WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Caterham Cars Ltd. v. Unitedeurope Consulting

Case No. D2011-2135

1. The Parties

The Complainant is Caterham Cars Ltd. of Dartford, Kent, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Macfarlanes LLP, United Kingdom.

The Respondent is Unitedeurope Consulting of Gwanju, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <caterham.com> (the “Disputed Domain Name”) is registered with Korea Information Certificate Authority Inc. d/b/a DomainCa.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 6, 2011. On December 6, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 7, 2011, 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”).

On December 13, 2011, the Center issued a Language of Proceeding notification, inviting comment from the parties. On December 13, 2011, the Complainant submitted a request that English be the language of the proceeding. On the same date, the Respondent also submitted a request that Korean be the language of the proceeding. On December 14, 2011, the Center notified the parties of its preliminary decision to 1) accept the Complaint as filed in English; 2) accept a Response in either Korean or English; and 3) appoint a panel familiar with both languages mentioned above, if available and also advised the parties that in accordance with paragraph 11 of the Rules, the Panel has the authority to determine the language of the proceeding.

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 December 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 3, 2012. The Respondent did not submit any timely response. Accordingly, the Center notified the Respondent’s default on January 4, 2012. On January 6, 2012, the Respondent sent an email seeking more information regarding the Response due date and issuance of the Respondent Default. The Center replied to the Respondent on the same date.

The Center appointed Andrew J. Park as the sole panelist in this matter on January 19, 2012. 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 manufacturer of a sports car known as the “Caterham 7” or the “Caterham.” It is located in Caterham, Surrey, United Kingdom. It owns the website “www.caterham.co.uk”, registered on November 21, 1996. It is also the registrant of the mark CATERHAM under European Community trademark registration no. 002027605) in Classes 12, 16, 25, 28, 37, and 41 in connection with sports cars; stationary, printed publications and magazines; clothing, headgear and footwear; toys and miniature cars; maintenance, repair and inspection services relating to sports cars; and sporting activities, motor sport services, and education relating to motorsport. The Community trademark application was filed on January 3, 2001, registered on April 24, 2002, and renewed on January 26, 2011.

5. Parties’ Contentions

A. Complainant

The Complainant argues that: (i) the Disputed Domain Name is identical to a 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 was registered and is being used in bad faith.

Regarding the first element, the Complainant contends that the Disputed Domain Name is identical to the Complainant’s CATERHAM mark and to the distinctive portion of the Complainant’s registered domain name <caterham.co.uk>.

Regarding the second element, the Complainant contends that the Respondent’s website bearing the Disputed Domain Name lists ten subject headings related to real estate, including, for example, “Home Insurance,” “Mortgages,” and “Real Estate Finance.” Each heading links to a page that lists further websites related to the subject heading in a search engine style format. Thus, the Complainant argues that by merely providing a list of links to other websites, the Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or service’s website, and that rather, the Respondent is using the goodwill and reputation that subsists in the Complainant’s trademark to divert users to the Disputed Domain Name for commercial gain.

Regarding the third element, the Complainant contends that (1) the Disputed Domain Name contains widely mixed content that is not connected, and therefore, such fact evidences that the Disputed Domain Name was registered and is being used in bad faith; and (2) the Respondent registered the Disputed Domain Name to intentionally attract Internet users who are familiar with the Complainant’s “Caterham” brand.

B. Respondent

The Respondent did not submit any formal Response to the Complainant’s contentions.

6. Discussion and Findings

6.1 Language of the Proceeding

The registration agreement for the Disputed Domain Name is in Korean. Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, i.e., Korean for the present case. However, the Complainant submitted a request for this dispute to proceed in English. It is also recognized that the Respondent requested the language of the proceeding to be Korean. The Center made a preliminary determination to accept the Complaint filed in English, subject to a determination by the Panel pursuant to paragraph 11 of the Rules.

In adopting a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs. Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432. Based on the fact that the Disputed Domain Name displays content that is in English and the fact that the Respondent chose not to participate or submit any formal Response substantive reply to this proceeding in English or Korean, the Panel concludes that it will 1) proceed in line with the Center’s preliminary decision to accept the Complaint as filed in English; and 2) issue a decision in English.

