WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

C4-UK Limited v. Gregg Lawton, Sell Cars-Uk Limited

Case No. D2010-1822

1. The Parties

The Complainant is C4-UK Limited of Nottingham, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) , represented by Adlex Solicitors, United Kingdom.

The Respondent is Gregg Lawton, Sell Cars-Uk Limited of Reading, United Kingdom, represented by Stefanie Coombes, United Kingdom.

2. The Domain Names and Registrars

The disputed domain name <sellcars-uk.com> is registered with 1&1 Internet AG. The disputed domain names <sellcarsuk.com> and <sellcars-uk.info> are registered Tucows Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2010. On October 28, 2010, the Center transmitted by email to 1&1 Internet AG and Tucows Inc. a request for registrar verification in connection with the disputed domain names. On October 28, 2010 and October 29, 2010, 1&1 Internet AG and Tucows Inc. respectively transmitted by emails 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 2, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 22, 2010. The Center notified the Respondent Default on November 23, 2010. The Response was filed with the Center on November 23, 2010. On the same day, the Center acknowledged receipt of the filing of the Response and informed the Respondent the Panel on appointment will decide inter alia its timeliness.

On November 29, 2010, the Center received a unsolicited supplemental filing from the Complainant.

The Center appointed David Perkins as the sole panelist in this matter on November 30, 2010. 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

4.A. The Complainant

4.A.1 The Complainant was incorporated on July 10, 2007. It buys, and subsequently sells, some 80 motor cars per month dealing with a wide range of companies and individuals, including celebrities, professional sports people, persons emigrating from the United Kingdom and from companies looking to downsize or raise funds.

4.A.2 Until July 2008 the Complainant traded under the name “cash4cars-uk.com”.

4.A.3 Since July 2008 the Complainant has traded through its main website at “www.sellcar-uk.com”.

4.A.4 The Complainant asserts common law trademark rights in the marks SELL CAR UK and SELL CAR-UK.COM. That claim is based upon the following:

- For the year to July 2009 the Company’s turnover was approximately £5.3 million.

- For the year to July 2010 the Company’s turnover rose to approximately £7.7 million.

- A national television advertising campaign from October 3-11, 2009.

- A further national television advertising campaign on January 16 and 17, 2010, which together were recorded as having 6.7 million adult impacts.

- Google statistics showing a total of approximately 33,000 visits to the Complainant’s website in each of the calendar quarters in which the television advertising occurred.

- Further Google statistics showing that between January 2009 and September 2010 there were approximately 200,000 unique visits to the Complainant’s website.

- A screenshot from the television advertisement as shown on YouTube which alone had generated almost 8,000 views as of July 2010.

- Expenditure of approximately £160,000 advertising “sellcar-uk.com” on Google Awards over the period July 2008 to September 2010.

- Extensive media coverage of and advertisements featuring the Complainant’s “sellcar-uk.com” website, examples of which are exhibited to the Complaint.

4.B. The Respondent

4.B.1 The Respondent Company, Sell Cars-UK Limited, was incorporated on February 5, 2010.

4.B.2 The first two disputed domain names <sellcars-uk.com> and <sellcars-uk.info> were both registered on October 12, 2009. The third disputed domain name <sellcarsuk.com> was registered on February 18, 2010. All three are registered in the name of the Respondent, Gregg Lawton.

4.B.3 The Respondent says that it applied to register “sellcars-uk” as a trademark but was advised by the UK Intellectual Property Office (UKIPO) on April 22, 2010 that the mark was too generic to be registerable.

4.B.4 The Respondent employs six people and says that it has “[…] a professional relationship with, and provides vehicles to, many of the leading main agent group-dealerships in the motor trade industry including: Audi, Land Rover, Jaguar, Ford and Kia.”

4.B.5 The Respondent exhibits emails with and invoices from Regus addressed to “Sell Cars” dated April, May and June 2010 as evidence that the Respondent company is known by that name.

