WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Arnold Clark Automobiles Limited v. Whois Agent, Whois Privacy Protection Service, Inc. / George Washere

Case No. D2018-0558

1. The Parties

The Complainant is Arnold Clark Automobiles Limited of Glasgow, the United Kingdom of Great Britain and Northern Ireland (the “United Kingdom”), represented by Demys Limited, the United Kingdom.

The Respondents are Whois Agent, Whois Privacy Protection Service, Inc. of Kirkland, United States of America / GEORGE WASHERE of Panama City, Panama.

2. The Domain Name and Registrar

The disputed domain name <armoldclark.com> is registered with eNom, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 14, 2018. On March 14, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 14, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an
email communication to the Complainant on March 16, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 19, 2018.

The Center verified that the Complaint together with the amended 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 Respondents of the Complaint, and the proceedings commenced on March 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 12, 2018. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on April 13, 2018.

The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on May 1, 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

A. The Complainant

The Complainant is a car dealership. It operates over 200 new and used car dealerships throughout the United Kingdom. In 2016, the Complainant sold over 80,000 new cars and 197,000 used cars. It employs over 11,900 staff, and had an annual turnover of GBP 3,600,000,000 in the year ending December 31, 2016.

The Complainant owns the following relevant trade mark registrations:

Along with its physical car dealerships, the Complainant owns and operates its website at “www.arnoldclark.com”. The Complainant describes its website as “a major transactional website”, at which it sells new and used cars and offers related services. These services include rental car services and servicing for used vehicles.

B. The Respondents

The Respondents in this proceeding are “Whois Agent, Whois Privacy Protection Service, Inc. of Kirkland, United States of America / George Washere of Panama City, Panama”. They are not affiliated with the Complainant. No response has been received from the Respondents.

C. The Disputed Domain Name

As noted above, the disputed domain name is <armoldclark.com>. It was registered on September 29, 2017 (the “Relevant Date”).

The Complaint has provided evidence of the website that was operated from the disputed domain name. The evidence shows that users entering the disputed domain name would either be directed to a website showing a series of pay-per-click links or to a malware support scam. The pay-per-click links website included a link using the Complainant’s trade mark, ARNOLD CLARK. The Complainant has provided evidence showing that on clicking this link, the user would be shown advertisements for used car websites. The other links variously advertised “Clark Clarks”, “Clark Sale”, and other links related to antiques.

The malware support scam website presented users with a website and series of pop-ups purporting to be from Microsoft. The pop-ups contained “warnings” to the user that their computer had been “detected to be corrupted and unrecoverable” and invited users to call a “Microsoft Help Desk” telephone number. The pop‑ups further said that if the user did not comply with this, their “computer access [would] be disabled to prevent further damage to our network.” The Complainant has said that users who entered the disputed domain name would be randomly shown either the pay-per-click links website or the malware support scam website.

5. Parties’ Contentions

A. Complainant

The Complainant has submitted under paragraph 4(a)(i) of the Policy that the disputed domain name is identical or confusingly similar to a trade mark or service in which the Complainant has rights. It relies on its trade marks, set out above, for the ARNOLD CLARK name in classes 35, 36, 37 and 39. It submits that the disputed domain name has no generic or descriptive meaning and instead of distinctive of the Complainant. The use of the letter “M” rather than “N” in “ARNOLD”, the Complainant submits, is insufficient to distinguish between the disputed domain name and the Complainant’s website, and is confusingly similar to the ARNOLD CLARK trade mark.

The Complainant has submitted under paragraph 4(a)(ii) of the Policy that the Respondents have no rights or legitimate interests in respect of the disputed domain name. It submits that there is no evidence of the Respondents using, owning or operating under the trade mark ARMOLD CLARK. It submits that there is no evidence that the Respondents have made legitimate noncommercial or fair use of the disputed domain name, given that it displays pay-per-click advertising or a malware support scam website. In contrast, the Complainant submits that the evidence clearly shows that the trade mark ARNOLD CLARK is associated with the Complainant, giving rise to the inference that the only interest the Respondents have in the disputed domain name is the illegitimate interest of confusing users searching for the Complainant.

The Complainant has finally submitted under paragraph 4(a)(iii) of the Policy that the disputed domain name was registered and is being used in bad faith by the Respondents. As to registration in bad faith, the Complainant submits that the disputed domain name was an intentional spelling mistake of the Complainant’s trade mark and website URL. It notes that the letter “M” is beside the letter “N” on the standard QWERTY keyboard. It cites another UDRP decision, where it was held as follows:¹

“Typosquatting is virtually per se registration and use in bad faith. It is difficult to conceive of circumstances that would overcome the inference that the typosquatter ‘intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] website by creating a likelihood of confusion with the complainant’s mark as to the source’ of the website. Here such conduct was undertaken to send Complainant’s customers to a site that promoted directly competing services.”

