WIPO Arbitration and Medition Center

ADMINISTRATIVE PANEL DECISION

Arnold Clark Automobiles Limited v. Super Privacy Service LTD c/o Dynadot / Zhichao

Case No. D2020-1406

1. The Parties

Complainant is Arnold Clark Automobiles Limited, United Kingdom (“UK”), represented by Demys Limited, United Kingdom.

Respondent is Super Privacy Service LTD c/o Dynadot, United States of America (“United States”) / Zhichao, China.

2. The Domain Name and Registrar

The disputed domain name <arnoldclarkemployees.com> is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2020. On June 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 4, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 4, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 9, 2020.

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 Respondent of the Complaint, and the proceedings commenced on June 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 30, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 1, 2020.

The Center appointed Lorelei Ritchie as the sole panelist in this matter on July 7, 2020. 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

Based in Glasgow, UK, Complainant is among Europe’s largest independently owned, family-run car dealerships. Complainant operates over 200 new and used car dealerships throughout the UK, through which it sells over 250,000 vehicles per year, with resulting revenue of over GBP 3 billion. Complainant was created by its founder, Sir Arnold Clark, in 1954, and has since continuously operated under the mark ARNOLD CLARK. Complainant has several registered trademarks for its ARNOLD CLARK mark, including United Kingdom Registration No. 2300325 (Registered December 13, 2002) and United Kingdom Registration No. 2103334 (Registered April 4, 1997).

Complainant owns the registration for the domain name <arnoldclark.com>. Complainant uses the URL associated with this domain name to inform customers about automobiles sold under the ARNOLD CLARK mark, as well as related services. Complainant also owns the registration for the domain name <arnoldclarkemployee.com>, which is associated with a URL through which Complainant manages staffing and resources for its approximately 11,000 employees.

The disputed domain name <arnoldclarkemployees.com> was registered on March 6, 2020. Respondent has no affiliation with Complainant. Respondent has used the URL associated with the disputed domain name to a pay-per-click website which offers links to information regarding “employee benefits” as well as automobile and vehicle sales and rentals, which are goods and services that compete with those offered by Complainant under its ARNOLD CLARK mark. Complainant has not authorized any activities by Respondent, nor any use of its trademarks thereby.

5. Parties’ Contentions

A. Complainant

Complainant contends that the (i) disputed domain name is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.

In particular, Complainant contends that it has a well-known name and mark in the field of new and used car sales and related services, based on the name of its founder and its use since 1954. Complainant further contends that it has trademark registrations for its ARNOLD CLARK mark, as well as domain name registrations that incorporate the mark, including <arnoldclarkemployee.com>, which differs from the disputed domain name by only the added letter “s”. Complainant contends that Respondent has merely used the disputed domain name to set up a website meant to lure in employees or prospective employees of Complainant, likely in a “phishing” scheme. Complainant further contends that Respondent has no rights or legitimate interest in the disputed domain name registration or use of the disputed domain name. Rather, Complainant contends that Respondent has acted in bad faith in setting up a website, when Respondent clearly knew of Complainant’s rights.

B. Respondents

Respondents did not file a reply to Complainant’s contentions in this proceeding.

6. Discussion and Findings

A. Identical or Confusingly Similar

This Panel must first determine whether the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name directly incorporates Complainant’s long-standing and registered trademark, ARNOLD CLARK, and adds the term “employees”, which is very similar to the domain name <arnoldclarkemployee.com>, which is owned by Complainant, and which Complainant uses to manage staffing of its extensive network of employees online.

Numerous UDRP panels have agreed that supplementing or modifying a trademark with terms (whether descriptive, geographical, pejorative, meaningless, or otherwise), does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example:General Electric Company v. Recruiters,WIPO Case No. D2007-0584; Inter Ikea Systems B.V. v. Polanski,WIPO Case No. D2000-1614; Microsoft Corporation v. Step-Web, WIPO Case No. D2000-1500; CBS Broadcasting, Inc. v. Y2K Concepts Corp.,WIPO Case No. D2000-1065.

The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain name at issue in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “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 at issue”.

Respondents did not submit a reply to the Complaint, however. Rather, as mentioned in Section 4 of this Panel’s decision, Respondent has used the disputed domain name to divert Internet users to a pay-per-click (“PPC”) website advertising goods and services that compete with those offered by Complainant under its ARNOLD CLARK mark. Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interest in the disputed domain name, which Respondent has not rebutted.

C. Registered and Used in Bad Faith

There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [the] web site or location”. As noted in Section 4 of this Panel’s decision, Respondent has set up a URL associated with the disputed domain name to resolve to a PPC website which offers links to information regarding “employee benefits” as well as automobile and vehicle sales and rentals, which are goods and services that compete with those offered by Complainant under its ARNOLD CLARK mark.

Hence, Respondent is trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondent’s own commercial gain. In addition, the disputed domain name incorporates Complainant’s well-known ARNOLD CLARK mark, and is highly similar to the domain name affiliated with a website that Complainant uses to manages staffing and resources for its own employees. The Panel therefore finds strong evidence that Respondents registered and has used the disputed domain name with knowledge of Complainant’s prior rights in the distinctive ARNOLD CLARK mark. See Arnold Clark Automobiles Limited v. Iain Thomson,WIPO Case No. D2019-1033 (finding that Complainant has a “wide reputation”); Arnold Clark Automobiles Limited v. Ian Rodes,WIPO Case No. D2018-1473 (finding that Complainant has an “established mark”); Arnold Clark Automobiles Limited v. Carolina Rodrigues,WIPO Case No. D2019-1809 (finding that Complainant has a “distinctive trademark”). Complainant additionally contends that Respondent, using variations on its name, has engaged in a pattern of registering domain names in bad faith in accordance with paragraph 4(b)(ii). The Panel need not decide this, as there is sufficient evidence of Respondent’s bad faith such as to satisfy this factor.

Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith in accordance with 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 name <arnoldclarkemployees.com> be transferred.

Lorelei Ritchie
Sole Panelist
Dated: July 21, 2020