WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Arnold Clark Automobiles Limited v. Domain Administrator, Fundacion Privacy Services Ltd

Case No. D2021-3923

1. The Parties

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

The Respondent is Domain Administrator, Fundacion Privacy Services Ltd, Panama.

2. The Domain Names and Registrars

The disputed domain names <arnoldckark.com>, <arnoldclaek.com> and <arnoldclarl.com> are registered with Media Elite Holdings Limited dba Register Matrix (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2021. On November 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 24, 2021, 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”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 21, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 22, 2021.

The Center appointed Oleksiy Stolyarenko as the sole panelist in this matter on January 4, 2022. 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

According to the Complaint, the Complainant is a company in the United Kingdom. Founded in 1954, the Complainant is one of the Europe’s largest independently owned family-run car dealerships, with over 200 new and used car dealerships throughout the United Kingdom. The Complainant now sells more than 250,000 vehicles each year and generates an annual turnover of over GBP 3 billion. The Complainant also offers a variety of vehicle-related services, such as business motorcar leasing and fleet services.

The Complainant owns exclusive rights over the ARNOLD CLARK trademark. In particular, the Complainant is the proprietor of a number of trademark registrations for the ARNOLD CLARK mark in the United Kingdom, including, inter alia, the ARNOLD CLARK trademark (Registration No. 2103334) registered on April 4, 1997, and the ARNOLD CLARK trademark (Registration No. 2300325) registered on December 13, 2002.

The Complainant owns and operates various domain names that contain the ARNOLD CLARK trademark. The Complainant’s domain name <arnoldclark.com> was registered on October 23, 1997 and is actively used to sell new and used cars and offer related services.

According to the Registrar’s WhoIs records, the Respondent registered the disputed domain names <arnoldckark.com> on December 31, 2020, <arnoldclarl.com> on January 22, 2021, and <arnoldclaek.com> on January 04, 2021. The disputed domain names have configured Mail eXchanger (“MX”) records and resolve randomly to a variety of websites, some of which asks Internet users to install malicious software..

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has rights in the ARNOLD CLARK trademark by virtue of its registration, longstanding use and promotion with respect to the Complainant’s activities. The registration of the earliest ARNOLD CLARK trademark mark pre-dates the registration of the disputed domain names by more than 24 years.

The Complainant argues that the disputed domain names are identical or confusingly similar to the Complainant’s ARNOLD CLARK trademark as the disputed domain names incorporate the Complainant’s registered ARNOLD CLARK trademark entirely. The disputed domain names differ only by the replacement of a single letter in “clark” part of the ARNOLD CLARK trademark.

The Complainant observes that all the replacement letters are next to the original letters on a standard keyboard. The Complainant avers that the Respondent intentionally picked the disputed domain names as typographical variants of the Complainant’s ARNOLD CLARK mark.

The Complainant further contends that terms “arnold clarl”, “arnold claek” and “arnold ckark” have no meanings other than that which refers to the Complainant.

The Respondent has no rights or legitimate interests in the disputed domain names.

The Complainant has not authorized the Respondent to use the ARNOLD CLARK trademark in the disputed domain names.

The Respondent is not commonly known by the disputed domain names.

The Respondent was fully aware of the Complainant’s reputation and the Complainant’s trademark rights on the ARNOLD CLARK trademarks when Respondent registered the disputed domain names.

The Respondent’s use of the disputed domain names cannot be a bona fide use and such use takes unfair advantage of the Complainant’s rights as the disputed domain names resolve to a variety of websites, some of which attempt to deceive Internet users into downloading and installing malicious software.

The disputed domain names were registered and are being used in bad faith as the Respondent attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s ARNOLD CLARK trade mark. The disputed domain names are capable of being used for email communication and there is a possibility that anyone who receives an email originating from the disputed domain names may mistakenly assume that it was sent from the Complainant. Therefore, the disputed domain names have been registered and used by the Respondent in bad faith.

The Complainant seeks a decision that the disputed domain names be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in the ARNOLD CLARK trademark, based on its various trademark registrations.

Therefore, the Panel considers that the Complainant has satisfied the threshold requirement of having relevant trademark rights.

The disputed domain names are comprised of the word “arnold” and a misspelled word “clark” in a form “clarl” or “claek” or “ckark”, combined with the generic Top-Level Domain (“gTLD”) “.com”. It is clear that the Respondent used adjacent keyboard letters misspelling “l” to “k” in <arnoldckark.com>, “r” to “e” in <arnoldclaek.com> and “k” to “l” in <arnoldclarl.com>.

Domain names that consists of a common, obvious, or intentional misspelling of a trademark are considered by panels to be confusingly similar to the relevant mark for purposes of the first element. See section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

Furthermore, the Panel considers that the disputed domain names are confusingly similar to the Complainant’s ARNOLD CLARK trademark.

The gTLD is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. See section 1.11.1 of the WIPO Overview 3.0. Therefore, the Panel disregards the gTLD for the purposes of this comparison.

The Panel finds that according to a side-by-side comparison, the Complainant’s ARNOLD CLARK trademark is recognizable within the disputed domain names.

