Reg Vardy Plc v. David Wilkinson

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Reg Vardy Plc v. David Wilkinson

Case No. D2001-0593

1. The Parties

The Complainant is Reg Vardy Plc of Houghton House, Wessington Way, Sunderland

SR5 3RJ, United Kingdom. The Complainant is represented by Messrs Eversheds

of Eversheds House, 70 Great Bridgewater Street, Manchester MI 5ES. The Respondent

who is an individual is a Mr. David Wilkinson of 105 Percy Street South, Blyth,

Northumberland NE24 3DE, United Kingdom. The Respondent is not represented and

has not filed a formal Response.

2. The Domain Names and Registrar

The dispute concerns three domain names as follows:

<reg-vardy.com>;

<reg-vardy.net>;

<reg-vardy.org>;

The Registrar of the domain names is Register.com, Domain Registrar 575 Eighth

Avenue, 11th Floor, New York, NY 10018, USA.

3. Procedural History

The Complaint together with the necessary fee was received by the WIPO Arbitration

and Mediation Center on March 24, 2001. An acknowledgement of receipt was sent

to the Complainant by e-mail on April 25, 2001. Notification of the Complaint

was given by e-mail to the Registrar on April 25, 2001. Verification was given

by the Registrar, Register.com, on April 25, 2001, confirming that the Respondent,

David Wilkinson, was the Registrant for the domain name <reg-vardy.com>,

but that an organisation called NameDemo.com was the Registrant for <reg-vardy.net>

and <reg-vardy.org>.

The Registrar subsequently confirmed that NameDemo.com was a division of Register.com

and that it offered one year licences for domain names selected by users of

NameDemo.com's services and that David Wilkinson, the Respondent, was named

as the NameDemo.com user. The Registrar also confirmed that in such circumstances

NameDemo.com would either cancel the domain name registrations or transfer the

domain name registrations to the Complainant's control as required under the

Policy. The fact that the Respondent is not formally the Registrant of <reg-vardy.net>

and <reg-vardy.org> does not go to the substantive issues before the Panel.

The Panel therefore proceeds on the basis that NameDemo.com will abide by the

decision of the Panel in relation to the dispute between the Complainant and

the Respondent.

Notification of the Complaint was given to the Respondent on May 16, 2001,

by e-mail as well as to NameDemo.com. No response was received from the Respondent

and accordingly notification of default was given on June 6, 2001. No response

was received and on June 19, 2001, an Administrative Panel was appointed consisting

of a sole Panelist, Mr. Clive Duncan Thorne. The Panel is required to forward

its Decision by July 3, 2001.

The Panel has subsequently received a copy of an e-mail from the Respondent

dated June 20 indicating:

"With all due respect to your organisation, I am afraid I will not take part

in the up coming dispute case...

... There is no point in my self continuing any discussion through your organisation

as Reg Vardy seem to treat you (sic) organisation with the same contempt as

they did my customer complaint."

4. Factual background

The Complainant adduces evidence that it is the third largest motor retailer

in the United Kingdom. It carries on business in the United Kingdom and its

principal place of business is Sunderland. It has been trading under the name

REG VARDY since 1946 and apparently now operates 81 car dealerships throughout

England and Scotland. It sells over 150,000 vehicles per year.

In the last financial year the Complainant's turnover was £3 billion, during

which period of time it spent around £1.5 million advertising and promoting

the name REG VARDY. The Complainant has its own website at www.regvardy.com.

Copies of extracts from the website are set out at tab 3 to the Complaint. This

website was launched at the beginning of 2001 and is still being developed.

It is however apparently attracting a substantial amount of hits with an average

of 30,000 page impressions per week. Since its launch the Complainant has sold

over 5,000 vehicles through direct leads from the site and generated around

£2 million worth of business. The Complainant estimates that its annual turnover

from direct leads from the website is currently anticipated to reach around

£10 million and this may increase significantly.

The Complainant is the registered owner of United Kingdom trademark "REG VARDY"

(registration number 2116104) in classes 36, 37 and 39.

