these terms grew from GBP 52 million to GBP 290 million. It now operates from 111 sites throughout the United Kingdom. It has engaged in extensive advertising to promote its activities, with advertising spend of between GBP 13 million and GBP 16 million annually from 2010 to 2012.
4.2 The Complainant is the owner of the various United Kingdom and Community trademarks that incorporate in one form or another the terms “Webuyanycar” or “Webuyanyvan”. They include:
(i) United Kingdom registered trade mark 2541644 for WEBUYANYCAR, filed on March 11, 2010 and proceeding to registration on December 7, 2012 in class 35. This mark is a word mark and proceeded to registration because of distinctiveness acquired through use and trade evidence. The specification for this mark is as follows:
“The bringing together for the benefit of others of a variety of motor vehicles and motor vehicle parts, enabling customers to conveniently view, sell and purchase those goods from a website specialising in the sale and purchase of motor vehicles; information, advisory and consultancy services relating to all of the aforesaid and relating to the sale, purchase and quality of motor vehicles from a computer website”
(ii) Community Trade Mark 9431131 filed on October 7, 2010 and proceeding to registration on March 18, 2011 in classes 12, 35, 36, 37 and 39. The mark takes the following form:
4.3 The nature and identity of the Respondent is unclear. Although the Domain Name is registered in the name of Memoweb, the WhoIs details for the Domain Name identifies “mentesh, mehmet” of “memoweb” as both the administrative and technical contact and provides an address for “memoweb” in north London.
4.4 The Domain Name was registered on February 6, 2013. It has at least since mid March (and perhaps earlier) been used for a website for a business that offers to buy motor vehicles. The name of the legal entity or person behind this business and website is not identified. However, it appears to have adopted “We Buy any Cars and Vans” as a trading name. The phrase appears at the top of each page of the website and at the bottom of the page there is the copyright notice “© We Buy any Cars and Vans 2013”.
4.5 In March 2013, the Complainant’s patent and trade mark attorneys wrote to the Respondent complaining about the Domain Name and website operating from it, alleging that the Respondent was engaged in acts of trade mark infringement and passing off and demanding the transfer of the Domain Name to the Complainant.
4.6 Subsequently the Complainant’s patent and trade mark attorneys were contacted by a person who identified himself as “[M…] Slade”. Mr. Slade claimed to control the Domain Name and website. There then subsequently followed without prejudice negotiations in relation to the possible transfer of the Domain Name that were unsuccessful.
4.7 The Respondent’s website continues to operate as at the date of this Decision.
5. Parties’ Contentions
5.1 The Complainant refers to its registered trade marks and also claims by reason of its activities to have common law rights in the words “webuyanycar”, “webuyanycar.com”, “webuyanyvan” and “webuyanyvan.com”.
5.2 The Complainant contends that the Respondent has no rights or legitimate interests in the Domain Name. It does not deny that the Domain Name is being used in connection with a genuine business but contends that the Respondent as a direct competitor of the Complainant, “undoubtedly would have been aware of the [C]omplainant’s activities in the market prior to the adoption and registration of the [D]omain [N]ame”. In this respect, it refers to its marketing expenditure and provides extensive evidence of press, television and radio advertising and coverage in relation to its business.
5.3 In the circumstances, the Complainant claims that the Respondent has made no legitimate noncommercial or fair use of the Domain Name and instead 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.
5.4 So far as bad faith is concerned, the Complainant makes a number of allegations including that the Respondent is intentionally attempting to attract for commercial gain internet users to the Respondent website or other on-line and off line locations by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or location.
5.5 The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the present dispute based upon the Complaint, notwithstanding the failure of any person to lodge a Response.
6.2 Notwithstanding this default, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the panel shall “draw such inferences therefrom as it considers appropriate”.
A. Identical or Confusingly Similar
6.4 The Complainant is the owner of a United Kingdom registered trade mark for the word mark WEBUYANYCAR, which can only be sensibly understood or read in English as the phrase “we buy any car” with the spaces removed. The Domain Name incorporates the mark in its entirety with the addition of “sandvans” and the “.com” generic Top-Level Domain (gTLD). When read as a whole, the Domain Name can only be sensibly understood or read in English as the phrase “we buy any cars and vans”. In other words, the word “car” in the trade mark has been pluralized and the words “and vans” added.
6.5 Given the way that the term “confusingly similar” is understood under the Policy (as to which see Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227), the Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights. The pluralisation of the word “car” and the addition of the words “and vans” does not prevent a finding of confusing similarity in this case.