For all the foregoing reasons, the Panel finds that the first element of paragraph 4(a) of the Policy has therefore been satisfied by the Complainant.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires the complainant to establish that the respondent has no rights or legitimate interests in the domain name. Once the Complainant establishes a prima facie case against the Respondent under this ground, the burden of production shifts to the Respondent to rebut it. See section 2.1 of the WIPO Overview 3.0. In this case, the Respondent did not rebut the Complainant’s prima facie case regarding the lack of rights or legitimate interests.

However, the overall burden of proof remains with the Complainant. Paragraph 4(c) of the Policy provides circumstances that demonstrate the respondent’s rights or legitimate interests to the disputed domain name, and that complainants frequently address to show that the activities of the respondent does not fall under the bona fide offering of goods or services (paragraph 4(c)(i) of the Policy), that the respondent is not commonly known by the disputed domain name (paragraph 4(c)(ii) of the Policy) and that the respondent is not involved into a legitimate noncommercial or fair use of the disputed domain name (paragraph 4(c)(iii) of the Policy).

The Panel concurs with the Complainant’s notion that all the disputed domain names were registered by the Respondent with an intentional misspelling of the ARNOLD CLARK trademark. The Panel finds that the misspellings of the Complainant’s trademark indicates an awareness of the Complainant and intent to take unfair advantage of such, which does not support a finding of any rights or legitimate interests.

According to the Complainant, the Respondent is not authorized or licensed to use the ARNOLD CLARK trademark in the disputed domain names.

The Panel agrees with the Complainant that the Respondent’s use of the disputed domain names cannot be regarded as legitimate, noncommercial or fair use because the disputed domain names resolve to a number of pages randomly provided to the Internet users, some of which suggest Internet users to download software. Such use of the disputed domain names gives a false impression that the disputed domain names are associated with and/or endorsed by the Complainant and are capable of misleading and diverting visitors, and tarnishing the Complainant’s ARNOLD CLARK trademark.

Furthermore, the systematic misspelling of the Complainant’s trademark by the Respondent using the adjacent keyboard letters also confirms the Respondent’s intent always has been to misleadingly divert Internet users or to tarnish the Complainant’s ARNOLD CLARK trademark.

The evidence provided by the Complainant showing that the disputed domain names are involved into the distribution of the malware also strongly supports the conclusion that the Respondent lacks rights or legitimate interests in the disputed domain names. See section 2.13.1 of the WIPO Overview 3.0.

The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain names, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).

Therefore, the Panel also finds that the Respondent is not involved in a bona fide offering of goods or services (under paragraph 4(c)(i) of the Policy) and the Respondent’s activities does not fall under a legitimate noncommercial use (under paragraph 4(c)(iii) of the Policy).

The Panel also concludes that the Respondent is not commonly known by the disputed domain names under paragraph 4(c)(ii) of the Policy.

Thus, the Panel finds that the Complainant has satisfied the second element of the Policy, namely paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

As the Panel established above, the Complainant’s ARNOLD CLARK trademark appears to be fairly well known and was widely used in commerce well before the registration of the disputed domain names.

The Panel finds that the Respondent knew of the Complainant’s ARNOLD CLARK trademark and reputation when registering the disputed domain names. This conclusion is supported by the fact that the disputed domain names are confusingly similar to the Complainant’s ARNOLD CLARK trademark and that the Respondent systematically misspelled one part of the ARNOLD CLARK trademark using adjacent keyboard letters in the disputed domain names.

The Panel concludes that it is difficult to conceive of any plausible use of the disputed domain names that would amount to good faith use, given that the disputed domain names are confusingly similar to the Complainant’s ARNOLD CLARK trademark and official domain name <arnoldclark.com>, and resolve to a variety of websites, some of which attempt to deceive Internet users into downloading and installing malicious software. Any use of the disputed domain names would likely mislead Internet users into believing the disputed domain names are associated with and/or endorsed by the Complainant and have the effect of redirecting visitors to websites operated by the Complainant’s competitors or other third parties, thereby causing harm to the Complainant and the Complainant’s reputation.

The Panel finds here as well that the Respondent’s intention has always been to use the disputed domain names to intentionally attract, for commercial gain, Internet users to the websites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location (see paragraph 4(b)(iv) of the Policy).

Furthermore, prior UDRP Panels have held that the use of a domain name for purposes of malware distribution constitute bad faith. See section 3.4 of the WIPO Overview 3.0.

In this case, the Panel concludes that the Respondent’s use of a privacy or proxy service supports an inference of bad faith, and the Responded failed to submit a response or provide any evidence of a good-faith use or to show rights or legitimate interests in the disputed domain names. See section 3.6 of the WIPO Overview 3.0.

Therefore, under the totality of the circumstances, the Panel finds the Respondent registered and used the disputed domain names in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, paragraph 4(a)(iii) 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 names <arnoldckark.com>, <arnoldclaek.com>, <arnoldclarl.com> be transferred to the Complainant.

Oleksiy Stolyarenko
Sole Panelist
Date: January 15, 2022