WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Global Car Group Pte Ltd., Cars24 Services Private Limited, Global Cars Aus Pty Ltd. v. Aman Nagpal, Proven Associated Services Pty Ltd

Case No. DAU2021-0022

1. The Parties

The Complainants are Global Car Group Pte. Ltd. (“First Complainant”) of Singapore, Cars24 Services Private Limited (“Second Complainant”) of India, and Global Cars Aus Pty Ltd. (“Third Complainant”), of Australia, all represented by Sim and San Attorneys-at-Law, India.

The Respondent is Aman Nagpal Proven Associated Services Pty Ltd, of Australia, self-represented.

2. The Domain Name and Registrar

The disputed domain name <cars24.com.au> 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 June 13, 2021. On the following day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 15, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant information for the disputed domain name that was partly the same as the named Respondent, and contact information for the disputed domain name that was the same as that in the Complaint. On June 17, 2021, the Complainant submitted an amendment to the Complaint regarding the requested remedy.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 22, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was July 12, 2021. The Respondent submitted an informal response on June 22, 2021. The Complainant made a supplemental filing on June 29, 2021. The Respondent made a supplemental filing on July 7, 2021.

The Center appointed Matthew Kennedy as the sole panelist in this matter on July 8, 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 First Complainant is an e-commerce company established on April 13, 2015 that is engaged through its subsidiaries in buying and selling used cars and auto parts to businesses and consumers. The First Complainant holds Indian trademark registrations numbers 3004750, 3004751, 3004752, 3004753, 3004754, 3004755, 3004756, 3004757, 3004763, and 3004764, all for CARS24, all registered from July 8, 2015, specifying goods and services in classes 1, 9, 11, 12, 16, 35, 36, 37, 40, and 42, respectively. The Second Complainant was established on August 12, 2015 as a wholly-owned subsidiary of the First Complainant and conducts its business in India. The Second Complainant now operates more than 215 branches in 87 cities in India and its operating revenues in 2019-20 were worth approximately USD 406 million. The Complainants offer a CARS24 mobile application, which has been downloaded over 49 million times. The Complainants created Instagram and Facebook accounts and first posted from them in 2015. The Complainants hold many domain names that begin with “cars24”. The First Complainant acquired the domain name <cars24.com> in 2015, which the Complainants have used since that time in connection with their main website. According to evidence provided by the Complainant from Google Analytics, there were over 42 million and 72 million user sessions on that website in 2019 and 2020, respectively, of which 27,000 and 68,000 visits in 2019 and 2020, respectively, emanated from Australia. The Third Complainant was registered with the Australian Securities and Investments Commission (“ASIC”) on October 30, 2020 as a wholly owned subsidiary of the First Complainant and conducts its business in Australia. The Complainants have operated an Australia-specific website within their main website at “www.cars24.com/au” since at least 2021. The Third Complainant operates various social media accounts. Its “cars24au” Instagram account had 157 followers as at June 21, 2021. The First Complainant filed Australian trademark application number 2145923 for CARS24 on December 28, 2020, specifying goods and services in classes 9, 35, and 42. That application was accepted but has been opposed by the Respondent (see below). The First Complainant filed two more Australian trademark applications, number 2172767 for CARS24 and number 2172768 for a CARS24 figurative mark, both on April 21, 2021, both specifying goods and services in classes 12, 37 and 39. Both applications are currently pending examination. The First Complainant entered into licence agreements dated June 8, 2021, one each with the Second Complainant and the Third Complainant, effective from the date of incorporation of the relevant licensee. In those agreements the First Complainant granted the Second and Third Complainant licences to use its CAR24 wordmark and the CAR24 figurative mark in the Indian and Australian markets, respectively.

The Respondent Proven Associated Services Pty Ltd is an Australian company that was registered with ASIC in March 2018. The Respondent’s contact person is its director Aman (or Amandeep) Nagpal, who registered the Australian business name “Proven Accountants” in 2015. Mr. Nagpal operates a website in connection with the domain name <provenaccountants.com.au>, which promotes his services, including accounting and tax, finance, and real estate services. Under the tab “finance”, there is a button for “Vehicle/Personal Loans”. The website displays accreditation as an ASIC registered agent and membership of the Institute of Public Accountants. The Respondent and Mr. Nagpal both obtained real estate agents’ licenses in September 2018. The Respondent registered the domain names <trucks24.com.au> and <business24.com.au> on February 3, 2019.

