WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Arnold Clark Automobiles Limited v. Domain Administrator, See PrivacyGuardian.org / Ron Lee

Case No. D2018-1196

1. The Parties

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

The Respondent is Domain Administrator, See PrivacyGuardian.org of Phoenix, Arizona, United States of America / Ron Lee of Hong Kong, China.

2. The Domain Name and Registrar

The disputed domain name <arnoldclarkeasypay.com> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 30, 2018. On May 30, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 May 31, 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 the same date.

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 Respondent of the Complaint, and the proceedings commenced on June 1, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 21, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 22, 2018.

The Center appointed Rodrigo Azevedo as the sole panelist in this matter on June 28, 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

Founded in 1954, the Complainant is an independently owned family-run car dealership headquartered in the United Kingdom.

The Complainant is the rights owner of the United Kingdom trademark ARNOLD CLARK, registered in classes 35, 36, 37 and 39. The oldest filling date of such trademark registrations is June 20, 1996 (see United Kingdom trademark number 00002103334, registered on April 4, 1997).

The Complainant operates a major transactional website at “www.arnoldclark.com”, from which it sells new and used cars and offers related services.

The disputed domain name was registered by the Respondent on February 2, 2018.

The Panel accessed the disputed domain name on July 8, 2018, at which time the disputed domain name was linked to a domain name parking page offered by Namesilo.com. The Complainant provided evidence showing that the disputed domain name was previously listed for sale for the amount of USD 988.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant is the owner of the United Kingdom trademark number 2103334 for the stylized word mark ARNOLD CLARK. It is registered in classes 36, 37 and 39 and has a filing date of June 20, 1996. The Complainant is also the registrant of the United Kingdom trademark number 2300325 for the word mark ARNOLD CLARK. It is registered in class 35 and has a filing date of May 11, 2002. The Complainant notes that the registration of its earlier mark pre-dates the registration of the disputed domain name by approximately twenty-two years. The Complainant contends that the additional phrase “easypay” is entirely generic and descriptive and does nothing to distinguish the disputed domain name from the Complainant’s mark. Furthermore, the term “arnold clark easypay” has no meaning, generic or otherwise, which is unrelated to the Complainant. To demonstrate this, the Complainant has exhibited a screenshot of the results from the search engine at “www.google.com” for the term “arnold clark easypay”. The Complainant observes that the majority of the results relate to the Complainant or its activities. The generic Top-Level Domain (gTLD”) “.com” is wholly generic, required only for technical reasons and, as is customary in proceedings under the Policy, should be disregarded for the purposes of comparison with the Complainant’s trademarks.

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant contends that the Respondent does not have any rights or legitimate interests in the disputed domain name. According to section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. Therefore, the Complainant seeks to make out a prima facie case to demonstrate that the Respondent does not have rights or legitimate interests in the disputed domain name. The Complainant has found no evidence that the Respondent has been commonly known as “Arnold Clark” or “Arnold Clark Easy Pay” prior to or after the registration of the disputed domain name. The Respondent is not a licensee of the Complainant and has not received any permission or consent from the Complainant to use its registered or unregistered trademarks. The Complainant has found no evidence that the Respondent owns any trademarks incorporating the term “arnold clark” or “arnold clark easy pay”. Equally, the Complainant has found no evidence that the Respondent has ever traded as Arnold Clark or Arnold Clark Easy Pay. The website associated with the disputed domain name indicates that the disputed domain name has been listed for sale by the Respondent. The Complainant contends that where a domain name has been combined with a well-known mark, as in the present matter, the offering of a domain name for sale cannot, in and of itself, confer a legitimate interest on the registrant of said domain name. In all of these circumstances, the Complainant asserts that it has established a prima facie case along the lines anticipated by section 2.1 of the WIPO Overview 3.0 that the Respondent has no rights or legitimate interests in the disputed domain name.

