WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Arnold Clark Automobiles Limited v. Thomas (aka Tam) Coughlan

Case No: D2002-0909

The Complainant is Arnold Clark Automobiles Limited, Glasgow G41 2PP, United Kingdom.

The Respondent is Thomas (aka Tam) Coughlan, Cumbernauld G67 2EA, Scotland, United Kingdom.

The disputed domain name <arnold-clark.org> is registered with Address Creation of 53 Barcelona, Irvine, CA 92614, United States of America.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") by email on October 1, 2002. On October 3, 2002, the Center transmitted by email to Address Creation a request for registrar verification in connection with the domain name at issue. On October 8, 2002, Address Creation transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 October 9, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response was October 29, 2002. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 31, 2002.

The Center appointed David Perkins as the sole in this matter on November 7, 2002. 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.

The Complainant is one of the largest independent automotive companies in the United Kingdom and employs over 2,500 staff at some 100 locations in the United Kingdom, predominantly in Scotland. It has an annual turnover approaching £1 billion and sells over 110,000 vehicles a year.

The Complainant is the proprietor of United Kingdom trademark registration 2,103,334 filed June 20, 1996. The mark comprises ARNOLD CLARK, both in capital letters and in an italicised form. It is registered in respect of the following services:

- insurance services etc [Class 36];
- vehicle repair etc [Class 37]; and
- vehicle hire etc [Class 39].

The Complainant is also the applicant for United Kingdom trademark 2,300,325 ARNOLD CLARK filed May 11, 2002, in Class 35 in respect of services comprising:

"The bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase these goods in a motor vehicle and spare parts outlet"

In other words, a service mark for the retail of motor vehicles and accessories therefor.

The Complainant owns the following domain names, where the predominant feature is the ARNOLD CLARK name and trademark.

The Complainant's website at <arnoldclark.com> was launched in August 2001, which attracts some 10,000 hits per week. An extract from that website [Exhibited to the Complaint] makes prominent use of the ARNOLD CLARK name and trademark.

The Complaint states that the Complainant spends over £7 million per annum on marketing, a substantial element of which relates to promoting the ARNOLD CLARK brand and its website under that name.

In the absence of a Response, the only information known about the Respondent is contained in the Complaint. From this it appears that the Respondent is an individual who registered the domain name in issue on May 31, 2001. That domain name resolved to a web page entitled ARNOLD CLARK SUCKS. Extracts from the Respondent's Gripe Site website are exhibited to the Complaint. These include the following:

- "Arnold Clark Automobiles sold me a duffer. Save yourself some time, money and hassle, shop elsewhere."

- Exceptionally derogatory statements about the quality of the service supplied by the Complainant, the proprietor of the business and certain of its managers and employees.

- The statement,

"The Domain Name arnold-clark.org is for sale £25,000. No offers"

It appears from the Complaint that the Respondent's girlfriend purchased a vehicle from the Complainant in May 2001. After initial correspondence between the Respondent and the Complainant raising the Respondent's complaints about that vehicle, in July 2001, the Respondent set up his first ARNOLD CLARK SUCKS website. The Complaint lists a number such websites which, following correspondence between the Complainant and the website Internet service provider have been closed down:

Apparently, since the message board hosted by "b2g2.com" was closed on August 30, 2002, yet another ARNOLD CLARK SUCKS message board has appeared hosted by another Internet Service Provider.

The Complainant's case is that the domain name in issue is identical with its ARNOLD CLARK trademark but for the hyphen, which is insufficient to distinguish the domain name from the trademark. Further, this lack of distinctiveness is deliberately calculated to cause confusion, since search engines will invariably direct potential ARNOLD CLARK customers to the site.

The Complainant has not authorised the Respondent to use the ARNOLD CLARK name or trademark. Further, the Respondent's use of the <arnold-clark.org> domain name is not in connection with a bona fide offering of goods or services, nor is it a legitimate non-commercial or fair use.

5.3.1 The Complainant points to the content of the Respondent's various websites, which it characterises as a blatant attempt by the Respondent to extract monetary compensation from the Complainant. The Complainant points to the offer to sell the domain name for £25,000 [see, paragraph 4.6 above]. The Complaint also exhibits a message posted on the Respondent's website on March 24, 2002, when, in response to a question from the Complainant asking what it would take for the Respondent to dismantle his website, the Respondent said.

"What would it take?

Interesting question.

If Arnold had not ignored my phone calls way back in the beginning, this site would never have been born. If Arnold had not attempted to silence me way back in the beginning there would have only been one Arnold Clark dot org but as he instructed his lawyers to close the first site down he now has to contend with over 100 sites.