According to the Complainant the history of this matter is that the Respondent

is a dissatisfied customer. On March 5, 2000, the Respondent lodged a Complaint

with the Complainant's Customer Services Department regarding a van which he

was purchasing. The Respondent collected the van but it was repossessed when

the Respondent's application for finance was rejected. Consequently no payment

has been made by the Respondent for the vehicle. The Respondent nevertheless

claimed that he had incurred considerable expense in modifying his premises

to accommodate the vehicle and he was seeking reimbursement for a sum of £3,000.

Even though the Respondent could not produce invoices to substantiate his claim

or any other documentary evidence, the Complainant offered to pay the Respondent

£3,000 for the modifications. This was apparently not accepted by the Respondent

and it appears that the Respondent remained dissatisfied.

Subsequently in around June 2000, the Complainant discovered that on or about

March 9, 2000, the Respondent had registered the disputed domain names

<reg-vardy.com>, <reg-vardy.org> and <reg-vardy.net>. Since

then the Complainant has attempted to negotiate with the Respondent to resolve

the dispute and seek the transfer of the disputed domain names.

Subsequently the Respondent has set up websites at the addresses which purport

to be the "Customer Driven Complaints Site". The three website addresses all

access the same site. Copies of pages from the websites are set out at tab 5

to the Complaint. It can be seen that the websites describe the fact that they

have been created by "an unhappy REG VARDY customer" and make reference to phrases

such as "shit-service at reg-vardy.com", "reg-vardysuck.com" and a "slag your

manager off" section.

There is also evidence (set out at tab 6 to the Complaint) that the Respondent

is using the Complainant's mark as metatags for the sites. A list of these is

set out at tab 6. The Complainant accepts the issue of the Respondent's use

of the Complainant's mark as metatags is outside the scope of the Complaint.

Nevertheless the Complainant regards the use as further evidence that the Respondent

is deliberately attempting to attract traffic seeking a Complainant to his sites

as a consequence of direct traffic away from the Complainant's website.

The Complainant exhibits correspondence with the Respondent beginning (tab

7) with a demand letter from Messrs. Eversheds sent to the Respondent on April

6, 2001 (although dated in error June 27, 2000). That letter sought a transfer

of the disputed domain names which was rejected in no uncertain terms by the

Respondent in an e-mail dated April 14, 2001.

For completeness the Panel also refers to the above-mentioned e-mail from the

Respondent dated June 20, 2001, referring to the Complaint that he has with

the Complainant and in which he denies the offer of settlement made by the Complainant

of £3,000. The repossession of the vehicle is described as untrue and he concludes

that he has been treated with "contempt" by REG VARDY. The Panel is not concerned

with the truth or otherwise of the customer complaint that the Respondent has

with the Complainant and is also not concerned with the attempts currently made

to resolve that Complaint. The customer complaint may however explain the action

taken by the Respondent in registering the domain names in dispute. The Panel

is required to decide the domain name dispute under the terms of the Uniform

Domain Name Dispute Resolution Policy and proceeds to do so.

5. Parties’ Contentions and Discussions

In order to succeed in its request for an Order to transfer the domain names

the Complainant has to prove that each of the three elements set out in paragraph

4(a) of the Uniform Domain Name Dispute Resolution Policy are present.

These are as follows:-

(i) 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 interest in respect of the

domain name; and

(iii) The Respondent’s domain name has been registered and is being used in

bad faith.

The Panel proceeds to deal with each of these in turn.

(i) The Respondents domain name is identical or confusingly similar to a

trademark or service mark in which the Complainant has rights.

The Complainant submits that the three domain names in dispute are identical

to the Complainant's registered mark save for the use of the hyphens between

"reg" and "vardy" in the domain name. It submits that the overall impression

of the dominant part of the disputed domain name is identical to the Complainant's

mark.

The Complainant goes on to submit that the Respondent's use of the disputed

domain names will inevitably cause confusion to the public and specifically

to those looking for information about the Complainant.

The Panel accepts these submissions. In particular, it considers that the use

of the hyphen is insufficient to distinguish the Complainant's trademark "REG

VARDY" and that almost inevitably members of the public are going to find the

domain names confusingly similar to the Complainant's trademark.