5. Parties’ Contentions

5.A. Complainant

Identical or Confusingly Similar

5.A.1 As noted, the Complainant asserts common law trademark rights in SELL CAR UK and SELLCAR-UK.COM by reason of the usage since July 2008 set out in paragraph 4.A.4 above.

5.A.2 The Complainant refers to cases decided under the Policy where significant use of marks has been held to constitute trademark rights as required by paragraph 4(a)(i) of the Policy.

Examples cited are Emmanuel Vincent Seal trading as Complete Sports Betting v. Ron Bassett, WIPO Case No. D2002-1059 and Dating Direct.com Limited v. Robert Swan c/o Keep Major / Keep Major Limited, NAF Case No. FA156717. In the “Complete Sports Betting” case, the name and mark had been used for a bookmaking business for just under 2½ years by the time of the complaint. In the “Dating Direct” case, the Dating Agency operating under that mark had operated for some 4 years and had some 2 million users by the date of the complaint. In both cases evidence of use was adduced, which the panel in each case found significant enough to have generated common law trademark rights in the marks, respectively “COMPLETE SPORTS BETTING” and “DATING DIRECT”.

5.A.3 The Complainant says that the disputed domain names are essentially identical with those marks but for using “cars” plural, rather than “car” singular as in its marks.

Rights or Legitimate Interests

5.A.4 The Complainant’s case is that the Respondent cannot demonstrate any of the circumstances of paragraph 4(c) of the Policy.

5.A.5 Specifically, the Complainant says that the Respondent cannot demonstrate bona fide use of the disputed domain names prior to being first put on notice of the dispute by the Complainant’s solicitors’ letter of June 16, 2010. The Complainant bases this assertion on the following facts.

5.A.6 First, the first two disputed domain names were registered on October 12, 2009, the day after the Complainant’s first television advertising campaign of October 3 to 11, 2009 ended. The third disputed domain name was registered on February 18, 2010 immediately after the Complainant’s second television advertising campaign of January 16-17, 2010.

5.A.7 Second, the Respondent Gregg Lawton was employed between September and December 2009 by a business called “we buy any cars.com Ltd”, which operated a vehicles website at “www.webuyanycars.com”. The vehicle website “www.webuyanycar.com” - where “car” is used in the singular – is the biggest operator in the business of online second-hand vehicle acquisition. As in this administrative proceeding, the only difference between that Company’s website address and the website at which Mr Lawton worked was the use of “cars” plural. Exhibited to the Complaint is a signed Statement from Mr Philo, an employee of the Complainant since January 2010 who used to work with Mr Lawton at “www.webuyanycars.com”. Mr Philo states that many customers approached “www.webuyanycars.com” in the mistaken belief that they were dealing with “www.webuyanycar.com”.

5.A.8 Mr Philo also states that on May 3, 2010 he received a call from an advertising agent asking for Mr Lawton saying that she had googled “Sell Car UK”. Clearly, that agent had confused the Complainant with the Respondent at “Sell Cars UK”.

5.A.9 The Complaint states that in about January or February 2010, Mr Lawton left We Buy Any Cars Ltd to establish the Respondent Company, Sell Cars-UK Limited. The Complaint exhibits the certificate of incorporation of that company on February 5, 2010.

5.A.10.The Complaint also exhibits the website to which the disputed domain name <sellcars-uk.com> resolved on June 10, 2010. The site includes a prominent logo of the stylized words “sellcars-uk” with the word “cars” highlighted in blue. That day the Complainant’s solicitors sent a “cease and desist” to the then registrant of that website, […] Durber / BB solutions. By June 16, 2010 the registrant of that domain name had changed to the current registrant, the Respondent, Gregg Lawton. A further “cease and desist” letter was then sent to him on June 16, 2010. Solicitors on behalf of the Respondent replied on June 25, 2010. They referred to both the letters of June 10 and 16, 2010 explaining that Mr Durber was the Respondent’s web designer. Essentially, the response was to the effect that no one could claim exclusive rights to the mark “Sell Car UK” and that the disputed domain name <sellcars-uk.com> was the subject of a purchase made by Mr Lawton “some time ago”. If an Internet user typed in the words “we buy any cars” a number of websites would be offered, from which the user could select the one he wanted. Finally, the letter said that the Complainant could “of course” make an offer to purchase the Respondent’s business.

