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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Which? Limited v. Whichcar.com c/o Whois Identity Shield / Vertical Axis, Inc

Case No. D2008-1637

1. The Parties

Complainant is Which? Limited, of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Wedlake Bell, of United Kingdom.

Respondent is <whichcar.com> c/o Whois Identity Shield / Vertical Axis, Inc; <whichcar.com> c/o Whois Identity Shield, of Vancouver, Canada; Vertical Axis, Inc, of Christ Church, Barbados, represented by ESQwire.com Law Firm, United States of America.

2. The Domain Name and Registrar

The disputed domain name <whichcar.com> is registered with Nameview, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2008. On October 29, 2008, the Center transmitted by email to Nameview, Inc. a request for registrar verification in connection with the disputed domain name. On October 31, 2008, Nameview, Inc. 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 November 4, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 7, 2008. 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced November 14, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response December 4, 2008. The Response was filed with the Center on December 4, 2008.

The Center appointed Ross Carson, David H. Tatham and David E. Sorkin as panelists in this matter on January 12, 2009. The Panel finds that it was properly constituted. Each member of 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

Complainant was established in 1957 as a body known as “The Consumers’ Association”. In that year, it launched the magazine called WHICH?. The purpose of WHICH? magazine was to provide a publication that could be used to promote consumer interests in the United Kingdom. Through the magazine Complainant aims to provide impartial information and advice to consumers about a whole range of products and services. The magazine achieved rapid success and within just two years from its launch the circulation of WHICH? magazine in the United Kingdom had reached over 150,000. Complainant now has a total circulation of almost 500,000 for WHICH?.

In January 1962, Complainant launched a supplement to WHICH? magazine that dealt specifically with cars. Within 3 years the car supplement had become so successful that in 1965 it became a separate publication under the name Motoring WHICH?. In 1999, Complainant changed the name of its car publication to Which? Car.

Over the years, Complainant continued to add other publications to the WHICH? stable of magazines including such titles as Holiday WHICH? (1974-present), Gardening WHICH? (1982-present), WHICH? Money (1968–1982 and 2007 present) and Computing WHICH? (2001–present) in addition to Which? Car as described above.

In 1996 Complainant launched WHICH? Online at “www.which.co.uk” and “www.which.com”, and has since grown its Internet presence to become one of the most visited websites in the UK. Complainant’s website allows access to a certain amount of non-subscriber content (i.e. non Which? members can view some of the Complainant’s material online). There are now almost 200,000 subscribers to Complainant’s online services and many more visitors who are not subscribers.

First published in 1999, Complainant’s WHICH? Car magazine is a standalone publication that contains articles and information about the motoring world, including news on various models of car, information on “best buys” for different categories of car and accessories (such as satellite navigation systems and child seats), articles on safety and reliability testing as well as tips and advice on buying and selling used cars. Historically, the WHICH? Car magazine has been provided to WHICH? Magazine subscribers as a supplementary product. The content of the WHICH? Car magazine has been available online on Complainant’s website since 1996. Which? Car is now also sold and distributed in the UK via supermarkets.

Complainant has obtained registrations for a number of trade marks in both the United Kingdom and European Community. In total Complainant has 44 registrations, with 33 of those incorporating the word “which”. Complainant’s portfolio of trademark registrations include:

WHICH? CAR, UK TM Number No. 2001465, filed on November 9, 1994 for goods in Class 16 for “Printed matter, books, periodicals, articles, directories, pamphlets and lists; all concerning the characteristics, quality and prices of goods and services offered to the public; all relating to cars and goods and services relating to motoring”.

WHICH? CAR, UK TM Number 2445085, filed on January 30, 2007 for services in Class 41 for “Provision of online electronic publications relating to motor cars”.

MOTORING WHICH, UK TM Number 973214, filed on April 1 1971 in relation to goods in Class 16.

WHICH? UK TM Number 1514159 filed September 25, 1992 in relation to goods in Class 9.

WHICH? UK TM Number 1514163 filed September 25, 1992 in relation to goods in Class 16.

5. Parties’ Contentions

A. Complainant

A.1 Identical or Confusingly Similar

Complainant states that it is the owner of trade mark registrations for the mark WHICH? CAR in the UK as set forth in paragraph 4 immediately above. Complainant has a well established goodwill and reputation by reference to its trademarks for or including WHICH? based on more than 50 years use in the UK. Complainant submits that the domain name <whichcar.com> is identical to and/or confusingly similar to Complainant’s WHICH? CAR trademark.