(ii) The Respondent has no rights or legitimate interest in respect of the

domain name.

The Complainant submits that the Respondent has no legitimate interest in the

disputed domain names and has not been authorised by the Complainant to register

and use the domain names in dispute.

In particular the Complainant relies upon paragraph 4(c)(i) of the UDRP and

submits that there is no bona fide offering of goods of services and that there

is no evidence that the Respondent is commonly known by the domain names or

is making fair use of the domain names. The Complainant asserts that the Respondent

is simply using the names to divert business intended for the Complainant and/or

Internet users seeking the Complainant's site to his site.

The Panel accepts these submissions. The Respondent has had ample opportunity,

for example, in response to the Eversheds letter of June 27, 2000 (sic) or by

way of Response to assert reasons justifying legitimate interests in respect

of the domain names. He has chosen not to do so. To the contrary the Respondent

has made it apparent that it regards the registrations as a vindictive opportunity

to "damage" the Complainant as a result of the customer dispute. In support

of this view the Panel relies in particular upon the Respondent's e-mail of

April 14, 2001, where the Respondent refers to exercising "renewed venom" and

the contents of the Respondent's website where he states:

"This site has been put together by an unhappy REG VARDY customer...I decided

that enough was enough and bought the domain name <reg-vardy.com>."

In the Panel's view this is a case where the Respondent has intentionally registered

the domain names because he is aware that he has "no rights or legitimate interests

in respect of the domain name" and has done so so as to harm the Complainant.

The Panel therefore finds that the Respondent has no rights or legitimate interests

in respect of the domain names.

(iii) The Respondent’s domain name has been registered and is being used

in bad faith.

The Complainant asserts that the Respondent has intentionally attempted to

attract Internet users to his websites by creating a likelihood of confusion

with the Complainant's mark as to the source, sponsorship, affiliation or endorsement

of the Respondent's website and services which the Respondent provides on its

site. The Complainant relies on paragraph 4(b)(iv) of the UDRP.

As evidence of this the Complainant relies upon the Respondent's deliberate

intention as evidenced by the use of the Complainant's mark on the Respondent's

website (see, for example, tab 11 to the Complaint) and in the metatags referred

to above.

The Complainant also relies upon paragraph 4(b)(iii) of the UDRP on the basis

that the Respondent has registered the disputed domain names primarily for the

purpose of disrupting the business of the Complainant. The Complainant draws

attention to the contents of the Respondent's website and also to the Respondents

e-mail of April 14, 2001, in which the prime motive of the Respondent

in registering the domain names was to create bad publicity for the Complainant.

In that e-mail the Respondent states:

"Feel free to take this matter to any court or governing body in the land.

I am sure that you have the capital reserves to ensure your victory rightly

or wrongly. I will however not make this matter easy for you, nor will you gaining

control of the said domain names silence me as this is obviously what REG VARDY

are trying to do.

I would ask you to recommend to your client to drop this matter before he

does his company more harm than good, I will seek to get this matter the highest

level of publicity and I have the right to freedom of speech which I will exercise

with renewed venom if this matter continues to a court conclusion."

The Panel finds that the Respondent's declared intention in its websites and

the contents of the e-mail of April 14, 2001, are sufficient evidence to show

that the Respondent intended to disrupt the Complainant's business.

The Panel takes account of the fact that paragraph 4(b)(iii) requires that

the registration of the domain names should be primarily for the purpose of

disrupting the business of a competitor. The Complainant is not a competitor

of the Respondent. Nevertheless, in all the circumstances the Panel finds that

the Respondent's registration of the domain names is primarily for the purpose

of disrupting the Complainant's business with the objective of causing harm

and nuisance to the Complainant. In the Panel's view this constitutes bad faith.

6. Decision and findings

The Complainant requests that the Panel issues a decision that the domain

names <reg-vardy.com>, <reg-vardy.net> and <reg-vardy.org>

be transferred to the Complainant. The Panel finds for the Complainant and orders

that the domain names <reg-vardy.com>, <reg-vardy.net> and <reg-vardy.org>

be transferred from the Respondent to the Complainant.

Clive Duncan Thorne

Sole Panelist

Dated: July 3, 2001