I have mirror sites all over the globe, Canada, USA, France, Australia.

But back to the question.

He could send one of his muppets out with a new MG ZT. That might do it… ."

The Complaint also exhibits an email exchange on August 28, 2002, between the Complainants solicitors and the Respondent which reads as follows:

"I refer to my original e-mail of 12^th August and your response of 15 August 2002 and my e-mail to you of 18 August 2002 indicating that before I would ask for instructions I needed you to confirm the asking price for the domain name transfer given that you indicated that you would be prepared to transfer it to my client on receipt of the asking price. Can you get back to me on this point. If I haven't heard from you by the end of the week I will have to assume your indication of willingness to transfer is not genuine. I look forward to hearing from you."

[Complainant's solicitor]

"The asking price is clearly visible on the website. My offer to transfer was genuine, however the price is non negotiable. On receipt of the asking price and the transfer of the domain your client gets a satisfied customer (something he should have had over a year ago) and all sites that a dissatisfied customer has built will be removed. Transferring the domain through either the courts or the World Intellectual Property Organisation will ensure that this dissatisfied customer remains dissatisfied. I'm sure that your client will agree that satisfied customers are good for business.

Thank you for your time."

[The Respondent]

Further, an extract from the Respondent's message board dated August 31, 2002, is also exhibited to the Complaint. This reads:

"Seems they want the domain www.arnold-clark.org. Must be hurting by now. Seen the tracker? 700 plus unique visitors a week and rising."

5.3.2 The Complaint then refers to the Decision in Reg Vardy plc v. David Williamson, WIPO Case No. D2001-0593 (July 3, 2001), which the Complainant says is virtually identical in terms of both fact and law to those in this Complaint. That too is a case where no Response was submitted by the Respondent. Notwithstanding, the Panellist in that case carefully analysed the issues and found in favour of the Complainant. Like the Complainant in this case, Reg Vardy plc is a very large retailer of motor vehicles in the United Kingdom and the Respondent was a dissatisfied customer who registered the disputed domain names <reg-vardy.com>; .net; and .org and established a website at those addresses critical and abusive of the business of Reg Vardy plc. The only difference of substance between the facts of that case and those in the present case is that, unlike the Respondent in this case, the Respondent in the Reg Vardy case did not apparently offer to sell the disputed reg-vardy domain names.

As stated, no Response has been filed by the Respondent.

6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following:

(i) that the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

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

6.2 Paragraph 4(c) of the Policy identifies circumstances which, in particular, but without limitation, if found by the Panel to be proved based on its evaluation of all the evidence presented, shall demonstrate the Respondent's rights or legitimate interests for the purpose of paragraph 4(a)(ii) of the Policy.

6.3 Paragraph 4(b) of the Policy sets out circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

The Panel considers that the hyphen in the domain name in issue is immaterial. The domain name <arnold-clark.org> is to all intents and purposes identical to the Complainant's ARNOLD CLARK trademark. The Complaint, therefore, satisfies the requirements of paragraph 4(a)(i) of the Policy.

6.5.1 There is really one question which arises here. It is whether the Respondent can be said to be making a fair use of the <arnold-clark.org> domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the service mark at issue.

6.5.2 First, it is clear from the Respondent's own website that he is attracting visitors to his gripe site and that is precisely his intention. He claims to be attracting "…. 700 plus unique visitors a week and rising" [see, paragraph 5.3.1 above].

6.5.3 Second, it is also clear that the Respondent believes he has genuine grievances against the Complainant and that, in the absence of what he considers to be adequate reparation for those grievances, his intention is to damages [i.e. tarnish] the Complainant's ARNOLD CLARK service mark. For example, see the March 24, 2001 bulletin posted by the Respondent on his website [see, again paragraph 5.3.1 above].

6.5.4 Is this a legitimate or fair use of the domain name? The Rules, paragraph 15(a), provide that:

"A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable". [Emphasis added].

The Policy gives no guidance as to what shall be considered legitimate or fair use. As both parties to this Complaint are resident in the United Kingdom, it may be appropriate to look to principles of United Kingdom law for guidance in this respect. Certainly, where parties to a Complaint under the Policy have both been domiciled in the United States, Panelists have in cases of this nature applied the U.S. trademark doctrine of fair use and/or the right to freedom of speech established in the First Amendment to the US Constitution.

