WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
M. Sport Limited v. John Angove, Transporterland.com Ltd
Case No. D2018-0932
1. The Parties
The Complainant is M. Sport Limited of Manchester, United Kingdom of Great Britain and Northern Ireland, represented by Moore Commercial Law Limited, United Kingdom of Great Britain and Northern Ireland.
The Respondent is John Angove, Transporterland.com Ltd of Lydney, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Names and Registrar
The disputed domain names <ms-rt.com> and <ms-rt.net> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 26, 2018. On April 27, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 30, 2018, 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 May 2, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 22, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 23, 2018.
The Center appointed Antony Gold as the sole panelist in this matter on May 29, 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 is an international motor vehicle and rally team. It has been successful in a number of sporting events. In late 2016 or January 2017, the MS-RT brand was launched by the Complainant in order to use its motorsport heritage in connection with the customization of road-going domestic and commercial vehicles. Since early 2017, the Complainant’s rally cars have been used to advertise the MS-RT brand to television audiences for international rally events. In particular, the MS-RT branding was displayed on the vehicle of the Complainant, which won the well-known Monte Carlo Rally, in January 2017. This event was viewed by a television audience estimated by the operators of the World Rally Championship to comprise about 850 million viewers. The Complainant also hosted an MS-RT-branded trade stand at the “Autosport Show”, held at the National Exhibition Centre in Birmingham, United Kingdom of Great Britain and Northern Ireland, in January 2017
The Complainant has licensed a third party, Edward Davies Commercials Limited, to sell vehicles under the MS-RT brand. The licensee promotes the brand through a website at “www.ms-rt.co.uk”, which is linked to the Complainant’s website at “www.m-sport.co.uk”. The Complainant is the registrant of the <ms-rt.co.uk> domain name.
The Complainant is also the owner of a European Union Trade Mark number 016624546 for MS-RT (a figurative mark) registered in class 12 for various goods relating to automobiles and other vehicles. This was applied for on April 20, 2017 and granted on September 5, 2017.
According to the Complainant, the Respondent’s business comprises the customization of automobiles for its customers. The WhoIs records show that <ms-rt.com> (“the first disputed domain name”) was first registered on June 4, 2015. However, according to the Registrar the first disputed domain name was registered to the Respondent on July 18, 2017 and according to the Complainant on March 8, 2018 the WhoIs record was updated to show the Respondent as the registrant. The second disputed domain name, <ms-rt.net>, was registered by the Respondent on July 15, 2017. Both the disputed domain names point to identical parking pages containing links relating almost entirely to the disease of multiple sclerosis, including “What Are the Signs of MS in Adults” and “What Is MS and What Are the Symptoms”.
On an unspecified date, the Complainant’s licensee sent a text message to the Respondent asking why it had registered the disputed domain names. The material part of the Respondent’s reply was “I do have specific plans for the ms-rt domains. However, should you feel like you would like to make a sensible offer I am more than happy to consider it”.
5. Parties’ Contentions
The Complainant says that the disputed domain names are identical or confusingly similar to its registered trade mark for MS-RT. It says it also has unregistered trade mark rights in this brand and refers to its promotional activities, as set out above. The generic Top-Level Domain (“gTLD”) extensions “.com” and “.net” may be ignored for the purpose of making a comparison. The only differences between the form of the Complainant’s MS-RT registered trade mark and the disputed domain names are colour and a small associated logo.
Although the first disputed domain name was registered to the Respondent following the registration of the Complainant’s trade mark, the second disputed domain name was registered earlier. However, by the time of registration of the second disputed domain name in July 2017, the Complainant had already established substantial goodwill and reputation in its MS-RT brand. Moreover, any rights the Complainant might have for infringement by the Respondent of its registered trade mark would be backdated to the date of publication of the application on May 29, 2017, that is prior to the date of registration of the second disputed domain name.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent is a direct competitor of its licensee, Edward Davies Commercials Limited, in relation to the sale of customized Ford motor vehicles and has the same customer base. The Respondent has never traded or been known by any brand or trading style which is remotely similar to MS-RT. The text message sent by the Respondent to the Complainant’s licensee is either a threat to use the disputed domain names in illegitimate competition to the Complainant’s licensee or a threat to do so as a means of extracting payment in return for their transfer to the Complainant.