Complainant submits that it is well established that the top level suffix “.com” does not affect a domain name for the purposes of determining whether it is identical or confusingly similar to a trade mark. See Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case No. D2000-0127.

A.2 No Rights or Legitimate Interests in respect of the Domain Name

Complainant submits that Respondent has no rights or legitimate interests in respect of the disputed domain name. As already described above, the WHICH? CAR mark had been in use by Complainant for around 3 years prior to the registration of the disputed domain name <whichcar.com> by Respondent in February 2002.

Complainant further submits that the majority of Complainant’s other trade marks, including those containing the word “which”, were registered long before (in some cases, decades before) Respondent registered the disputed domain name. In all the circumstances, Respondent cannot have acquired any prior rights to the name “Which? Car” in priority to those of Complainant.

Complainant states that Respondent has no connection with Complainant or any company licensed by Complainant. Complainant further submits that Respondent is not commonly known by the disputed domain name.

Complainant further submits that Respondent neither has, nor has it ever had, any rights of any kind to use Complainant’s trade or service marks (whether registered or otherwise) including the WHICH ? CAR mark in any capacity or for any purpose anywhere in the world.

Complainant states that Respondent was not and is not authorized by Complainant to register, hold or use the disputed domain name.

Complainant states that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name but is using the disputed domain name in bad fad faith so as to confuse Internet users to obtain pay-per-click income.

A.3 Registration in Bad Faith

Complainant states that the WHICH and WHICH? CAR marks have been in continuous use by Complainant in the UK since 1963 and 1999 respectively. By the date of Respondent’s registration of <whichcar.com> (February 2002) Complainant’s business was well known to Respondent. This is demonstrated by the content of the Respondent’s website associated with the disputed domain name and the extensive use of the word “Which”, in particular with a capital “W”, on the website.

Complainant further submits that Respondent has sought to conceal its true identity and address when registering the disputed domain name through its use of the WHOIS Identity Shield service. Complainant thus invites the Panel to draw an adverse inference that Respondent’s registration of the disputed domain name was made in bad faith. If Respondent genuinely intended to register and use the disputed domain name in connection with a bona fide offering of goods and services, Complainant considers that it would have no reason or cause to hide its identity or contact details in this manner.

A.4 Use In Bad Faith

Complainant states that Respondent has registered and is using the disputed domain name <whichcar.com> by linking it to the website “www.whichcar.com”. The home page of the website is headed with the name <whichcar.com> and is accompanied by the strap line: “get results every time.” On the left hand side of the home page, there are displayed a number of categories headed “Related Searches”, such as “Buy a car”, “Used car prices” and “Compare cars”. These categories when clicked display a number of sponsored pages and links, to a variety of third party websites, including: “www.confused.com”, “www.directline.com”, “www.ecarinsurance.co.uk” and “www.getcover.co.uk”. Many of these sites relate to businesses selling to UK consumers. Respondent is clearly exploiting the goodwill and reputation of Complainant in its home market. Respondent’s is not a site that is directing itself to a market in which Complainant has no rights.

Complainant further states that when Complainant’s solicitors first wrote to the Respondent in September 2006, Respondent’s website associated with the disputed domain name included links to “Which Car Buyers Guide”, “Which Car Road Tests”, “Which Car” and “Which Car UK”. Respondent also included the word “Which” (with a capital “W”) in a number of phrases, for example, the strapline: “For resources and information on Which Car and Used car prices”. This strapline was present on the website prior to September 2006. Since that date, many of the above references have been removed (Complainant suspects that this was done as a direct result of the cease and desist letter sent by its solicitors on September 14, 2006). However, the very fact that this material ever featured on the website associated with the disputed domain name demonstrates use in bad faith on the part of Respondent. As at the date of the submission of the amended Complaint, Complainant asserts that the website was still headed up by the phrase “whichcar.com” and contained many references that included “which”.

Complainant further states that Respondent’s website has changed on numerous occasions. For example, in September 2008, the website associated with the disputed domain name, although still headed up <whichcar.com>, contained the strap line: “For ads on Used car prices and Used car”. The third party links as featured and displayed on the website remain the same as those on the site as at the date of the amended Complaint as described above.

Complainant submits that use of Complainant’s mark by Respondent in the manner above creates a likelihood of confusion with Complainant’s mark and suggests that Respondent’s website has an association with Complainant. This is compounded by the fact that the Respondent is using the website associated with the disputed domain name to display numerous third party links to websites that could be mistakenly considered by Internet users to be connected to Complainant.

