WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Arnold Clark Automobiles Limited v. Domain Administrator, Fundacion Privacy Services LTD

Case No. D2021-3920

1. The Parties

The Complainant is Arnold Clark Automobiles Limited, United Kingdom, represented by Demys Limited, United Kingdom.

The Respondent is Domain Administrator, Fundacion Privacy Services LTD, Panama.

2. The Domain Names and Registrars

The disputed domain names <arnodlclark.com>, <arnoldclakr.com> and <arnoldlclark.com> are registered with Media Elite Holdings Limited dba Register Matrix (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2021. On November 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 24, 2021, 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 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 20, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 21, 2021.

The Center appointed Petra Pecar as the sole panelist in this matter on December 27, 2021. 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 a large independent car dealer, with over 200 car dealerships throughout the United Kingdom. The Complainant sells more than 250,000 vehicles per year and generates an annual turnover of over GBP 3 billion. The Complainant also offers a variety of vehicle-related services, such as business motorcar leasing, fleet services, car finance and insurance, vehicle aftercare, servicing, MOTs and accident repairs.

The Complainant is the owner of the domain name <arnoldclark.com>, which links to an active website promoting the Complainant’s services and products.

The Complainant provided evidence of the following trademark registrations for the mark ARNOLD CLARK:
- United Kingdom Trade Mark Registration No. 2103334, registered on April 4, 1997, for the figurative mark , and;
- United Kingdom Trade Mark Registration No. 2300325, registered on December 13, 2002, for ARNOLD CLARK.

The Respondent registered the disputed domain name <arnodlclark.com> on July 02, 2021, <arnoldclakr.com> on July 13, 2021, and <arnoldlclark.com> on August 06, 2021.

The disputed domain names are identically configured to resolve to a variety of websites, seemingly at random. Furthermore, the Complainant provided evidence that some of those websites to which disputed domain names resolved attempt to deceive Internet users into downloading and installing malicious software.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are confusingly similar to the Complainant’s ARNOLD CLARK marks. The disputed domain names differ in case of domain name:

1. <arnoldlclark.com> in the addition of the letter “L”;
2. <arnoldclakr.com> in the transposition of letters “R” and “K”and
3. <arnodlclark.com> in the transposition of letters “L” and “D”.

The Complainant further contends that the Respondent intentionally picked the disputed domain names as typographical variants of the Complainant’s ARNOLD CLARK marks, and that terms “arnoldl clark”, “Arnold clakr” and “arnodl clark” have no meanings other than that which refer to the Complainant.

The Complainant asserts that the Respondent does not have any rights or legitimate interests in the disputed domain names. There is no evidence to demonstrate that the Respondent has been commonly known by the disputed domain names and the Complainant has never given permission to the Respondent, who is not associated with the Complainant in any way, to use its ARNOLD CLARK marks.

Furthermore, the Complainant contends that the disputed domain names were registered and are being used in bad faith as typographical (typosquatting) variants of the Complainant’s ARNOLD CLARK marks, and that the disputed domain names result in users looking for the Complainant’s website being misled or deceived.

The Complainant has observed that the disputed domain names resolve to a variety of websites, some of which attempt to deceive Internet users into downloading and installing malicious software. The Complainant alleges that such use takes unfair advantage of its rights, and that the inducement to Internet users to download and install malicious software cannot reasonably be a genuine bona fide use in any circumstances.

Furthermore, the disputed domain names are configured with the identical mail serveri.e. Mail eXchanger (“MX”) record, which means that they can be used for sending and receiving email messages. The disputed domain names are also configured with the identical Sender Policy Framework (“SPF”) record which decreases the likelihood of emails sent from the specified server on the disputed domain names’ behalf from being marked as spam by the recipient.

B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:

(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 in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and is being used by the Respondent in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has submitted evidence of its ownership of registrations for the ARNOLD CLARK marks in the United Kingdom and with such has established that it has rights in the ARNOLD CLARK marks.

The Complainant has also established that the disputed domain names are confusingly similar to the Complainant’s ARNOLD CLARK marks in that the disputed domain names incorporate typographical variants of the Complainant’s ARNOLD CLARK marks. The addition of letter “L” in <arnoldlclark.com> domain name, transposition of letters “R” and “K” in <arnoldclakr.com> domain name and transposition of letters “L” and “D” in <arnodlclark.com> domain name do not prevent a finding of confusing similarity between the disputed domain names and the ARNOLD CLARK marks. A domain name consisting of an obvious misspelling of a trademark, such as the addition of a letter or the transposition of two letters, is considered to be confusingly similar to the relevant mark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.9).