5.A.11 Further party and party correspondence followed on June 30 and July 6, 2010. It was only after that the Complainant became aware of the other two disputed domain names, <sellcars-uk.info> and <sellcarsuk.com>. Both of those redirect to the Respondent’s website at “www.sellcars-uk.com”.

5.A.12 In the light of the above, the Complainant’s case is that the Respondent’s use of the three disputed domain names cannot be considered to be in connection with a bona fide offering of services. In particular, where the disputed domain names are confusingly similar to the Complainant’s trademark and are used, as they are here, for a competing business, such use cannot be considered bona fide. In that respect, the Complainant cites America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374, where the respondent used the disputed domain names <icq520.com> and <icq502.com> for a website offering the same services as America Online’s “www.icq.com“ website, which enjoyed over 100 million subscribers worldwide. Furthermore, the Complainant says that it has no association with the Respondent, nor has it licensed or otherwise authorised the Respondent to use its SELL CAR-UK.COM or SELL CAR UK trademarks.

5.A.13 The Complainant says there is no evidence that the Respondent can bring himself within paragraph 4(c)(ii) of the Policy. The Complaint cites in that respect, the decisions in Netellier plc v. Prostoprom, WIPO Case No. D2007-1713 which involved the disputed domain name <pokennetellier.com> where the complainant, a publicly traded entity, operated financial services and Technosystems Consolidated Corporation, Invention Submission Corporation t/a Invest Help v. Hugh Goodman, Royal Computer Proprietary Ltd., WIPO Case No. DAU2007-0001where the disputed domain names incorporated the Complainant’s “INVEST HELP” trademark.

5.A.14 Finally, as to paragraph 4(c)(iii) of the Policy, the Complainant’s case is that the Respondent’s use of the three disputed domain names is, clearly, not “non commercial”. Nor, in the light of the facts and matters set out above, can it be described as a “fair use”. Given the identicality, for all practical purposes, of the three disputed domain names, the Respondent’s use of those domain names is clearly intended to misled consumers into believing that they are dealing with the Complainant’s business.

Registered and Used in Bad Faith

5.A.15 The Complainant’s case is that the facts establish bad faith registration and use under each of paragraphs 4(b)(ii) to 4(b)(iv) of the Policy.

5.A.16 As to paragraph 4(b)(ii) of the Policy, the Complainant relies upon Mr Lawton’s previous copying of the Webuyanycar.com Ltd name and business [see, paragraph 5.A.7 above] and on the letter from the Respondent’s solicitors of June 25, 2010 in which they refer to the fact that the disputed domain name <sellcars-uk.com> can be found by Internet users through typing in the words “we buy any car” [see, paragraph 5.A.10 above]. In the circumstances, the present administrative proceeding is, the Complainant says, the second attempt by the Respondent to trade off the reputation of an online vehicle website operator again by use of “cars” plural in a domain name which is otherwise identical to the trademark owner’s mark.

5.A.17 As to paragraph 4(b)(iii) of the Policy, the Complainant asserts that the Respondent was, clearly, well aware of its business and its rights in the SELL CAR-UK.COM and SELL CAR UK marks when registering the three disputed domain names. Further, registration and use is equally clearly intended to disrupt the Complainant’s business through the misleading of the public. See, in that respect Mr. Philo’s statement referred to in paragraph 5.A.8 above. The Complainant’s Supplementary Submission of November 29, 2010 exhibits an email from a potential customer of the Complainant dated November 24, 2010. That is a Mr Butterworth who emailed the Complainant asking if it had a representative named Gregg operating from an address at “www.sellcars-uk.com”.

5.A.18 As to paragraph 4(b)(iv) of the Policy, the Complainant relies on the facts set out in paragraphs 5.A.6 to 5.A.12 and 5.A.16 to 5.A.17 above. In addition, the Complainant points to the logo used on the Respondent’s website which highlights in colour the word “cars” in the same way that the word “car” is highlighted on the Complainant’s website. Further, the Complainant says that the Respondent has advertised on Google using the Complainant’s exact name, “sellcar-uk.com”, as a key word.