6.2 Analysis of the Complaint

Under the Policy, in order to prevail, the Complainant must prove the following three elements of a claim for transfer or cancellation of the Respondent’s Disputed Domain Name: (i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) that the Respondent’s Disputed Domain Name was registered and is being used in bad faith. See Policy, paragraph 4(a). Regarding paragraph 4(a)(ii), once a prima facie case is made, a respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

As the Respondent has not filed a Response, the Panel may decide the dispute based on the Complaint and may accept all reasonable factual allegations as true. The Panel may also draw appropriate inferences from Respondent’s default. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.

A. Identical or Confusingly Similar

The case record contains ample evidence to demonstrate the Complainant’s rights in the registered CATERHAM mark. The Panel also determines that the Disputed Domain Name is identical and therefore confusingly similar to the Complainant’s CATERHAM mark. The test for determining confusing similarity involves a direct comparison of a complainant’s trademark and the textual string which comprises the domain name. In this case, the Disputed Domain Name is composed entirely of the Complainant’s CATERHAM mark. Additionally, the Panel notes that it is well established that the top-level domain name suffix (e.g., “.com”) is not generally taken into consideration when assessing identical or confusing similarity. Accordingly, the Panel finds that the Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides that the Respondent may establish rights or legitimate interests in the Disputed Domain Name by proof of any of the following non-exclusive list of circumstances: (i) before any notice to the Respondent of the dispute, the Respondent used, or made demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; 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 not acquired 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. If the circumstances are sufficient to constitute a prima facie showing by the Complainant of an absence of rights or legitimate interests on the part of the Respondent, the evidentiary burden shifts to the Respondent to show, by plausible, concrete evidence, that it does have a right or a legitimate interest.

The Complainant has not authorized the Respondent to use its CATERHAM mark in any respect. There is also no evidence that the Respondent is commonly known by the Disputed Domain Name. Further, the Respondent’s use of the Disputed Domain Name to sponsor links is not use of the Disputed Domain Name in connection with a bona fide offering of goods or services. See, e.g., Barceló Corporación Empresarial, S.A. v. Hello Domain, WIPO Case No. D2007-1380; Robert Bosch GmbH v. Asia Ventures, Inc., WIPO Case No. D2005-0946; Edmunds.com, Inc. v. Ult. Search, Inc., WIPO Case No. D2001-1319; Trade Me Limited v. Vertical Axis Inc, WIPO Case No. D2009-0093. Finally, there is no evidence that the Respondent is making any legitimate noncommercial or fair use of the Disputed Domain Name. Based on the unrefuted evidence submitted by the Complainant, the Panel finds that the Respondent is not making fair use of the Complainant’s trademark, but is using the mark to attract Internet users to the Respondent’s website and then providing links to other websites.

This combination of circumstances sufficiently establishes a prima facie case so that the evidentiary burden shifts to the Respondent to demonstrate that it has some rights or legitimate interests in respect of the Disputed Domain Name. The Respondent has not filed a Response and has therefore failed to satisfy its burden. Having searched the present record, the Panel finds no circumstances that would indicate such rights or interests, as described in paragraph 4(c) of the Policy, or otherwise. The Complainant has therefore satisfied the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the Complainant establish both bad faith registration and bad faith use of the Disputed Domain Name by the Respondent. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001. Paragraph 4(b) of the Policy provides the following four exemplary circumstances, each of which, if proven, shall be evidence of the registration and use of a disputed domain name in bad faith: (i) circumstances indicating that a registrant has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a 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 registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has 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 registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location.

The Complainant has argued that the Respondent registered the Disputed Domain Name to intentionally attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

The Panel finds that the Respondent is presumably deriving a financial benefit from web traffic diverted through the Disputed Domain Name to linked websites on the website to which the Disputed Domain Name resolves. The Panel therefore accepts that the Respondent has intentionally attracted Internet users to its website for commercial gain through confusion as to the source, affiliation or endorsement of the website. This amounts to evidence of bad faith use under paragraph 4(b)(iv) of the Policy. See Compart AG v. Compart.com / Vertical Axis, Inc., WIPO Case No. D2009-0462. Accordingly, the Panel finds that the Respondent registered the Disputed Domain Name primarily for the purpose of attracting Internet users to another site by creating confusion and this is evidence of bad faith under paragraphs 4(b)(iv) of the Policy. Therefore, the Panel finds that the Complainant has 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 <caterham.com> be transferred to the Complainant.

Andrew J. Park
Sole Panelist
Date: February 1, 2012