WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Arnold Clark Automobiles Limited v. Iain Thomson

Case No. D2019-1033

1. The Parties

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

The Respondent is Iain Thomson, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <arnoldclark.dev> (the “Domain Name”) 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 May 6, 2019. On May 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 7, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 9, 2019 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 May 9, 2019.

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 May 10, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 30, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 3, 2019.

The Center appointed Jon Lang as the sole panelist in this matter on June 13, 2019. 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 Europe’s largest independently owned family-run car dealership, with over 200 new and used car dealerships throughout the United Kingdom. Founded in 1954, it now sells more than 250,000 vehicles each year and has an annual turnover of over GBP 3 billion. The Complainant also supplies business motorcar leasing and fleet services, car finance and insurance, vehicle aftercare, servicing, MOT’s and accident repairs.

The Complainant operates a transactional website from “www.arnoldclark.com” from which it sells new and used cars and related services.

The Domain Name, which was registered on March 12, 2019, does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

The following is a summary of the main allegations of the Complainant.

The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant is the proprietor of the following United Kingdom trademarks for ARNOLD CLARK – Reg. No.: 2103334 with a filing date of June 20, 1996, and Reg. No.: 2300325 with a filing date of May 11, 2002, and thus the earlier mark pre-dates registration of the Domain Name by approximately 23 years.

The Top-Level Domain “.dev” is wholly generic in that it is required only for technical reasons and should be disregarded for the purposes of comparison with the Complainant’s trademarks.

The Domain Name is identical to the Complainant’s registered marks.

The Respondent has no rights or legitimate interests in respect of the Domain Name.

The Complainant has found no evidence that the Respondent has been commonly known as ARNOLD CLARK prior to or after registration of the Domain Name. The Respondent is not a licensee of the Complainant and has not received any permission or consent from the Complainant to use its registered or unregistered marks.

The Complainant has found no evidence that the Respondent owns any trademarks incorporating the terms “Arnold Clark” or that it has ever traded as ARNOLD CLARK.

Given the fame of its marks and that the Domain Name is identical, there is no conceivable use to which the Domain Name could be put that would confer any legitimate interest upon the Respondent.

The website associated with the Domain Name is inactive and thus it is “passively held”. The Domain Name has not therefore been used in connection with a bona fide offering of goods or services and the Respondent cannot otherwise obtain or derive any rights or legitimate interests through such passive holding.

The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the Domain Name.

The Domain Name was registered and is being used in bad faith.

The Respondent’s passive holding of the Domain Name constitutes bad faith.

The following factors are relevant when analyzing a passive holding of a domain name:

- the degree of distinctiveness or reputation of the complainant’s mark:

The Complainant is very well known both in the United Kingdom and beyond, and its marks have been used for many years prior to registration of the Domain Name;

- the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use:

The Respondent has not published a website which is indicative of the Respondent not having an actual or contemplated good faith use for the Domain Name;

- the respondent concealing its identity or use of false contact details:

The Respondent redacted, or allowed to have redacted, its contact details on the public WhoIs database. It is reasonable to contend that a bona fide registrant would publish contact details by which it could be contacted. Not doing so, suggests registration and use in bad faith.

- the implausibility of any good faith use to which the domain name may be put:

Given the fame and reputation of the Complainant and widespread use of its marks, it is inconceivable that the Respondent could have registered the Domain Name without the Complainant’s marks in mind, or with bona fide, good-faith intentions.

The Complainant submits that the Respondent’s registration and non-use of the Domain Name is in bad faith for the purposes of the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed.

A. Identical or Confusingly Similar

The Complainant clearly has rights in the ARNOLD CLARK mark by virtue of its trademark registrations.

Ignoring the gTLD “.dev” (which the Panel may do for comparison purposes), the Domain Name consists only of the Complainant’s ARNOLD CLARK trademark (but without the gap between the two words comprising the trademark, which it would be impossible to re-produce in the Domain Name for technical reasons and which can also be ignored for comparison purposes).

Accordingly, the Panel finds that the Domain Name is identical to the Complainant’s ARNOLD CLARK trademark for the purposes of the Policy and thus this element of paragraph 4(a)(i) of the Policy has been established.

B. Rights or Legitimate Interests

By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name and, as such, the burden of production shifts to the Respondent to come forward with relevant evidence demonstrating that it does, in fact, have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Before doing so however, the Panel will consider whether such a finding would, in any way, be inappropriate.

A respondent can show it has rights to, or legitimate interests in a domain name in various ways even where, as is the case here, it is not licensed by or affiliated with a complainant. For instance, it can show that it has been commonly known by the domain name, or that it 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 trademark or service mark in issue.

Here, however, the Respondent is not known by the Domain Name. Further, no positive use is currently being made of the Domain Name, let alone legitimate noncommercial or fair use. Moreover, any noncommercial or fair use must be without intent to mislead, but it is likely in fact that a false impression of association with the Complainant would arise on any positive use of the Domain Name.

A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services (and was doing so before any notice of the dispute). However, as already noted, there is no evidence of any positive use, let alone an offering of goods or services. In any event, it is difficult to conceive of an offering of goods or services (using the Domain Name) that would not create a wrongful impression of an association with the Complainant. Accordingly, any such use (otherwise than by agreement), would be unlikely to constitute a bona fide offering.

Moreover, given that the Domain Name is identical to the Complainant’s ARNOLD CLARK trademark, without permission of the Complainant it seems inconceivable that any legitimate use could be made of it all. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.5.1.

There is no evidence before this Panel that the Respondent has rights or legitimate interests in the Domain Name. The contentions of the Complainant, by which it has made out a prima facie case that the Respondent has no rights or legitimate interests, have not been contradicted or challenged, or cast into doubt by the brief analysis above. Accordingly, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Policy sets out a number of grounds upon which a finding of bad faith registration and use may be based. It is a non-exhaustive list, but a very useful guide. Sometimes however, particularly in cases where no use is made of the Domain Name or attempts made to sell it, panels must have regard to the general principle underlying the bad faith requirement of the Policy, which is generally understood to mean a respondent taking unfair advantage of or otherwise abusing a complainant’s mark. Registering a domain name identical to a trademark in which another has clear and obvious rights, without justification, falls within this general principle underlying bad faith.

The fact that the Respondent is (presently) passively holding the Domain Name does not prevent a finding of bad faith registration and use. Indeed, a passive holding of a domain name can support a finding of bad faith. UDRP panels must examine all the circumstances of the case. WIPO Overview 3.0, section 3.3, states:

“While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put”.

The Domain Name is identical to the ARNOLD CLARK trademark and is used extensively in the course of trade. Given the size of the Complainant’s business, with over 200 new and used car dealerships throughout the United Kingdom and an annual turnover of over GBP 3 billion, one can safely say that the Complainant’s mark has a wide reputation. No response was filed or evidence of actual or contemplated good faith use provided, and none would seem plausible without permission of the Complainant.

Accordingly, the passive holding of the Domain Name in the circumstances of this Complaint, supports a finding of bad faith.

In all the circumstances, the Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith.

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 Domain Name <arnoldclark.dev> be transferred to the Complainant.

Jon Lang
Sole Panelist
Date: June 27, 2019