5.B. Respondent

Identical or Confusingly Similar

5.B.1 First, the Respondent says that the Complainant has no registered trademarks for “sellcar-uk”, only the domain name <sellcar-uk.com>.

5.B.2 Second, the Respondent reiterates that the UKIPO advised on April 22, 2010 that “sellcars-uk” was too generic to be registered as a trademark [paragraph 4.B.3 above].

5.B.3 Third, the disputed domain names were available to register, as was registration of the Respondent Company as Sell Cars UK Ltd [paragraph 4.B.1 and 2 above].

5.B.4 Further, the words “sell cars” and “we buy cars” are, the Respondent says, commonly used in the motor trade industry.

5.B.5 Consequently, the Respondent says they are generic words and as the disputed domain names incorporate those words, they cannot be confusingly similar to the rights claimed by the Complainant.

Rights or Legitimate Interests

5.B.6 The essence of the Respondent’s case is that, because the Complainant has no registered trademark for “sellcar-uk” and has insufficient distinctiveness to claim the exclusive right to use that mark, it is entirely legitimate for the Respondent to use the three disputed domain names to resolve to its website at “www.sellcars-uk.com”.

5.B.7 The legitimacy of the Respondent’s use of those names is, the Respondent says, evidenced by registration of Sell Cars-UK Limited on February 5, 2010. Further, the Respondent says that it will oppose any attempt by the Complainant to register “Sell Car UK” or “Sell Car-UK.com” as a trademark.

Registered and Used in Bad Faith

5.B.8 The Respondent says that registration of the first two disputed domain names was not done on the back of the Complainant’s television advertising campaign in October 2009. He says that he was unaware that the Complainant, C4-UK Limited, was trading as “sellcar-uk”. The Respondent then suggests that the Complainant should, to protect its interests, have registered other similar domain names to <sellcar-uk.com> but probably did not because there was a possibility that it could change that name. In that respect, the Respondent points to the fact that the Complainant incorporated as C4-UK Limited in July 2007 and for the following 12 months traded as “cash4cars-uk.com” before changing in July 2008 to “sellcar-uk.com”.

5.B.9 As to paragraph 4(b)(iv) of the Policy, the Respondent reiterates that it has always traded legitimately and openly from “www.sellcars-uk.com” and has never intended to mislead or divert the Complainant’s customers to that website by use of the three disputed domain names.

5.B.10 The Response states:

“’Sellcars’ is an obvious formulation in everyday speech within the motor industry and we have to accept this fact and continue to act in good faith according to our registered name(s). ‘Sellcar’ may have a descriptive element but they have certainly not got such an acquired extent of distinctiveness so as to generate any rights or legitimate interests in the name(s).”

5.B.11 The Respondent also denies that the facts support the Complaint under paragraphs 4(b)(ii) and (iii) of the Policy.

6. Discussion and Findings

6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:

(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) that the disputed domain names have been registered and are being used in bad faith.

6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent's rights or legitimate interest in the domain names in issue.

6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.

6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.

Identical or Confusingly Similar

6.5 The Respondent’s case turns, in the main, on its assertion that SELL CAR UK and/or SELLCAR-UK.COM are not registered trademarks and that the Complainant has not established sufficient distinctiveness in those marks to claim trademark rights in them for the purpose of paragraph 4(a)(i) of the Policy.

6.6 The consensus view set out in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions is that, in order to successfully assert common law or unregistered trademark rights – as the Complainant does in this case – it must show that the mark has become a distinctive identifier associated with the Complainant or its goods and services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.