Furthermore, the gTLD “.com” is a standard registration requirement and is therefore disregarded when assessing confusing similarity (see section 1.11 of the WIPO Overview 3.0). The disputed domain names are therefore confusingly similar to the Complainant’s mark ARNOLD CLARK.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Regarding the second element of the Policy, section 2.1 of the WIPO Overview 3.0, states that “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”.

Moreover, the Policy provides guidance to respondents on how to demonstrate rights or legitimate interests in the domain name. In particular, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name, including: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the mark or service mark at issue”.

In this case, the Respondent did not submit a response to the Complainant’s contentions. From the evidence provided by the Complainant, this Panel finds that the Respondent has not used the disputed domain names in connection with a bona fide offering of goods and services, nor has the Complainant authorized the Respondent to use its ARNOLD CLARK marks. The Respondent is not commonly known by the disputed domain names and has not used the disputed domain names in connection with a bona fide offering of goods or services.

Furthermore, the distribution of unrelated third-party software under typographical variants of the Complainant’s marks cannot be considered as bona fide use and such use only takes unfair advantage of the Complainant’s rights. In accordance with section 2.13 of WIPO Overview 3.0, the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent. Accordingly, the Respondent’s use of the disputed domain names in this manner do not give rise to any right or legitimate interest in them.

Accordingly, the Panel finds that the Complainant has made prima facie showing of the Respondent’s lack of rights or legitimate interests in respect of the disputed domain names, which has not been rebutted by the Respondent. The Panel therefore finds that the Complainant has established the second element of the Policy in accordance with paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The third element of paragraph 4(a) of the Policy requires that the Complainant demonstrates that the Respondent registered and is using the disputed domain names in bad faith. Section 3.1 of the WIPO Overview 3.0, states that “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”.

The Panel determines that the disputed domain names were registered and used in bad faith. Based on the evidence, the Respondent was aware of the Complainant and its ARNOLD CLARK marks, and intentionally targeted those marks when registering the disputed domain names in order to take advantage of the Complainant’s marks’ reputation. The Panel observes that the Respondent registered the disputed domain names as typographical variants of the Complainant’s ARNOLD CLARK marks. The Respondent’s effort to deceive Internet users by registering domain names based on the Complainant’s marks, by adding and transposing letters, may be sufficient to support a finding of bad faith (see Arnold Clark Automobiles Limited v. Domain Administrator, Fundacion Privacy Services Ltd, WIPO Case No. D2021-1080). Given the fact that the disputed domain names are obviously connected with the Complainant’s marks, the Panel considers that the Respondent targeted the Complainant and its marks when registering the disputed domain names. It is indeed difficult to imagine that the Respondent did not have the Complainant and its ARNOLD CLARK marks in mind when registering the disputed domain names.

Considering the disputed domain names’ fraudulent use for distribution of malware, the Panel determines that such behavior is considered evidence of bad faith in accordance with section 3.1.4 of WIPO Overview 3.0.

Furthermore, all of the disputed domain names have mail servers (MX record) attached to them and consequently email messages can be sent and received using mail addresses on the disputed domain names that are confusingly similar to the Complainant’s ARNOLD CLARK mark, and in this particular case, the Respondent went one step further and not just that mail servers have been configured on disputed domain names, but also Sender Policy Framework (“SPF”) records have been configured. Such records decrease the likelihood of emails sent from the specified server from being marked as spam by the recipient, meaning that the Respondent has put additional effort to make sure that emails sent from addresses attached to disputed domain names will not end up in spam folder of recipients. Although the Complainant has not provided any evidence that phishing or fraudulent emails have indeed been sent by the Respondent, the Panel holds that the mere presence of mail servers and SPF records represents a severe risk of phishing or other fraudulent and abusive activities and together with other evidence, contributes to bad faith on the Respondent’s side. Having in mind the confusing similarity of the disputed domain names to the Complainant’s marks, it is rather difficult to imagine that mail servers attached to disputed domain names would be used for any good faith purposes.

In conclusion, the Panel determines that, for all of the above reasons, the disputed domain names were registered and are being used in bad faith. Accordingly, the Complainant has satisfied the third element of the Policy as stipulated in paragraph 4(a)(iii).

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 names <arnodlclark.com>, <arnoldclakr.com> and <arnoldlclark.com> be transferred to the Complainant.

Petra Pecar
Sole Panelist
Date: January 10, 2022