WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Arnold Clark Automobiles Limited v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com/ Carolina Rodrigues, Fundacion Comercio Electronico

Case No. D2019-1810

1. The Parties

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

The Respondent is Registration Private, Domains By Proxy, LLC, DomainsByProxy.com, United States of America (the “United States”) / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.

2. The Domain Name and Registrar

The disputed domain name <arnoldclsrk.com> (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 July 29, 2019. On July 29, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 30, 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 August 1, 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 August 1, 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 August 5, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 25, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 26, 2019.

The Center appointed Linda Chang as the sole panelist in this matter on August 30, 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 founded in 1954 and operates over 200 new and used car dealerships throughout the United Kingdom. The Complainant also supplies business motorcar leasing and fleet services, care finance and insurance, vehicle aftercare, servicing, MOTs and accident repairs. The Complainant sells more than 250,000 vehicles each year and generates an annual turnover of over GBP 3 billion.

The Complainant is the proprietor of a number of ARNOLD CLARK trademarks, including United Kingdom trademark No. 2103334 registered on April 4, 1997, and United Kingdom trademark No. 2300325 registered on December 13, 2002.

The Domain Name was registered on May 8, 2019, and resolves to a pay-per-click advertising page.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to the ARNOLD CLARK trademark in which it has rights. The Complainant points out that “.com” should be disregarded for the purposes of comparison, and the Domain Name differs from its trademark by the mere replacement of the letter “a” with the letter “s”.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant states that it has not licensed the Respondent to use its trademarks, and that the Respondent has not been commonly known as ARNOLD CLARK or ARNOLD CLSRK prior to or after the registration of the Domain Name, and that the Domain Name has not been used in connection with any legitimate noncommercial or fair use.

The Complainant finally contends that the Domain Name was registered and is being used in bad faith. The Complainant emphasizes that the Respondent targeted on the Complainant by registering a typographical variation of its ARNOLD CLARK trademark and intentionally attempted to attract, for commercial gain, web users to its website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of its website.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds on the evidence that the Complainant has registered trademark rights in ARNOLD CLARK.

The Panel further finds it widely accepted that “.com” being the generic Top-Level Domain (“gTLD”) is generally irrelevant for the purpose of comparison of a trademark and a domain name. The Respondent has registered a domain name very closely resembling the Complainant’s ARNOLD CLARK trademark, with the only difference made by the replacement of the letter “a” with the letter “s”. The typo of such nature could be easily done by Internet users as the differing letters are adjacent keyboard letters and next to each other. The Panel views that the Domain Name is a misspelling of the Complainant’s trademark ARNOLD CLARK and classic case of typosquatting.

The Panel therefore finds that the Domain Name is confusingly similar to the Complainant’s trademark. Accordingly, the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel finds that there is no bona fide explanation for the Respondent’s choice of the Domain Name in that the Respondent would not have miss-spelt the Domain Name if it is intending to make some form of bona fide use of the Complainant’s trademark.

The Panel further finds that the Respondent’s use of the Domain Name as a parking page comprising pay-per-click links does not represent a bona fide offering where some links compete with the Complainant and cannot confer any legitimate interests on the Respondent.

The Complainant has made a prima facie case to demonstrate that the Respondent lacks rights or legitimate interests in the Domain Name. Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that the Respondent intentionally picked the Domain Name as a typographical variant of the ARNOLD CLARK trademark due to the proximity of the two letters “a” and “s” on the keyboard. The misspelling signals the Respondent’s intention to confuse Internet users looking for the Complainant as they are likely to be deceived and misled into visiting the Domain Name.

The Panel notes that the same Respondent has registered several more misspelling domain names confusingly similar to the ARNOLD CLARK trademark, including <arnoldcalrk.com> (Arnold Clark Automobiles Limited v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-1034), and <arnildclark.com> (Arnold Clark Automobiles Limited v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-1809). This indicates that the Respondent is intentionally targeting on the Complainant and strongly supports the findings that the Respondent registered and is using the Domain Name in bad faith.

The display of pay-per-click advertising in association with the Domain Name is sufficient on its own for a finding of registration and use in bad faith, regardless of whether it was directly placed by the Respondent or not. The Respondent is using a typographical variant of the Complainant’s trademark to misdirect Internet users to websites of third parties or even competitors of the Complainant, which evidences the Respondent’s bad faith in using the Domain Name.

The Domain Name is listed for sale, which is a further indicative that the Respondent had a bad faith intent when registering and using the Domain Name which is confusingly similar to the Complainant’s distinctive trademark.

The Panel therefore finds that the Domain Name has been registered and is being used in bad faith and that paragraph 4(a)(iii) of the Policy is satisfied.

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 <arnoldclsrk.com> be transferred to the Complainant.

Linda Chang
Sole Panelist
Date: September 13, 2019