6.7 In this case, the Complainant had traded under the SELL CAR UK and SELLCAR-UK.COM marks for some 16 months before the first two disputed dome names were registered and some 20 months before the third disputed domain name was registered. In the first year of its trading under those marks it had generated a turnover of some £5.3 million and 4 months into its second year of trading undertook a nine-day national television advertising campaign in October 2009. In the second year of trading (year to July 2010) the turnover increased to some £7.7 million. A further two-day national television advertising campaign followed in January 2010. Additional evidence relating to use and promotion of the Complainant’s marks is noted in paragraph 4.A.4 above.

6.8 While it is, of course, correct – as the Respondent says – that the words ”sell car” are descriptive of the business of selling cars, it is nevertheless possible to obtain common law or unregistered rights in a trademark incorporating those words through use. In this case, on the evidence presented in the Complaint, the Panel is satisfied that the mark when used by the Complainant in relation to the business of buying and selling motor vehicles through the Internet has become sufficiently distinctive of the Complainant to qualify as a trademark for the purposes of the Policy. Accordingly, the Complaint satisfies the first requirement of paragraph 4(a)(i) of the Policy.

6.9 Since the three disputed domain names differ from those trademarks only by use of “cars” plural, rather than “car” singular as in the trademarks, the Panel has no hesitation in finding the disputed domain names confusingly similar to the Complainant’s trademarks. Accordingly, the Complaint satisfies the second requirement of paragraph 4(a)(i) of the Policy.

Rights or Legitimate Interests

6.10 On the evidence, the Respondent cannot bring himself within any of the circumstances set out in paragraph 4(c) of the Policy. The first two disputed domain names were registered the day following the Complainant’s first national television advertising campaign in October 2009 and the third on the final day of the Complainant’s second such campaign in January 2010. Although the Respondent denies there is any connection between the notoriety of the Complainant’s business conducted under the SELL CAR UK / SELLCAR-UK.COM marks generated by those television advertising campaigns and registration of the three disputed domain names, the Panel takes the view that the connection cannot be coincidental and that the Respondent’s case is just not credible in that respect.

6.11 There is then the way in which the website at “www.sellcars-uk.com” to which the three disputed domain names resolve makes the same colour use of the word “Cars” as does the Complainant’s use on its website of “Car”.

6.12 Also to be considered is the evidence from Mr Philo and the matters referred to in paragraphs 5.A.7 and 5.A.8 above and in the final sentence of paragraph 5.A.18 above.

6.13 In the circumstances, coupled with the Panel’s decision in relation to paragraph 4(a)(i) of the Policy, the Respondent’s use of the disputed domain names cannot be said to be bona fide under paragraph 4(c)(i) of the Policy.

6.14 Nor, on the facts and matters set out above, can the Respondent bring himself within paragraphs 4(c)(ii) or (iii) of the Policy. As to the latter, there is the additional evidence of actual confusion given by Mr Philo [paragraph 5.A.8 above] and the email exchange with Mr Butterworth on November 24, 2010 [paragraph 5.A.17 above]. Since the latter occurred only after this Complaint was filed on October 28, 2010 the Panel considers it admissible and relevant to this administrative proceeding. However, for the avoidance of doubt, the Panel would have reached the same decision without the Butterworth emails provided with the Complainant’s Supplementary Submission.

6.15 In the light of the foregoing, the Complaint satisfies the requirement of paragraph 4(a)(ii) of the Policy.

Registered and Used in Bad Faith

6.16 The Panel is satisfied that the evidence supports a finding in the Complainant’s favour under paragraph 4(b)(iv) of the Policy. In this respect, there is no need to reiterate the facts and matters constituting that evidence, as to which reference is made to in paragraph 5.A.18 above.

6.17 Furthermore, as already noted in paragraph 6.10 above, the Respondent’s case that, at the time when the first two disputed domain names were registered, he was unaware that the Complainant was trading as “sellcar-uk” / “sellcar-uk.com” is just not, on the evidence presented, credible.

6.18 Accordingly, the Complaint meets the two requirements of paragraph 4(a)(iii) of the Policy.

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 names <sellcars-uk.com>, <sellcars-uk.info> and <sellcarsuk.com> be transferred to the Complainant.

David Perkins
Sole Panelist
Dated: December 7, 2010