(iii) The disputed domain name was registered and is being used in bad faith. The Complainant contends that the Respondent acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name in terms of Policy, paragraph 4(b)(i). Given that the most dominant element of the disputed domain name is the Complainant’s well-known mark and that it is not generic, descriptive or a dictionary word, the Complainant contends that the disputed domain is of no value to anyone aside from the Complainant or a competitor. Such intention is clearly indicated by the website to which the disputed domain name resolves and the Complainant notes that the sum noted on the website far exceeds the Respondent’s reasonable and typical out-of-pocket costs relating to the registration and renewal of the disputed domain name.

B. Respondent

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 a transfer of the disputed domain name, a complainant shall prove the following three elements:

(i) The disputed 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 disputed domain name; and

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

A. Identical or Confusingly Similar

The Panel has no doubt that “arnold clark” is a term directly connected with the Complainant’s activities in the car dealership business.

Annex 8 to the Complaint shows the United Kingdom trademark registrations for ARNOLD CLARK filed by the Complainant as long ago as 1996.

The trademark ARNOLD CLARK is wholly encompassed within the disputed domain name.

The disputed domain name differs from the Complainant’s trademark by the addition of the suffix “easypay”, as well as of the gTLD “.com”.

Previous UDRP panels have consistently found that descriptive additions (such the expression in English language “easy pay”) do not distinguish a domain name, so as to avoid confusing similarity. This has been held in many UDRP decisions (see, e.g., Inter-IKEA Systems B.V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437; The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; Volvo Trademark Holding AB v. SC-RAD Inc., WIPO Case No. D2003-0601; Wal-Mart Stores, Inc. v. Lars Stork, WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713; AltaVista Company v. S. M. A., Inc., WIPO Case No. D2000-0927).

It is also well established that the addition of a gTLD suffix such as “.com” is typically irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark.

As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, and that the Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate rights or legitimate interests in a domain name:

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

(ii) the respondent has been commonly known by the domain name; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.

Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant has not licensed nor authorized the use of its trademark to the Respondent, and the Panel finds no indication that the Respondent is commonly known by the disputed domain name.

Considering that there is no active webpage linked to the disputed domain name – but just a standard parking page – and no Response was provided to the present Complaint, the Panel finds that there is no evidence to demonstrate the Respondent’s intent to use or to make demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.

Furthermore, the Complainant showed that the website at the disputed domain name recently contained references that it was being offered for sale. Such use in the circumstances of this proceeding does not amount to a bona fide use of the disputed domain name.

Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has satisfied the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or acquired the 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

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

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

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location.

When the disputed domain name was registered by the Respondent (February 2, 2018) the trademark ARNOLD CLARK was already registered and used in the market by the Complainant for about two decades, in connection with its car dealership activities in the United Kingdom.

The disputed domain name encompasses the trademark ARNOLD CLARK together with the English expression “easy pay”.

Therefore, the Panel concludes that it is highly unlikely that the Respondent was unaware of the Complainant’s trademark and that the adoption of the expression “arnoldclarkeasypay” was a mere coincidence.

Indeed, there is no effective active website linked to the disputed domain name, but just a standard parking page. However, this is not enough to avoid the Panel’s findings that the disputed domain name is also being used in bad faith.

In the Panel’s view, the circumstances that the Respondent (a) adopted to compose the disputed domain name a trademark that is registered and used in the United Kingdom market for decades, together with a descriptive term in English language; (b) is not presently using the disputed domain name; and (c) has not provided any justification for the use of such third party trademark, certainly cannot be used in benefit of the Respondent in the present case.

Such circumstances, associated with (d) the lack of any plausible interpretation for the legitimate adoption of the term “arnoldclarkeasypay” by the Respondent, are enough in this Panel’s view to characterize bad faith registration and use in the present case.

That the disputed domain name has simply been parked and listed for sale is further evidence of the Respondent’s bad faith within the meaning of paragraph 4(b)(i) of the Policy. Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied the third element of the Policy.

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 <arnoldclarkeasypay.com> be transferred to the Complainant.

Rodrigo Azevedo
Sole Panelist
Date: July 11, 2018