Lastly, the Complainant says that the disputed domain names were registered and are being used in bad faith. The Respondent is threatening to use the disputed domain names in an illegitimate manner as a means of extracting payment for them. Any purpose to which the Respondent attempted to put the disputed domain names would infringe the Complainant’s registered trade mark. Alternatively, the Respondent has registered the disputed domain names in order to prevent the Complainant from reflecting its trade mark in them. The Respondent is fully aware of the Complainant and its licensee. The Respondent could not credibly claim that it registered the disputed domain names otherwise than in the full knowledge of the Complainant’s trade mark, its MS-RT brand and the activities of the Complainant and its licensee. Alternatively, the Respondent has registered the disputed domain names in order to disrupt the Complainant’s legitimate business.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Dealing, first, with the Respondent’s failure to serve a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy requires that the Complainant proves each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain names are 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 with respect to the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant asserts that it has both registered and unregistered trade mark rights in MS-RT. In respect of its registered rights, the Complainant has provided a copy of its European Union Trade Mark for MS-RT. Section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) explains that; “Where the complainant holds a nationally or regionally registered trade mark or service mark, this prima facie satisfies the threshold requirement of having trade mark rights for purposes of standing to file a UDRP case”.
This is the position notwithstanding that the Complainant’s registration is for a figurative mark; section 1.2.3 of the WIPO Overview 3.0 explains that: “trade mark registrations with design elements or disclaimed terms typically would not affect panel assessment of standing or identity/confusing similarity under the UDRP but may be relevant to panel assessment of the second and third elements”.
For the purpose of the first element of paragraph 4(a) of the Policy, it is sufficient for the Complainant’s mark to be in existence as at the time the Complaint is filed, even if the registration post-dates the registration of the second disputed domain name in July 2017 (see section 1.1.3 of the WIPO Overview 3.0). Nonetheless, the extent of any unregistered trade mark rights of the Complainant are pertinent when considering the question of bad faith registration and use and are accordingly evaluated at this point.
Section 1.3 of the WIPO Overview 3.0 explains that “to establish unregistered or common law trade mark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services”. The Complainant says that, prior to the date of registration of the second disputed domain name in July 2017, it had already hosted an MS-RT branded trade stand at a large trade exhibition and one of its rally cars, bearing MS-RT branding, had won a well-known rally before a very large television audience. The date that the Complainant’s licensee started operations has not been provided, but the domain name licensed to it by the Complainant was registered in November 2016 and it is therefore reasonable to assume that the licensee’s operations pre-date the registration of the second disputed domain name.
It would have been preferable to have seen more documentary evidence to substantiate the Complainant’s contentions, but its assertions have not been challenged by the Respondent. The Panel accordingly accepts them and also accepts that its activities as described above are sufficient to establish unregistered or common law rights in MS-RT for the purposes of the Policy. As a consequence, the Panel finds that, in addition to its registered mark, the Complainant also has unregistered or common law rights in MS-RT, which had accrued prior to the registration of the second disputed domain name by the Respondent.
As the Complainant asserts, the gTLD extensions “.com” and “.net” are not taken into account when considering identity or similarity. The Panel therefore finds that the disputed domain names are identical to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Policy sets out at paragraph 4(c) examples of circumstances, without limitation, by which a respondent may demonstrate rights or legitimate interests in a disputed domain name, namely that:
(i) before any notice of the dispute, it can show use of, or demonstrable preparations to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services; or
(ii) it can show that it has been commonly known by the domain names, even if no trade mark or service mark rights have been acquired; or
(iii) it can demonstrate a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Previous UDRP panel decisions have established that, if a complainant establishes a prima facie case that none of the above grounds are applicable, the burden of production shifts to the respondent
In order to consider whether the Respondent might have used, or made demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services it is necessary to know the use, if any, to which it has put them.