For example in Bridgestone Firestone Inc. et al. v. Jack Myers, WIPO Case No. D2000-0190 (July 6, 2000), a complaint site established by a former employee, Mr. Myers, under the <bridgestone-firestone.net> domain name was held not to infringe or dilute the Complainant's trademark, the Panelists in that case applying the fair use doctrine as explained in Bally Total Fitness Holding Corp. v. Faber 29 F. Supp. 2d 1161 [C.D. Cal. 1998]. The U.S. Court held that the First Amendment applied and, consequently, Faber was entitled to use Bally's mark to identify the source of the goods of which he was complaining. The Court further expressed the view that:

"…. no reasonably prudent Internet user would believe that Ballysucks.com is the official Bally site or is sponsored by Bally".

The Panel in the Bridgestone-Firestone case also quoted from a decision of the Second Circuit Court of Appeal in Name.Space v. Network Solutions Inc. 202 F. 3d 573, 585 (2d. Cir 2000):

"Domain names … per se are neither automatically entitled to nor excluded from the protections of the First Amendment, and the appropriate inquiry is one that fully addresses particular circumstances presented with respect to each domain name".

The approach of Panelists in relation to other gripe site/criticism site cases where the parties have also been located in the United States have been the same. For example, TMP Worldwide Inc. v. Jennifer L Potter, WIPO Case No. D2000-0536 (August 5, 2000).

This is that the issue is not one of freedom of speech and expression but the choice of the domain name used to exercise the right of free speech. See, for example, Compagnie de Saint Gobain v. Com-Union Corp, in WIPO Case No. D2000-0020 (March 14, 2000). In the Reg Vardy case [referred to in paragraph 5.3.2 above] the Panellist characterised the domain name registrations in issue as a vindictive opportunity to damage the Complainant as a result of a customer dispute, which itself indicated a lack of rights or legitimate interests in respect of the domain name. Similarly, in Lloyds TSB Bank plc v. Paul Brittain, WIPO Case No. D2000-0231 (June 6, 2000), the 3 member Panel found the that the Respondent's right to comment on the services of Lloyds TSB Bank - the dispute concerning a small debt which the Respondent denied was owed to the Bank - was quite distinct from rights in the domain name. The Respondent's right to complain was not an issue for the tribunal.

Further, in this Panellist's decision in Bett Homes Ltd v. Bill McFadyen, WIPO Case No. D2001-1018 (October 22, 2001), the view was taken that it was not fair use of the BETTS HOMES trademark by the Respondent to use that trademark with a view to embarrassing the trademark owner to settle a vendor / purchaser dispute.

6.5.7. This is not a dispute concerning US residents. The extent to which the First Amendment under US law may be appropriate to disputes under the Policy is not for decision in this case. In any event, it appears that application of the First Amendment is subject to careful analysis of the facts in each case [see, the Name.space case referred to in paragraph 6.5.5 above]. Insofar as this case is concerned, while the Panel accepts that the Respondent may be free publicly to comment on the Internet in respect of the Complainant's vehicle retail services, such freedom does not confer a right or legitimate interest in the use of a domain name which is identical to the Complainant's trademark. The Complaint, therefore, satisfies the requirement of paragraph 4(a)(ii) of the Policy.

6.6.1 Here the Respondent had blatantly set a price at which he will transfer the domain name to the Complainant. That price - namely £25,000.00 or an MG ZT sports car - is vastly in excess of the out-of-pocket costs directly related to the domain name. This offer for sale was originally posted on the Respondent's website. On the facts as presented in the Complaint, the Panel takes the view that this falls within paragraph 4(b)(i) of the Policy. The Complaint, therefore, satisfies the twin requirements of paragraph 4(a)(iii) of the Policy.

6.6.2 As to paragraph 4(b)(iii) of the Policy, that is concerned with competitors, where one party registers a domain name primarily for the purpose of disrupting the business of another party with whom he competes. Clearly, in this case the Respondent is not a competitor of the Complainant. But, the circumstances set out in paragraphs 4(b)(i) to (iv) of the Policy as evidence of bad faith registration and use are expressed to be without limitation. Other circumstances may also evidence bad faith. The Panel sees no reason why an intent to disrupt the business of a non-competitor should not also evidence bad faith in certain circumstances.

6.6.3 Similarly, with regard to paragraph 4(b)(iv) of the Policy, the panellist remains of the view expressed in the Bett Homes case that an intentional effort to create and take advantage of association with a Complainant's trademark is capable of evidencing bad faith. This can, for example, arise where the Respondent uses the Complainant's trademark with a view to obtaining an advantage in a collateral dispute by threatening continued negative publicity about the Complainant.

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <arnold-clark.org>, be transferred to the Complainant.