WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Arnold Clark Automobiles Limited v. I S, ICS INC
Case No. D2017-2141
1. The Parties
The Complainant is Arnold Clark Automobiles Limited of Glasgow, United Kingdom of Great Britain and Norther Ireland (“United Kingdom”), represented by Demys Limited, United Kingdom.
The Respondent is I S, ICS INC of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <arnoldclarkcustomerservice.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2017. On November 2, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 2, 2017, 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 November 9, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 29, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default November 30, 2017.
The Center appointed Charters Macdonald-Brown as the sole panelist in this matter on January 3, 2018. 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 founded in the United Kingdom in 1954 and is Europe’s largest independently owned family-run car dealership. The Complainant has over 200 new and used car dealerships throughout the United Kingdom. It sells over 200,000 cars per year, employs 9,000 staff and its annual turnover in the financial years 2015-2016 was over GBP 3.35 billion. The Complainant’s main website is at “www.arnoldclark.com”.
The Complainant is the proprietor of the following registered trade marks:
1. United Kingdom trade mark number 2103334 for ARNOLD CLARK (stylized word mark) filed on June 20, 1996; and
2. United Kingdom trade mark number 2300325 for ARNOLD CLARK (word mark) filed on May 11, 2002.
The disputed domain name was registered on October 30, 2017. It resolves to a Pay-Per-Click (“PPC”) parking site which features links to a number of third party sites relating to the Complainant’s field of business.
The Complainant contends as follows:
1. The disputed domain name is confusingly similar to the Complainant’s ARNOLD CLARK mark in which the Complainant has registered rights (the “Complainant’s ARNOLD CLARK Mark”). In particular:
1.1. at the date the disputed domain name was registered, October 10, 2017, the Complainant was well established and had been using the “Arnold Clark” name for 21 years;
1.2. the top-level suffix “.com” is generic in that it is required only for technical reasons so should be disregarded;
1.3. after eliminating the top-level suffix “.com” from the analysis, the disputed domain name comprises the Complainant’s ARNOLD CLARK Mark in its entirety, alongside the phrase “customer service”;
1.4. the phrase “customer service” does not distinguish the disputed domain name from the Complainant’s ARNOLD CLARK Mark since it is generic and descriptive. The phrase “customer service” is one that web users and the Complainant’s customers would assume to be associated with the Complainant, thereby exacerbating the prospect of confusion;
1.5. the disputed domain name is therefore confusingly similar to the Complainant’s ARNOLD CLARK Mark and it creates an overall impression of association with the Complainant.
2. The Respondent has no rights or legitimate interests in the disputed domain name. In particular:
2.1. there is no evidence to suggest that the Respondent has a legitimate interest in the disputed domain name as it is not known as “Arnold Clark” or “Arnold Clark customer service”;
2.2. the disputed domain name resolves to a PPC page, which does not of itself constitute a bona fide offering of goods or services; and
2.3. the disputed domain name capitalizes on the value of the Complainant’s ARNOLD CLARK Mark as a result of the confusing similarity between the disputed domain name and the ARNOLD CLARK Mark.
3. The disputed domain name was registered and is being used in bad faith. In particular:
3.1. given that the Complainant and its mark are well-known and that the additional phrase “customer service” does not distinguish the disputed domain name from the Complainant’s ARNOLD CLARK Mark and its activities, it is inconceivable that the Respondent did not have the Complainant in mind when it registered the disputed domain name;
3.2. the Respondent is intentionally creating a likelihood of confusion as to the source of the website to which the disputed domain name resolves, such that bad faith may be inferred;
3.3. it is likely that the Respondent intended to target the Complainant and benefit financially through the display of PPC advertising;
3.4. the Complainant intended to disrupt the Complainant’s business in terms of paragraph 4(b)(iii) of the Policy; and
3.5. the Respondent has been party to at least 86 previous disputes under the UDRP and in all cases the relevant domain name was either transferred or cancelled, which amounts to an established pattern of bad faith domain name registration.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that, in order to be entitled to the transfer of a domain name, a complainant shall prove the following three elements:
(i) the domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;
(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.
