WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Arnold Clark Automobiles Limited v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico

Case No. D2021-3924

1. The Parties

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

The Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.

2. The Domain Name and Registrar

The disputed domain name <arnoldlcark.com> is registered with GoDaddy.com, LLC (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 amendment to the 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 Petra Pecar as the sole panelist in this matter on December 28, 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 <arnoldlcark.com> on August 10, 2021. According to the evidence provided by the Complainant, at the time of the submission of the Complaint, the disputed domain name resolved to a variety of websites, some of which attempt to deceive Internet users into downloading malware software.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s ARNOLD CLARK trademark, as the disputed domain name differs from this trademark only by the transposition of letters “C” and “L” in the middle and by the addition of generic Top-Level Domain (“gTLD”) “.com”. The Complainant argues that the Respondent intentionally picked the disputed domain name as a typographical variant of the Complainant’s ARNOLD CLARK trademark.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not a licensee, affiliated to the Complainant, or in any other way authorized to use the Complainant’s ARNOLD CLARK trademark. The Complainant further contends that term “Arnold lcark” have no meaning other than that which refer to the Complainant nor that there is any evidence that the Respondent has ever traded as ARNOLD CLARK or ARNOLD LCARK

The Complainant argues that the disputed domain name was registered and is being used in bad faith as typographical variant of its ARNOLD CLARK marks. The Complainant contends that the disputed domain name will result in users looking for the Complainant’s website being misled or deceived. According to the evidence provided by the Complainant, the disputed domain name resolves to a variety of websites, some of which attempt to deceive Internet users into downloading and installing malicious software. The inducement to Internet users to download and install malicious software cannot reasonably be a genuine bona fide use under any circumstances. Moreover, the Complainant argues that the disputed domain name is configured with the mail server i.e. Mail eXchanger (“MX records, which means that it can be used for sending and receiving email messages. The disputed domain name is also configured with the Sender Policy Framework (“SPF”) record, which decreases the likelihood of emails sent from the specified server on the disputed domain name’s 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

In the absence of response to the Complainant contentions from the Respondent, in accordance with paragraph 15(a) of the Rules, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant, and in accordance with the Policy, Rules and any rules and principles of law that it deems applicable.

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

(i) the disputed domain name is 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 name; and

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

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. A trademark registration provides a clear indication that the rights in the trademark belong to the Complainant (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.2.1).

In the case at hand, the Complainant has submitted evidence of ownership of its ARNOLD CLARK trademarks in the United Kingdom. All of these trademarks were duly registered long before the Respondent registered the disputed domain name on August 10, 2021.

The disputed domain name consists of as a typographical variant of the Complainant’s ARNOLD CLARK trademark. The difference between the Complainant’s ARNOLD CLARK trademark and the disputed domain name is in transposition of letters “C” and “L”, which does not prevent a finding of confusing similarity between the disputed domain name and the ARNOLD CLARK trademarks. Because the Complainant’s ARNOLD CLARK trademark is recognizable within the disputed domain name, the typographical variant does not prevent a finding of confusing similarity. Numerous prior UDRP panels have recognized that the incorporation of a trademark as a typographical variant is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered trademark. Such findings were confirmed, for example, within the cases The Princeton Review v. RaveClub Berlin, WIPO Case No. D2003-0205; JDRF International v. Nguyen Benedicto, WIPO Case No. D2021-0267. Moreover, prior UDRP panels have accepted that intentional misspelling of the complainant’s trademark (i.e., typosquatting) within the domain name leads to confusing similarity with the targeted trademark (see section 1.9 of WIPO Overview 3.0).

The Panel agrees with the Complainant’s argument that the term “arnoldlcark” has no meaning other than that which refers to the Complainant’s ARNOLD CLARK trademark and its business, with knowledge of the Complainant and its trademark. The same is also supported by the evidence provided by Complainant.

Finally, it is well accepted by prior UDRP panels that a gTLD, such as “.com”, is typically ignored when assessing whether a domain name is identical or confusing similar to a trademark (see section 1.11 of the WIPO Overview 3.0).

Therefore, the Panel holds that the typographical variant of the Complainant’s ARNOLD CLARK trademark and the applicable gTLD “.com” altogether do not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark.

The Panel concludes that the disputed domain name is confusingly similar to the Complainant’s ARNOLD CLARK trademark. Accordingly, 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”.

Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate the Respondent’s rights or legitimate interests in the disputed domain name:

(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) “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 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 name in connection with a bona fide offering of goods and services since, 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 cannot present the bona fide offering of goods and services.

Furthermore, the Complainant claims that the Respondent is not sponsored by or affiliated with the Complainant in any way and that the Complainant has not given the Respondent permission to use the Complainant’s ARNOLD CLARK trademark in any manner. The Panel finds that there is no indication that the Respondent is commonly known by the disputed domain name, also taking into the consideration that the Respondent is an individual with no apparent connection with the Complainant’s ARNOLD CLARK trademark.

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 name, 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) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy stipulates that any of the following circumstances, inter alia, shall be considered as evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt 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 the respondent’s website or location or of a product or service on its website or location.

Based on the evidence produced by the Complainant, the Respondent was aware of the Complainant and its ARNOLD CLARK marks, and intentionally targeted those marks when registering the disputed domain name in order to take advantage of the Complainant’s marks’ reputation. The Panel observes that the Respondent registered the disputed domain name as typographical variant of the Complainant’s ARNOLD CLARK trademark. The Respondent’s effort to deceive Internet users by switching places of letters “L” and “C” of the Complainant’s ARNOLD CLARK trademark is itself 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 name is obviously connected with the Complainant’s ARNOLD CLARK trademark, the Panel considers that the Respondent targeted the Complainant and its trademarks when registering the disputed domain name. It is indeed difficult to imagine that the Respondent did not have the Complainant and its ARNOLD CLARK trademark in mind when registering the disputed domain name.

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

Furthermore, the disputed domain name has mail server (MX records) attached to it and consequently email messages can be sent and received using mail addresses on domain name that is confusingly similar to the Complainant’s ARNOLD CLARK trademark. In this particular case, the Respondent went one step further and not just that mail servers have been configured on disputed domain name, but also Sender Policy Framework (“SPF”) record has 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 name 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, supports an inference of bad faith on the Respondent’s side. Having in mind the confusing similarity of the disputed domain name to the Complainant’s ARNOLD CLARK trademark, it is rather difficult to imagine that mail server attached to disputed domain name would be used for any good faith purposes.

In conclusion, in this case, where the Respondent failed to submit a reply to the Complainant’s contentions, the Panel determines that, for all of the above reasons, the disputed domain name was registered and is being used in bad faith. Accordingly, the Complainant has satisfied 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 <arnoldlcark.com> be transferred to the Complainant.

Petra Pecar
Sole Panelist
Date: January 11, 2022