6.6 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy. There is no need to consider further whether the Domain Name is confusingly similar to any of the other registered or unregistered trade marks claimed or relied upon by the Complainant.
B. Rights or Legitimate Interests
6.7 The Complainant contends that the Respondent is using the Domain Name in connection with a business that directly competes with that of the Complainant. Further, as has already been described in the Factual Background section of this decision, the Domain Name appears to reflect the name that the Complainant has chosen for its business; i.e. “We Buy Any Cars And Vans”.
6.8 Paragraph 4(c) of the Policy sets out examples of circumstances which if proved shall demonstrate rights or legitimate interests. Sub-paragraph (i) refers to:
“before any notice to you of the dispute, your 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”
6.9 However, if the name used by the Respondent was chosen and then used with the intention of benefiting from any confusion with another’s mark or otherwise taking unfair advantage of that mark, it is unlikely that the offering of goods or services under that term will be bona fide.
6.10 There is also the fact in this case that the term “We Buy Any Cars and Vans” can be read as descriptive of the activities of the Respondent. If a registrant intends to profit from the descriptive nature of the word or words in the domain name without intending to take advantage of a third party’s rights and reputation in that term, then it may have a legitimate interest in the domain name (see paragraph 2.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).
6.11 On the other hand, if the owner of the domain name in question is using it with such a service in order to unfairly capitalise upon or otherwise take advantage of a similarity with another’s mark then such use would not provide the registrant with a right or legitimate interest in the domain name (see, for example, the decision of the three member panel in Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267).
6.12 Essentially, therefore, in this case the assessment of rights or legitimate interests boils down to the question: did the Respondent choose and use the name “We Buy Cars and Vans” and the Domain Name with the Complainant’s marks in mind and with a view to taking unfair advantage of the reputation of those marks?
6.13 This is a question that is addressed in greater detail when assessing the question of bad faith. For the reasons that are explained under that heading below, the Panel has reached the clear conclusion that the Domain Name has been both registered and used with a view to taking unfair advantage of the reputation of the Complainant’s trademarks. In the circumstances, the Panel also finds that the Respondent has no rights or legitimate interests in the Domain Name. Accordingly, the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.14 Notwithstanding the potentially descriptive use of the term “We Buy Any Cars and Vans”, the Panel is persuaded that this term and the Domain Name was chosen and has been used with the intention of taking unfair advantage of the reputation that the Complainant has built up in its trade marks and the WEBUYANYCAR mark, with a view to drawing Internet users to the Respondent’s website and business.
6.15 First, the Panel accepts the Complainant’s claim that the Respondent must have been aware of the Complainant’s marks and business when the Domain Name was registered. By that date the Complainant’s business and marketing expenditure in the United Kingdom was extensive. The Respondent is also based in the United Kingdom.
6.16 Second, the Panel accepts the Complainant’s claim that the Respondent’s business is in direct competition to that of the Complainant. It is highly improbable given the extent of the Respondent’s activities, that someone entering into such a business in the United Kingdom would do so without knowledge of the Complainant’s business and marks.
6.17 Third, even though the term “We Buy Any Cars”, (like “We Buy Any Cars and Vans”) might be descriptively used and is not inherently distinctive, by the time the Domain Name was registered, the Complainant had already persuaded the United Kingdom Intellectual Property Office that the term “We Buy Any Cars” had acquired distinctiveness in relation to the goods and services in which it was registered. This fact is recorded on registry entry for United Kingdom registered trade mark 2541644 for WEBUYANYCAR.
6.18 Fourth, there is the form of the Domain Name itself. The term “We Buy Any Cars and Vans” is an obvious combination and pluralisation of the Complainant’s WEBUYANYCAR mark and the term “Webuyanyvan” also used by the Complainant. The pluralisation is also as a matter of English somewhat awkward. Accordingly, this particular choice of words for the Domain Name and the Respondent’s business, calls for an explanation. In the absence of any such explanation from the Respondent, the obvious inference is that the Domain Name was chosen by the Respondent not only with knowledge of the Complainant’s marks but in order to emulate those marks.
6.19 Fifth, there is the website operating from the Domain Name, which fails to describe who or what is the legal entity or person behind the business operating from the website. At the very least this strongly suggests that the operator of the website is not striving to distinguish its business from that of the Complainant. As such it is a factor that weighs in favour of the Complainant’s contentions that the aim of the Respondent is to divert consumers from the Complainant’s business to its own.
6.20 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.
7.1 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 <webuyanycarsandvans.com> be transferred to the Complainant.
Matthew S. Harris
Date: July 12, 2013