Complainant submits that Respondent is using the disputed domain name to intentionally attract for commercial gain, Internet users to Respondent’s website or other online location by creating a likelihood of confusion with Complainant’s mark (paragraph 4(b)(iv) of the Policy). Such exploitation of the reputation of trademarks to obtain click-through commissions on sponsored links is a common example of use of a domain name in bad faith.

B. Respondent

Respondent filed a Declaration of a manager of Respondent. The manager declares the contents to be true and is proffered under penalty of law for making false statements. The manager stated that his testimony is based on his own personal knowledge. The manager declared as follows:

“We registered the Disputed Domain on February 20, 2002 because it was a descriptive term to which we believed no party could claim exclusive rights. We registered the Disputed Domain when it was deleted and expired due to the prior registrant’s failure to renew it. We did not register the Disputed Domain with Complainant’s trademark in mind and had no knowledge of Complainant, its web site, its business name or trademark when we registered the domain name. We did not register the Disputed Domain with the intent to sell to Complainant, to disrupt Complainant’s business, or to confuse consumers seeking to find Complainant’s web site. We did not register the Disputed Domain to prevent Complainant from owning a domain name incorporating its trademark.”

The Declaration also included a list of about thirty other domain names registered by Respondent incorporating “car” as part of the domain name.

The manager also declared:

“We host the Disputed Domain with HitFarm.com a domain parking service which displays pay-per-click advertising links on hosted domain names. HitFarm.com’s automated technology generates links based upon contextual meaning of the terms and words contained in the domain name, which in this case are �which’ and �car.’ The appearance of these links has nothing to do with Complainant’s mark but, rather, solely result from HitFarm.com’s software technology. These links include �used car prices;’ �used car for sale;’ �compare cars;’ and �fuel economy cars.’”

The manager further explained HitFarm.com’s software technology for headers, declaring:

“It is true that links including the word “which” appeared on our site in September 2006. They were auto-generated. After we received a cease and desist letter from Respondent in September 2006, we arranged for the system to override the software program and avoid links that included the word “which.” We did this as an accommodation to Complainant in an attempt to avoid a dispute.”

B.1 Identical or Confusingly Similar

Respondent submits that Complainant’s trademark for WHICH? CAR does not provide enforceable trademark rights to the term “Which Car”. Complainant does not have a registered trademark for the term “Which Car” To the contrary; Complainant’s mark incorporates Complainant’s distinctive “?” symbol after the word Which (as it does in its parent mark WHICH?), followed by the word “car.” With the inclusion of the “?” symbol, Complainant’s mark is akin to a design mark and the following applies by analogy. Under the Policy, ownership of a design plus words mark “does not entitle the owner of the mark to prevent use of those words by others in commerce accurately and descriptively in accordance with the primary meaning in the English language. Weil Lifestyle, LLC v. Vertical Axis, Inc c/o Domain Administrator, NAF Claim No. 926455 (complainant’s U.S. registered mark for VITAMIN ADVISOR “applie[d] only to a design plus word mark and not to a word mark alone.”

The “?” symbol in Complainant’s mark is a “small difference” which distinguishes the mark from the disputed domain name.

Respondent further submits that where a trademark incorporates a descriptive term, as in the present case, minor differences are sufficient to eliminate a finding of confusing similarity. In Tire Discounters, Inc. v. TireDiscounter.com, NAF Claim No. 679485, the complainant’s mark TIRE DISCOUNTERS differed by only one letter from the disputed domain name <tirediscounter.com>. Because the complainant’s mark was descriptive, the mark was deemed to be not confusingly similar to the domain. In dismissing the Complaint, the full 3-member panel stated:

“Because the mark is merely descriptive, small differences matter. In the Internet context, consumers are aware that domain names for different websites are often quite similar and that small differences matter. See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147 (9^th Cir. 2002). The omission of the letter “s” from the mark is one of those small differences that matters in this context.”

See also Webvan Group, Inc. v. Stan Atwood, WIPO Case No. D2000-1512, (“[W]hen the mark is a relatively weak, non-distinctive term, courts have found that the scope of protection may be limited to the identical term and that the addition of other descriptive matter may avoid confusion”).

