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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Arnold Clark Automobiles Limited v. Privacy service provided by Withheld for Privacy ehf/Carolina Rodrigues

Case No. D2021-3922

1. The Parties

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

The Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland /Carolina Rodrigues, Panama.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2021. On November 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 24, 2021, 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 November 25, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on November 25, 2021.

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 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 Oleksiy Stolyarenko as the sole panelist in this matter on December 30, 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

According to the Complaint, the Complainant is a company in the United Kingdom. Founded in 1954, the Complainant is one of the Europe’s largest independently owned family-run car dealerships, with over 200 new and used car dealerships throughout the United Kingdom. The Complainant now sells more than 250,000 vehicles each 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 and fleet services.

The Complainant owns exclusive rights over the ARNOLD CLARK trademark. In particular, the Complainant is the proprietor of a number of trademark registrations for the ARNOLD CLARK mark in the United Kingdom, including, inter alia, the ARNOLD CLARK trademark (Registration No. 2103334) registered on April 4, 1997, and the ARNOLD CLARK trademark (Registration No. 2300325) registered on December 13, 2002.

The Complainant owns and operates various domain names that contain the ARNOLD CLARK trademark. The Complainant’s domain name <arnoldclark.com> was registered on October 23, 1997 and is actively used to sell new and used cars and offer related services.

According to the Registrar’s WhoIs records, the Respondent registered the disputed domain name on May 17, 2021, and it resolves to a number of pages randomly provided, some of which attempt to deceive Internet users into downloading malware.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has rights in the ARNOLD CLARK trademark by virtue of its registration, longstanding use and promotion with respect to the Complainant’s activities. The registration of the earliest ARNOLD CLARK trademark mark pre-dates the registration of the disputed domain name by more than 24 years.

The Complainant argues that the disputed domain name is identical or confusingly similar to the Complainant’s ARNOLD CLARK trademark and it incorporates the Complainant’s registered ARNOLD CLARK trademark entirely. The disputed domain names differs only by the addition of a dictionary word “ace”, which the Complainant uses as the acronym for “Arnold Clark Employee”.

The Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant has not authorized the Respondent to use the ARNOLD CLARK trademark in the disputed domain name.

The Respondent is not commonly known by the disputed domain name.

The Respondent was fully aware of the Complainant’s reputation and the Complainant’s trademark rights on the ARNOLD CLARK trademarks when the Respondent registered the disputed domain name. The Complainant notes that it already has brought at least six successful proceedings against the Respondent under the UDRP before and this confirms that the Respondent is involved into a systematic bad faith activity targeting the Complainant.

The Respondent’s use of the disputed domain name cannot be a bona fide use and such use takes unfair advantage of the Complainant’s rights as the disputed domain name resolve to a variety of websites, some of which attempt to deceive Internet users into downloading and installing malicious software.

The disputed domain name was registered and is being used in bad faith as the Respondent attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s ARNOLD CLARK trademark. The disputed domain name is capable of being used for email communication and there is a possibility that the anyone who receives an email originating from the disputed domain name may mistakenly assume that it was sent from the Complainant.

Therefore, the disputed domain name has been registered and used by the Respondent in bad faith. It is also inconceivable that the Respondent had any good faith intentions at the point of registering the disputed domain name.

The Complainant seeks a decision that the disputed domain name be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in the ARNOLD CLARK trademark, based on its various trademark registrations.

Therefore, the Panel considers that the Complainant has satisfied the threshold requirement of having relevant trademark rights.

The disputed domain name is comprised of the word “ace”, and the Complainant’s ARNOLD CLARK trademark combined with the generic Top-Level Domain (“gTLD”) “.com”.

Thus, the Panel finds that the disputed domain name incorporates the Complainant’s ARNOLD CLARK trademark entirely.

Furthermore, the Panel considers that the disputed domain name is confusingly similar to the Complainant’s ARNOLD CLARK trademark.

The Panel notes that addition of the word “ace” to the disputed domain does not prevent the Complainant’s trademark from being recognizable in the disputed domain name.

The gTLD is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. See section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Therefore, the Panel disregards the gTLD for the purposes of this comparison.

The Panel finds that according to a side-by-side comparison the disputed domain name reproduces the Complainant’s the ARNOLD CLARK trademark and, thus, that the Complainant’s ARNOLD CLARK trademark is recognizable within the disputed domain name.

The Panel concurs with the Complainant that the word “ace” does not prevent a finding of confusing similarity. .