The disputed domain name was registered on December 22, 2018 according to the Respondent. It formerly redirected to <provenaccountants.com.au>, which resolves to Proven Accountants’ website. At the date of this Decision, the disputed domain name resolves to a landing page that displays pay-per-click (“PPC”) links to websites for used car sales.

An employee of the Complainants contacted the Respondent on October 5, 2020 regarding a possible transfer of the disputed domain name. During that conversation, the employee disclosed that he was from Cars24. A third party acting on behalf of the Complainants contacted the Respondent on April 17, 2021 regarding a possible transfer of the disputed domain name. The evidence on record shows that, during their conversation, the Respondent initially stated that the disputed domain name was not available for sale and was worth AUD 100,000 to itself as it planned to use the disputed domain name to set up a website. However, a few days later, when invited to state its asking price, the Respondent stated a minimum of AUD 250,000 and suggested that the agent ask the Complainants to contact it directly.

Mr. Nagpal contacted the Complainant’s Australian trademark attorney on June 4, 2021 for the purpose of a discussion to avoid litigation. The Respondent registered the Australian business name “Cars24 Australia” on June 11, 2021. The Respondent commenced an opposition to the Complainant’s trademark application number 2145923 for CARS24 on July 13, 2021.

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical and confusingly similar to the Complainants’ CAR24 marks.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not a licensee of the Complainants, nor has he been otherwise authorized or allowed by the Complainants to make any use of their CARS24 marks, in a domain name or otherwise. There is no indication in the record that the Respondent has ever been commonly known by the disputed domain name. The Respondent's aim in registering the disputed domain name was to sell it and not trade under it. The mala fide redirection to the Respondent’s website does not amount to a bona fide offering goods or services nor a noncommercial use of the disputed domain name.

The disputed domain name was registered and is being used in bad faith. The Respondent registered the disputed domain name in full knowledge of the Complainant’s rights. The CAR24 mark is distinctive and well-known throughout the world. The Respondent’s instructions to ask the Complainants to contact him directly concerning the sale of the disputed domain name is testimony to his knowledge regarding the Complainants and their CARS24 marks. In response to the Complainants’ attempt to purchase the disputed domain name, the Respondent offered to sell it for AUD 250,000 – an amount vastly in excess of the Respondent’s out-of-pocket expenses. The disputed domain name is being used for the sole purpose of misdirecting Internet users, who may be seeking the Complainants’ website, to an unrelated website of the Respondent. The disputed domain name has recently ceased to redirect to the Respondent’s site, which is evidence of bad faith. The Respondent contacted the Complainants’ Australian trademark attorney in an attempt to sell the disputed domain name and threatened to oppose their trademark applications, which is further evidence of bad faith.

The Complainant requests that the disputed domain name be transferred to the Third Complainant.

B. Respondent

The Response was filed by Mr. Nagpal, trading as “Proven Accountants”, and director of the Respondent, Proven Associated Services Pty Ltd. The Respondent started business in 2015 as a sole trader under the business name “Proven Accountants” and later changed his structure to form the Respondent company. His services include the sale, purchase, and financing of businesses, cars, trucks, and machinery. The Respondent is an authorized representative in the field of loans and is in the process of obtaining a full financial services license after which his websites will be published with various domains. The Respondent has already obtained a real estate agent license. The Respondent and Mr. Nagpal own at least three domain names in the form <[word]24.com.au>. These are for use in connection with a project in the fields of car finance, home finance, asset finance (trucks) and business finance, sales, and purchase. Thereafter, to run a car sale and purchase business they will need a motor vehicle dealer’s licence. They have started making arrangements with car dealers, repairers and finance companies.

The Respondent moved to Australia permanently in 2012 from India, before the Complainant existed. He had never heard of the Complainants’ Australian business before. The Complainants’ brand does not have significant value in Australia; as at June 21, 2021, the “cars24au” Instagram account only has 157 followers. The Complainants’ business growth was stagnant until 2018 and only saw drastic growth from 2019. The Respondent acquired the disputed domain name before the Complainants’ business started multiplying. The Respondent does not merely provide accounting services but multiple services relevant to its domain names.