No information in this respect was provided by the Complainant in its Complaint1. Section 4.8 of the WIPO Overview 3.0 explains that; “ Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name...”.
The Panel has accordingly visited the websites to which each disputed domain name resolves and established that they point to parked pages, as described above.
In certain circumstances using a domain name to point to parked pages hosting pay-per-click links may be sufficient to support a claim by a respondent to rights or legitimate interests in that domain name. Section 2.9 of the WIPO Overview 3.0 explains that “Panels have recognized that the use of a domain name to host a page comprising PPC links would be permissible – and therefore consistent with respondent rights or legitimate interests under the UDRP – where the domain name consists of an actual dictionary word(s) or phrase and is used to host PPC links genuinely related to the dictionary meaning of the word(s) or phrase comprising the domain name, and not to trade off the complainant’s (or its competitor’s) trade mark”.
However, the Respondent’s business involves the customisation of automobiles. It has no connection with the treatment of multiple sclerosis and there is nothing to suggest a bona fide motive on its part for permitting the disputed domain names to resolve to a page hosting such links. Moreover, the text message it sent to the Complainant’s licensee made it plain that, whilst it claimed to have “specific plans” for the disputed domain names, it would consider an offer for their purchase. Section 2.2 of the WIPO Overview 3.0 considers what might qualify as prior use, or demonstrable preparations to use the domain name, in connection with a bona fide offering of goods or services and explains that “clear contemporaneous evidence of bona fide pre-complaint preparations is required”. There is no such evidence available to the Panel and, as the Respondent has chosen not to respond to the Complaint, the Panel concludes that no such evidence is available.
Circumstances (ii) and (iii) above of paragraph 4(c) of the Policy are, on the facts as outlined above, inapplicable; there is nothing in the evidence available to the Panel which suggests that the Respondent has been known by the disputed domain names and the pay-per-click websites to which they resolve are plainly commercial in character.
The Panel accordingly finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
C. Registered and Used in Bad Faith
As explained at section 3.9 of the WIPO Overview 3.0, the transfer of a domain name registration from a third party to a respondent is the date which a panel will consider when assessing bad faith; that is March 2018 (or July 2017) in respect of the first disputed domain name and July 2017 in respect of the second disputed domain name. Whilst the date of registration of the second disputed domain name pre-dates the registration of the Complainant’s MS-RT trade mark in September 2017, the Panel is satisfied, for the reasons outlined earlier in this decision, that the Complainant had acquired unregistered trade mark or common law rights in MS-RT by that time.
Paragraph 4(b) of the Policy sets out circumstances which, without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. These include, at paragraph 4(b)(i), circumstances indicating a respondent has registered or acquired a domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name.
There is nothing to suggest that the Respondent has ever had a bona fide intention to use the disputed domain names for the purposes of its own business, nor is it possible to conceive of a way it might be able to do so in a way which did not infringe the Complainant’s trade mark rights The fact that it has not established a bona fide website to which either of the disputed domain names resolve suggests that it has no genuine intention of doing so. The text message sent by the Respondent to the Complainant’s licensee makes clear that the Respondent’s real motivation in registering the disputed domain names has been in the hope of securing a price for them from the Complainant which, common sense suggests, will be significantly in excess of its documented out-of-pocket costs directly related to the disputed domain names.
In addition, the Panel notes as discussed under section B above that the disputed domain names resolve to pay-per-click websites which generate commercial gain which is evidence of bad faith use as per paragraph 4(b)(iv) of the Policy.
Such conduct falls within the circumstances described at paragraph 4(b)(iv) of the Policy and the Panel accordingly finds that the disputed domain names were registered and are 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 disputed domain names <ms-rt.com> and <ms-rt.net> be transferred to the Complainant.
Date: June 12, 2018
1 The Panel notes Annex C of the Complaint which is a copy of the Respondent’s website “www.transporterland.com”, but a copy of the websites at the disputed domain names was not provided.