It submits that the same observations could be made in the present circumstances, given that the disputed domain name resolves either to a list of pay-per-click links which includes offerings for services in competition with the Complainant, or to a malware support scam website. The Complainant submits that given the confusing similarity between the disputed domain name and the ARNOLD CLARK trade mark, it is reasonable to infer that the Respondents intended to target the value in the Complainant’s name and trade marks by displaying pay-per-click advertising for services competing with those offered by the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the disputed domain name in order to succeed in this proceeding:

(i) That the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights; and

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

(iii) That the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in the ARNOLD CLARK trade mark by virtue of its trade mark registrations set out above, registered in the United Kingdom.

The Panel finds that the disputed domain name, namely <armoldclark.com>, is confusingly similar to the ARNOLD CLARK trade mark. The use of “M” rather than “N” is insufficient to distinguish the disputed domain name from the Complainant’s marks. The Panel accepts the Complainant’s submission that the use of the letter “M” appears to be calculated to cause confusion in users searching for the Complainant. This is because of the proximity of the letter “M” to “N” on the standard QWERTY keyboard. There is also a visual similarity between the two letters when used in the lower case in the word “arnold” (or “armold”).

The Panel therefore finds that paragraph 4(a)(i) of the Policy is satisfied in favor of the Complainant.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, the Respondents may establish that it has rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following elements:

(i) That before notice of the dispute, the Respondents used or made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) That the Respondents have been commonly known by the disputed domain name, even if it had acquired no trade mark or service mark rights; or

(iii) That the Respondents are making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or tarnish the trade mark or service mark at issue.

As already noted above, no response or evidence has been provided by the Respondents. However, the overall burden of proof for establishing that the Respondents have no rights or legitimate interests in respect of the disputed domain name lies with the Complainant.

There is no evidence of the Respondents are using or making demonstrable preparations to use the disputed domain name or a name corresponding to that name in connection with a bona fide offering of goods or services. Nor is there any evidence of the Respondents being commonly known by the disputed domain name.

Instead, the Complainant has provided evidence of the Respondents using the disputed domain name with intent for commercial gain to misleadingly divert customers who are searching for the Complainant. The website displayed at the disputed domain name has been used by the Respondents to display advertising for services in competition with the Complainant. In the absence of any evidence of bona fide use of the name “Armold Clark” by the Respondents, the Panel infers that the disputed domain name was intended to mislead customers into believing they were visiting the Complainant’s website after mistakenly typing <armoldclark.com> rather than <arnoldclark.com>.

Accordingly, and in the absence of any response from the Respondent, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, are evidence of the registration and use of the disputed domain name in bad faith:

(i) Circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trade mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name; or

(ii) That the Respondent has registered the disputed domain name in order to prevent the owner of the trade mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) That the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) That by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other online 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 the Respondent’s website or location.

The Panel finds that the Respondents have registered the disputed domain name in bad faith as provided for under paragraph 4(b)(iv) of the Policy for the following reasons:

(i) The evidence establishes that the trade mark ARNOLD CLARK is distinctive of the Complainant and its large-scale car dealership business. There is no evidence of bona fide use by the Respondents of the trade mark ARMOLD CLARK. In those circumstances, the Panel finds that the decision by the Respondents to register the confusingly similar disputed domain name was for the purpose of attracting customers looking for the Complainant, and accordingly in bad faith;

(ii) The fact that the pay-per-click website displayed at the disputed domain name was later used to display paid hyperlinks using the Complainant’s mark demonstrates that the Respondents were aware of the Complainant at the time of registration; and

(ii) The Panel finds that the Respondents registered the confusingly similar disputed domain name using the letter “M” instead of the letter “N” in “ARNOLD” in order to attract visitors who mistakenly typed “ARMOLD” to the websites displayed at the disputed domain name. Given the Complainant’s high annual turnover and its use of its website to provide its services, there is a substantial risk that the Respondent’s registration of the disputed domain name will result in users looking for the Complainant being misled or deceived.

The Panel also finds that the Respondent has usedthe disputed domain name in bad faith as provided for under paragraph 4(b)(iv) of the Policy for the following reasons:

(i) As noted above, the disputed domain name has been used to advertise competing services to those offered by the Complainant, including by use of the Complainant’s own trade mark, ARNOLD CLARK. Taking this advertising in combination with the Respondents’ use of the confusingly similar disputed domain name, the Panel finds that the Respondents intentionally attempted to attract, for commercial gain, Internet users to the Respondents’ website by creating a likelihood of confusion with the Complainant’s mark; and

(ii) The other website to which users would be directed is the malware support scam website discussed above. That scam attempts to lure users into calling a phone number or entering a username and password. The Panel infers that users who call through to the displayed phone number will be faced with fraudulent attempts to obtain their personal or financial information. The Panel again infers that this use of the disputed domain name is for commercial gain, in satisfaction of the definition of bad faith provided for under paragraph 4(b)(iv) of the Policy.

Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied in favor of the Complainant.

7. Decision

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 <armoldclark.com> be transferred to the Complainant.

Andrew Brown Q.C.
Sole Panelist
Date: May 15, 2018

¹ Go Daddy Software, Inc. v. Daniel Hadani, WIPO Case No. D2002-0568.