During pre-Complaint correspondence with agents of the Complainants, the Respondent mentioned how much the disputed domain name was worth to itself but it also mentioned that the disputed domain name was not available for sale and that it was being kept for a project. When the Complainants’ agent raised the price too high and mentioned payment in cryptocurrency, the Respondent suspected illegal activity and randomly asked for AUD 250,000 to check the seriousness of his case. The disputed domain name is not for sale but is for use in the Respondent’s dream project. The Complainants began operations in Australia when they knew that the Respondent was already working on a project of the same name. The Respondent has spent four years obtaining licences and exerting efforts to realize its project; which was started long before the Complainants’ business in Australia. The Complainants’ business is narrower in scope as it only concerns car sales. The Respondent mentioned the amount of AUD 250,000 due to timing, so that the Complainant would discuss the issues urgently but the disputed domain name is not for sale. The allegation that the Respondent solicited money to take advantage of the Complainants are false.

6. Discussion and Findings

6.1. Preliminary Issues

A. Consolidation: Multiple Complainants

The Complaint was filed by three complainants against a single respondent. The Second and Third Complainants are wholly owned subsidiaries of the First Complainant. The First Complainant holds an Indian trademark registration for CAR24 and has granted licenses to use that trademark to the Second and Third Complainants. The Panel finds that all three Complainants have a common grievance against the Respondent and that it is equitable and procedurally efficient to permit the consolidation of their complaints. Therefore, the Complainants are referred to below individually and collectively as “the Complainant” except as otherwise indicated.

B. Unsolicited Supplemental Filings

The Complainant made an unsolicited supplemental filing on June 29, 2021, after the filing of the informal response. The Respondent made a supplemental filing in reply on July 7, 2021, prior to the appointment of the Panel.

In its supplemental filing, the Complainant requests that the Panel reject the informal response for failure to comply with the Rules, paragraphs 5(b)(i), (ii), (iii), (vii), (viii), and (ix), alleging that the informal response failed to present any arguments in defense, failed to adduce any documentary evidence to show use of the disputed domain name, omitted contact details and included no certification. The Complainant submits that the Panel should not consider the informal response but should rather consider the Respondent in default and draw appropriate inferences in accordance with the Rules, paragraph 14(b).

The Panel notes that, to the extent that the informal response makes substantive omissions, these can be taken into account in the weighing of the evidence. As for the procedural omissions, these have caused the Complainant no prejudice in this case and the lack of certification of the informal response can also be taken into account when weighing the evidence. Therefore, the Panel rejects the Complainant’s request and, in accordance with the Rules, paragraph 10(d), will take the informal response into account according to its relevance, materiality and weight.

In the alternative, the Complainant seeks an opportunity to show that it adopted the CARS24 trademark in Australia prior to the registration of the disputed domain name, among other things. However, the Panel notes that the Complainant already had ample opportunity in the Complaint to present evidence of its use of its trademarks in Australia. The Complainant also seeks to highlight defects in the evidence attached to the informal response but these are already evident on the face of that evidence. Further, the Parties’ supplemental filings, including annexes, are relatively lengthy but appear to do little to advance the consideration of the issues in dispute. Therefore, the Panel sees no reason to accept the Complainant’s supplemental filing; hence, there is no basis to accept the Respondent’s supplemental filing in reply either.

6.2. Substantive Issues

Paragraph 4(a) of the auDRP provides that the Complainant must prove each of the following elements:

(i) the disputed domain name is identical or confusingly similar to a name, 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 or subsequently used in bad faith.

A. Identical or Confusingly Similar

Based on the evidence submitted, the Panel finds that the Complainant has rights in the CARS24 mark.

The Panel has taken note that the Complainant has no trademark registration in Australia. Nevertheless, having regard to the global nature of the Internet, among other things, it is sufficient for the purposes of the first element of paragraph 4(a) of the auDRP for the Complainant to have demonstrated its trademark rights in any jurisdiction, in this case, India. Accordingly, it is unnecessary to consider the Complainant’s claim to common law rights in the CARS24 mark.

The disputed domain name wholly incorporates the CARS24 mark as its operative element. The only additional element in the disputed domain name is the Second Level Domain (“2LD”) suffix “.com.au”. A 2LD suffix is generally disregarded in an assessment of identity or confusing similarity for the purposes of the auDRP. See BT Financial Group Pty Limited v. Basketball Times Pty Ltd, WIPO Case No. DAU2004-0001.

Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the auDRP.