Respondent further states that there can be no doubt that the term “Which? Car” is descriptive for Complainant’s service related to car information. Accordingly, Complainant’s mark is very weak and entitled to very limited protection. Obviously, the domain name <whichcar.com> is not identical to Complainant’s mark. Nor are the two confusingly similar. Complainant’s distinctive “?” symbol, absent in the disputed domain name, is a significant “difference that matters,” and it is sufficient to find that the disputed domain name is not confusingly similar to Complainant’s mark. Complainant’s main mark is WHICH? and Complainant’s brand is closely associated with the ? as seen on its web page appearing as follows:

Without that question mark, consumers would not associate the common word “which” solely with Complainant. Nor would consumers associate <whichcar.com> with Complainant if the question mark were absent.

B.2 Rights or Legitimate Interests in respect of the Domain Names

Respondent submits that “which car” is a common descriptive term, as in “which car is the best”. The registration of domain names containing descriptive terms subject to third party use ipso facto establishes the Respondent’s legitimate interest. Energy Source Inc. v. Your Energy Source, NAF Claim No. 96364, (“[r]espondent has persuasively shown that the domain name is comprised of generic and/or descriptive terms, and, in any event, is not exclusively associated with [c]omplainant’s business”); Car Toys, Inc. v. Informa Unlimited, Inc., NAF Claim No. 93682, (Respondent “has demonstrated that the name is in use elsewhere”); CanadaDrugs.com Partnership carrying on business as CanadaDrugs.com v. ASM Bioventure, NAF Claim No. 568743, (large number of competing businesses using variation of terms); Norm Thompson Outfitters Inc v. Russell Moran Jr. d/b/a Moran Publishing Company Inc d/b/a The Boating Information Bureau Ltd., NAF Claim No. 102179 (extensive third party use evidenced by Google search).

Respondent further submits that there can be no doubt that Complainant’s mark is descriptive. The 1.9 million third-party uses of the term “which car” is compelling evidence of the term’s descriptiveness. The Panel should, therefore, conclude that Respondent has a legitimate interest in the disputed domain name.

Respondent states that strong corroboration of the fact that Respondent registers domain names solely because they incorporate common words or descriptive terms are the numerous other domain names it has registered which incorporate the common word “car,” such as: <buyandsellcards.com>; <buyandsellusedcar.com>; <buycar.net>; <buycaraudioonline.com>; <buycaronline.com>; and <buycheapcars.com>. Nothing in this list gives cause to infer that Respondent registers domain names based on trademarks. The fact that Complainant has a trademark for the descriptive term “which? car” is simply a coincidence.

Respondent states that there are also strong policy reasons for finding Respondent has a legitimate interest in using a descriptive domain name. It is inappropriate as a matter of public policy to give trademark owners monopolies on domain names incorporating descriptive terms, because all sellers need to be able to describe their goods and services online. See e.g. EAuto, L.L.C. v. EAuto Parts, WIPO Case No. D2000-0096.

Respondent further states that its legitimate interest is bolstered by the fact that it uses the disputed domain name to post advertising links. In Williams, Babbitt & Weisman, Inc. v. Ultimate Search, NAF Claim No. 98813, respondent had registered numerous generic and common words to generate advertising revenue. In finding a legitimate interest, the panel noted that “[n]either the current UDRP nor current ICAAN registrar contracts preclude this type of domain name use”. See also Roderick W. Accetta v. Domain Admin c/o Covanta Corporation, NAF Claim No. 826565, (use of “domain name to operate a pay-per-click search engine is a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)”).

Respondent states that other panels have also expressly recognized the bona fide nature of this Respondent’s pay-per-click use of domain names. See Alexis C. Le Hara v. Vertical Axis, Inc c/o Domain Administrator, NAF Claim No. 1225832. Finding that Respondent’s “business has been held legitimate on more than once occasion,” the panel cited the following cases as examples: Super Supplements, Inc. v. Vertical Axis, Inc, WIPO Case No. D2008-0244; Jet Marques v. Vertical Axis, Inc, WIPO Case No. D2006-0250. See also Nursefinders, Inc. v. Vertical Axis, Inc / NURSEFINDER.COM c/o Whois IDentity Shield, WIPO Case No. D2007-0417. (“Respondent has a regular business practice of registering expired domain names that are based on descriptive words and phrases”).