For all the foregoing reasons, the Panel finds that the first element of paragraph 4(a) of the Policy has therefore been satisfied by the Complainant.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires the complainant to establish that the respondent has no rights or legitimate interests in the domain name. Once the Complainant establishes a prima facie case against the Respondent under this ground, the burden of production shifts to the Respondent to rebut it. See section 2.1 of the WIPO Overview 3.0. In this case, the Respondent did not rebut the Complainant’s prima facie case regarding the lack of rights or legitimate interests.

However, the overall burden of proof remains with the Complainant. Paragraph 4(c) of the Policy provides circumstances that demonstrate the respondent’s rights or legitimate interests to the disputed domain name, and that complainants frequently address to show that the activities of the respondent does not fall under the bona fide offering of goods or services (paragraph 4(c)(i) of the Policy), that the respondent is not commonly known by the disputed domain name (paragraph 4(c)(ii) of the Policy) and that the respondent is not involved into a legitimate noncommercial or fair use of the disputed domain name (paragraph 4(c)(iii) of the Policy).

The Panel finds that the disputed domain name <acearnoldclark.com>, which is confusingly similar to the Complainant’s the ARNOLD CLARK trademark, carries a risk of implied affiliation with the Complainant. See section 2.5.1 of the WIPO Overview 3.0.

According to the Complainant, the Respondent is not authorized or licensed to use the ARNOLD CLARK trademark in the disputed domain name.

The Panel agrees with the Complainant that the Respondent’s use of the disputed domain name cannot be regarded as legitimate noncommercial or fair use because the disputed domain name resolves to a variety of websites, some of which attempt to deceive Internet users into downloading and installing malicious software. Such use of the disputed domain name gives a false impression that the disputed domain name is associated with and/or endorsed by the Complainant and is capable of misleading and diverting visitors, and tarnishing the Complainant’s ARNOLD CLARK trademark.

The evidence provided by the Complainant showing that the disputed domain name is involved into the distribution of the malware also strongly supports the conclusion that the Respondent lacks rights or legitimate interests in the disputed domain name. See section 2.13.1 of the WIPO Overview 3.0.

The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).

Therefore, the Panel also finds that the Respondent is not involved in a bona fide offering of goods or services (under paragraph 4(c)(i) of the Policy) and the Respondent’s activities does not fall under a legitimate noncommercial use (under paragraph 4(c)(iii) of the Policy).

The Panel also concludes that the Respondent is not commonly known by the disputed domain name under paragraph 4(c)(ii) of the Policy.

Thus, the Panel finds that the Complainant has satisfied the second element of the Policy, namely paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

As the Panel established above, the Complainant’s ARNOLD CLARK trademark appears to be fairly well known and was widely used in commerce well before the registration of the disputed domain name on May 17, 2021.

The Panel finds that the Respondent knew of the Complainant’s ARNOLD CLARK trademark and reputation when registering the disputed domain name. This conclusion is supported by the fact that the disputed domain name is confusingly similar to the Complainant’s ARNOLD CLARK trademark. Furthermore, the Respondent has already been involved in several previous UDRP cases filed by the Complainant. For example, Arnold Clark Automobiles Limited v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-1811, Arnold Clark Automobiles Limited v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-1810, Arnold Clark Automobiles Limited v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-1034, and Arnold Clark Automobiles Limited v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No.
D2020-3151.

The Panel concludes that it is difficult to conceive of any plausible use of the disputed domain name that would amount to good faith use, given that the disputed domain name is confusingly similar to the Complainant’s ARNOLD CLARK trademark and official domain name <arnoldclark.com>, and resolves to a variety of websites, some of which attempt to deceive Internet users into downloading and installing malicious software. Any use of the disputed domain name would likely mislead Internet users into believing the disputed domain name is associated with and/or endorsed by the Complainant and have the effect of redirecting visitors to websites operated by the Complainant’s competitors or other third parties, thereby causing harm to the Complainant.

The Panel also finds that the additional of the term “ace” referring to “Arnold Clark Employee” to the Complainant’s ARNOLD CLARK trademark only increases possibility of the consumer confusion associated with the disputed domain name.

The Panel finds here as well that the Respondent’s intention has always been to use the disputed domain name to intentionally attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location (see paragraph 4(b)(iv) of the Policy).

Furthermore, prior UDRP Panels have held that the use of a domain name for purposes of malware distribution constitute bad faith. See section 3.4 of the WIPO Overview 3.0.

The Responded failed to submit a response or provide any evidence of a good-faith use or to show rights or legitimate interests in the disputed domain name.

Therefore, under the totality of the circumstances, the Panel finds the Respondent registered and used the disputed domain name in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, paragraph 4(a)(iii) 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 <acearnoldclark.com> be transferred to the Complainant.

Oleksiy Stolyarenko
Sole Panelist
Date: January 15, 2022

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