B. Rights or Legitimate Interests

Paragraph 4(c) of the auDRP sets out circumstances which, without limitation, if found by the Panel to be proven based on its evaluation of all evidence presented, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the auDRP:

(i) before any notice to [the respondent] of the subject matter of the dispute, [the respondent’s] bona fide use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with an offering of goods or services (not being the offering of domain names that [the respondent has] acquired for the purpose of selling, renting or otherwise transferring); or

(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or

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

As regards the first circumstance set out above, the disputed domain name formerly redirected to the Respondent’s Proven Accountants website. The disputed domain name wholly incorporates the Complainant’s CARS24 trademark. The Complainant submits that the Respondent is not its licensee nor otherwise authorized or allowed by the Complainant to make any use of its CARS24 marks, in a domain name or otherwise. At the time of this Decision, the disputed domain name resolves to a landing page displaying PPC links for used cars and used vehicle sales. Although the disputed domain name incorporates the dictionary word “cars”, it is noteworthy that all of the PPC links are for “used” cars and “used” vehicles, which is the same manner of use of the terms insofar as the Complainant’s CARS24 trademark goes. Accordingly, neither the former nor the current use of the disputed domain name appears to be a bona fide use in connection with an offering of goods or services within the terms of paragraph 4(c)(i) of the auDRP.
As regards the second circumstance set out above, the Respondent’s company name is “Proven Associated Services Pty Ltd”, its contact person is Aman Nagpal, and his business name is “Proven Accountants”. None of these names is “Cars24”. Although the Respondent has registered the Australian business name “Cars24 Australia”, it did so only two days before the filing of the Complaint. Nothing indicates that the Respondent has been commonly known by the disputed domain name within the terms of paragraph 4(c)(ii) of the auDRP.

As regards the third circumstance set out above, the disputed domain name formerly redirected to Proven Accountants’ commercial website. It currently resolves to a landing page displaying PPC links which generate revenue either for the Respondent or for the operators of the linked websites, or both. Accordingly, neither the former nor the current use of the disputed domain name appears to be in connection with a legitimate noncommercial or fair use of the disputed domain name within the terms of paragraph 4(c)(iii) of the auDRP.

Based on the above, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Turning to the Respondent’s arguments, it acknowledges that the disputed domain name formerly redirected to Proven Accountants’ website, but points out that that website includes a tab for finance and a button for vehicle and personal loans. However, there is no other evidence on the record that the Respondent currently provides car loan services and the Panel sees no connection between “Car24” and any of Proven Accountants’ other services; rather it seems to be a clear reference to the Complainant. The Respondent argues that it is making preparations to use the disputed domain name with a website offering loans for cars, truck, and business purchases. Although the Respondent asserts that it intends to obtain a financial service provider license and a motor dealer’s license, it provides only a copy of real estate licenses, which the Panel considers irrelevant. Although the Respondent asserts that it has already made arrangements with car dealers, repairers, and finance companies, it does not substantiate that assertion. The Respondent offers to provide supporting evidence upon request but the Panel notes that the Rules provide for each Party to make one submission to present its case; the Respondent has failed to use that opportunity to demonstrate its alleged arrangements with third parties in the car industry. Accordingly, having reviewed the evidence, the Panel is unable to conclude that the Respondent is making a bona fide use of the disputed domain name in connection with an offering of goods or services, nor that it has made demonstrable preparations to do so. In any case, even if the Respondent’s assertions are taken at face value (i.e., that he is or is preparing to be a legitimate reseller or financier of cars), that does not avoid the conclusion that the disputed domain name unfairly seeks to trade off the Complainant’s reputation.

Accordingly, the Panel finds that the Respondent has not rebutted the Complainant’s prima facie case. Therefore, the Panel finds that the Complainant has satisfied the second element in paragraph 4(a) of the auDRP.

C. Registered or Subsequently Used in Bad Faith

The Panel notes that the third element of the auDRP uses the word “or” which means that it is sufficient for the Complainant to demonstrate either that the disputed domain name has been registered in bad faith, or that it has been subsequently used in bad faith, but the Complainant is not required to demonstrate both.

Paragraph 4(b) of the auDRP provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, although it is not an exhaustive list of such circumstances. The first and fourth circumstances are as follows:

(i) circumstances indicating that [the respondent has] registered or [the respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to another person for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or

(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant’s name or mark as to the source, sponsorship, affiliation, or endorsement of that website or location or of a product or service on that website or location.