B.3 Registered In Bad Faith

Respondent states that there is no evidence of bad faith registration or use. Respondent had absolutely no knowledge of Complainant’s alleged mark when it registered the disputed domain name. Respondent simply registered the disputed domain name because it incorporated a common descriptive term and because it became available when the prior registrant failed to renew it. This is not a case of a respondent looking to a list of trademarks to prey upon. To the contrary, Respondent has simply registered domain names that became available due to deletion, taking care to register domain names that incorporate only common words and descriptive terms. Registration of domain names in this manner not only fails to support a finding of bad faith registration, it negates such a finding. The expiration of a domain name is a signal that any trademark claim to the domain name was abandoned and that the domain name could be registered in good faith. Corbis Corporation v. Zest, NAF Claim No. 98441. The three-member panel there stated:

“The Panel holds that a domain registrant who knows a domain name has been abandoned should be more confident, not less so, that there is no competing trademark claim relating to the domain name; a person in the position of Respondent should be more confident than a registrant who selects a previously unregistered name.”

The three-member panel in CB Publishing, LLC v. Akway International Ltd c/o Hostmaster, NAF Claim No. 926506 went farther in its statement. (“where a party registers a lapsed domain name, and it is not attempting to use the name to compete with the mark holder or disrupt its business, we believe that ordinarily the trademark holder should be denied relief, whether the mark is a common law or a registered mark, whether the mark is �strong’ or �weak.’”)

Respondent further states that, as noted above, panels have recognized the legitimacy of Respondent’s practice of registering deleted common word domain names, along with the absence of bad faith registration or use. E.g. Bright Horizons Family Solutions Inc., Allmont Limited, Bright Horizons Limited Partnership and Bright Horizons Family Solutions Ltd. v. Vertical Axis, Inc, WIPO Case No. D2007-0795, ( “The Respondent’s record in domain name disputes […] does not establish that the Domain Name in this case was registered in bad faith.”); Nursefinder, Inc. v. Vertical Axis, Inc., supra.

Respondent states that there is no evidence that Respondent even had knowledge of Complainant’s mark when it registered the disputed domain. Absent such evidence, bad faith certainly cannot be proven. Futureworld Consultancy (Pty) Limited v. Online advice, WIPO Case No. D2003-0297, (“there is no evidence to show that the disputed domain name was registered with the Complainant in mind”); Kis v. Anything.com Ltd., WIPO Case No. D2000-0770. (“[T|here are no indications that Respondent knew of Complainant or its trademark when registering the Domain Name”). The substantial third-party use of the mark certainly lends credence to the fact that Respondent did not have Complainant’s mark in mind when it registered the domain. See Trader Publishing Company v. DB Palmer Associates, WIPO Case No. D2001-1490 (“wide third-party use of the AUTO MART mark, as well as the descriptive nature of the registered marks, negates the likelihood that Respondent was aware of Complainant’s registered marks.”)

Respondent further submits that Complainant claims that Respondent’s website displayed PPC links related to the word “which” along with the word “car” in September 2006, which were removed after it sent a cease and desist letter to Respondent. While Respondent had a right to post links related to the descriptive term “which car,” as an accommodation to Complainant and in an attempt to avoid a dispute, Respondent arranged to override HitFarm’s software to avoid such links. Even if the links ― despite being automated and unintentional ― are deemed a bad faith use, however, there certainly is no evidence that Respondent registered the disputed domain name with Complainant’s trademark in mind, a requisite element to prove bad faith registration under the Policy. Any links that appeared on the site were auto-generated and appeared long after registration in 2002, the earliest evidence being in 2006. The appearance of the website in 2006, long after the disputed domain name was registered, is irrelevant in determining Respondent’s mindset in 2002 when it registered the disputed domain name. See Intuit Inc. v. Nett Corp, WIPO Case No. D2005-1206. (“The earliest evidence that could possibly amount to bad faith use is so long after registration that it cannot outweigh the evidence tending to show good faith registration”). See also Passion Group Inc. v. Usearch, Inc., eResolution Case AF-0250; followed in Viz Communications, Inc., v. Redsun dba www.animerica.com and David Penava, WIPO Case No. D2000-0905; Yoomedia Dating Limited v. Cynthia Newcomer /Dateline BBS, WIPO Case No. D2004-1085; The Motley Fool Inc. v. Domain Works, Inc, WIPO Case No. D2006-1625 (“intentions at time of registration must be mala fide”). In any event, the website change was not a bad faith act.