Paragraph 5(f) of the Rules provides that, if the respondent fails to submit a response (as in this case), in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
A. Identical or Confusingly Similar
The Complainant has submitted sufficient evidence demonstrating its rights in the ARNOLD CLARK Mark above.
The disputed domain name fully incorporates the Complainant’s ARNOLD CLARK Mark. The Panel accepts that in this case, the top-level suffix in the disputed domain name (“.com”) should be disregarded since it is a technical requirement of registration of the disputed domain name and does not serve to distinguish the disputed domain name.
The Panel finds that the phrase “customer service” in the disputed domain name has little distinctive character, since “customer service” is purely descriptive of the services that the Respondent purports to offer. On the other hand, the first part of the disputed domain name, “arnold clark”, has acquired a high level of distinctiveness over the Complainant’s 21 year history.
The Panel finds that the Complainant has therefore established that the disputed domain name is confusingly similar to a trade mark or service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Panel notes that the Respondent is not sponsored by or affiliated with the Complainant and no licence or authorization has been granted to the Respondent in relation to the disputed domain name.
The disputed domain name resolves to a PPC page containing links referring to a disparate range of goods and services, such as car dealership services, customer service services, bike parts and house painting. Such links compete with or capitalize on the reputation and goodwill of the Complainant’s mark. Previous UDRP panels have noted that use of a domain name to post PPC links in this way may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a “bona fide offering of goods or services” or from “legitimate noncommercial or fair use” of the domain name (see section 2.9 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The Panel does not consider the Respondent’s use of the disputed domain name to amount to a bona fide use of the disputed domain name within the meaning of paragraph 4(c) of the Policy.
On this basis, the Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name such that the burden of production shifts to the Respondent, who must rebut that prima facie case.
The Respondent has not responded to the Complaint. The Panel therefore finds that the Respondent has no rights or legitimate interest in the disputed domain name and that the requirement under paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
The Panel accepts that the Complainant has provided sufficient evidence to demonstrate that at the date of registration of the dispute disputed domain name, the Complainant’s ARNOLD CLARK Mark was well known in at least the United Kingdom. The Panel has also found that the disputed domain name comprises the Complainant’s ARNOLD CLARK Mark plus a descriptive phrase, making it confusingly similar to the ARNOLD CLARK Mark. The fact that the disputed domain name resolves to a PPC site incorporating links to third party sites of relevance to the Complainant’s business indicates that the Respondent registered the disputed domain name in order to exploit the Complainant’s ARNOLD CLARK Mark in order to obtain click-through revenues and to promote others’ competing services; a practice which previous UDRP panels have found to constitute bad faith (see, among others, Tata Sons Limited v. TATA Telecom Inc/ Tata-Telecom.com, Mr Singh, WIPO Case No. D2009-0671; Archer-Daniels-Midland Company v. Wang De Bing, WIPO Case No. D2017-0363).
In support of this finding, the Panel also takes into consideration the fact that the Respondent has been the respondent in at least 86 previous disputes under the UDRP, in each with the outcome of either transfer or cancellation of the relevant domain name. In the absence of any explanation or justification from the Respondent, the Panel considers that the Respondent has engaged in a “pattern of conduct” of seeking to attract Internet users for commercial gain by creating a likelihood of confusion as to the source of the disputed domain name, of which this is a further example (Playboy Enterprises International, Inc. v. Tom Baert, WIPO Case No. D2007-0968).
The Panel therefore finds that the disputed domain name was registered and is being used in bad faith within the meaning of paragraphs 4(b)(ii) and 4(b)(iv) of the Policy.
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 <arnoldclarkcustomerservice.com> be transferred to the Complainant.
Date: January 17, 2018