With respect to registration, the disputed domain name was registered in December 2018, three years after the registration of the CARS24 trademark in India and the establishment of the Complainant’s global website associated with the domain name <cars24.com>, but two years prior to the establishment of the Complainant’s business in Australia, where the Respondent is established. Although Mr. Nagpal is of Indian origin, he moved from India to Australia before the establishment of the Complainant’s business in India. The Complainant’s evidence shows that while there were many user sessions on its global site in 2018 (approximately 17 million), the dramatic increase in traffic approaching the 2020 levels did not occur until 2019, after the registration of the disputed domain name. If the share of global traffic to that website emanating from Australia in 2018 was similar to that in 2019 (a reasonable assumption given that the Complainant buys and sells used cars and did not do business in Australia in either year), it can be inferred that the number of user sessions on the Complainant’s website emanating from Australia prior to the registration of the disputed domain name was low. The evidence includes press coverage of the Complainant’s business, most of it in Indian publications but available online. The Panel notes a temporal correlation between the registration of the disputed domain name and the Complainant’s advertising during Australia vs. India cricket matches in 2018/19, but the Complaint only includes two screen captures of a broadcast on an Indian television network, which was presumably not viewed in Australia, where the Respondent is established. The above evidence, on its own, does not show that the Respondent actually knew or should have known of the Complainant’s trademark prior to the time at which it registered the disputed domain name; rather, it shows a clear possibility that the Respondent became aware of that mark prior to that time online.

The Panel takes note that the disputed domain name wholly incorporates the CARS24 mark, combining it with nothing more than a 2LD suffix, which is a technical requirement of registration. CARS24 is an invented mark, yet the operational element of the disputed domain name matches it exactly. While Proven Accountants’ business has some marginal connection to cars, that does not provide a reason why the Respondent combined the word “cars” with “24” in the disputed domain name other than by reference to the Complainant. Shortly after it registered the disputed domain name, the Respondent registered two other domain names that also contain “24”, namely <trucks24.com.au> and <business24.com.au> but there is no explanation as to why the Respondent chose to include “24” in any of them. The Panel does not consider the identity between the operational element of the disputed domain name and the CARS24 mark to be a coincidence. Rather, the most plausible explanation for the registration of the disputed domain name is that the Respondent had the Complainant’s trademark in mind.

With respect to use, the disputed domain name, which wholly incorporates the CARS24 mark, was formerly used to redirect to Proven Accountants’ website, which promotes the Respondent’s services. The CARS24 mark has acquired a considerable reputation through promotion and use in connection with the Complainant’s website for buying and selling used cars, which has received huge volumes of traffic subsequent to the registration of the disputed domain name. The mark’s reputation has extended to Australia since the Complainant established operations there in 2020, as the evidence shows that 68,000 visits to the Complainant’s website emanated from Australia in that year. The disputed domain name currently resolves to a page displaying PPC links based on the trademark value of the Complainant’s CARS24 mark, which operates for commercial gain. In view of these circumstances, the Panel finds that by using the disputed domain name in both these ways, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to Proven Accountants’ website, and subsequently to the landing page with PPC links, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of a website or other online location, as envisaged in paragraph 4(b)(iv) of the auDRP.

Furthermore, the evidence shows that the Respondent offered to sell the disputed domain name to the Complainant in April 2021 for a minimum price of AUD 250,000. The Respondent knew that it was dealing with an agent of the Complainant and stated so, despite the agent’s denial, because an employee of the Complainant had previously identified it to the Respondent as an interested party in October 2020. Although the Respondent initially claimed that the disputed domain name was not for sale, it later stated a minimum asking price which was clearly an offer to sell. The Respondent submits that its offer was not serious but that is not reflected in the record of its conversation with the agent of the Complainant. The stated price was high and the Respondent has not substantiated any of its assertions regarding its alleged expenditure in relation to its alleged project for a website to be associated with the disputed domain name. The Panel finds that these circumstances indicate that the Respondent has registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to another person for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name, as envisaged in paragraph 4(b)(i) of the auDRP.

Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the auDRP.

7. Decision

For all 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 <cars24.com.au> be transferred to the Third Complainant.

Matthew Kennedy
Sole Panelist
Date: July 22, 2021