B.4 Used In Bad Faith

Respondent states that “Which car” is a common descriptive term as in “which car is best?” Absent direct proof that a common-term domain name was registered solely for the purpose of profiting from Complainant’s trademark rights, there can be no finding of bad faith registration and use. Ultrafem Inc. v. Warren R. Royal, NAF Claim No. 97682; (“Complainant cannot assert an exclusive right over a domain name that is a common, generic term.”). See also Canadadrugs.com Partnership carrying on business as CanadaDrugs.com v. ASM Bioventure, supra (“Respondent did not register the <canadadrugsonline.com> domain name in bad faith because Complainant’s mark is comprised of common terms.”).

Respondent further states that the change made by Respondent more than two years ago was not done in bad faith, and does not constitute evidence that the web site as it appeared in 2006 constituted a bad faith use. As noted, the change was done as an accommodation in an attempt to avoid a dispute. Such a response to a cease and desist letter does not constitute bad faith. In Mariah Media Inc. v. First Place® Internet Inc., WIPO Case No. D2006-1275, respondent changed its web site following receipt of a cease and desist letter. The panel did “not construe […] as an admission of bad faith,” seeing it “as a rational effort to avoid a costly dispute.” As noted above, because the titles on Respondent’s web site (referred to as “straplines” by Complainant) are dynamically generated based on the top two auto-generated PPC links, the titles would have automatically changed when the links were changed. There simply was no intent to hide any bad faith use, because there was no bad faith use, and there is no evidence of bad faith registration, either.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant was established in 1957 as a body known as “The Consumers’ Association”. In that year, it launched the magazine called WHICH?. The purpose of WHICH? magazine was to provide a publication that could be used to promote consumer interests in the UK. The magazine achieved rapid success and within just two years from its launch the circulation of WHICH? magazine in the UK had reached over 150,000. Complainant now has a total circulation of almost 500,000 for WHICH?. Complainant is the owner and user of WHICH?, UK TM No. 1514159 filed on September 25, 1992 in relation to goods in Class 9 and WHICH?, UK TM No. 1514163 filed on September 25, 1992 in relation to goods in Class 16.

First published in 1999, Complainant’s WHICH? Car magazine is a standalone publication that contains articles and information about cars accessories, safety, etc. (as more fully set forth in paragraph 4 above). The WHICH? Car magazine has been provided to WHICH? magazine subscribers as a supplementary product. Complainant is the owner and user of WHICH? CAR , UK TM No. 2001465, filed on November 9, 1994 for goods and services in Class 16 for “Printed matter, books, periodicals, articles, directories, pamphlets and lists; all concerning the characteristics, quality and prices of goods and services offered to the public; all relating to cars and goods and services relating to motoring”. Complainant is also the owner the trademark MOTORING WHICH , UK TM No. 973214, filed on April 1, 1971 in relation to goods in Class 16, used in association with a publication relating to motoring and cars between 1965 and 1999 when the name of the publication was changed to WHICH? CARS.

The disputed domain name was registered on February 20, 2002.

The Panel finds that Complainant’s trademark registration for the trademark WHICH? CAR in the UK and Complainant’s substantial use of the trademark WHICH? CAR for 10 years in the UK establish Complainant’s trademark rights for the purpose of paragraph 4(a)(i) of the Policy.

The disputed domain name <whichcar.com> differs from Complainant’s trademark by the absence of the question mark and the addition of the top level domain “.com”. The disputed domain name is comprised of the two words “which” and “car”, which comprise the words in Complainant’s trademark. The words “whichcar” in the disputed domain name are interlocutory in nature and the absence of the question mark found in Complainant’s trademark is not sufficient to overcome confusing similarity of the disputed domain name with Complainant’s trademark. See The Ritz Carlton Hotel Company, LLC v. Club Car Executive Transportation and Denis Rooney, WIPO Case No. D2000-0611 (holding that removing a hyphen in the domain names is not sufficient to differentiate the domain names from the mark); Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case No. D2000-0127, (“the addition of the generic top-level domain (gTLD) name “.com” is likewise without legal significance since use of a gTLD is required of domain name registrants”).

Respondent contends that Complainant’s trademark which includes a question mark is akin to a design mark. Respondent submits that under the Policy, ownership of a design plus word mark “does not entitle the owner of the mark to prevent use of those words by others in commerce accurately and descriptively in accordance with the primary meaning in the English language.” Weil Lifestyle, LLC v. Vertical Axis, Inc c/o Domain Administrator, NAF Claim No. 926455. A review of the decision discloses that the USPTO had granted the Complainant a trademark in which Complainant disclaimed rights to the terms VITAMIN and ADVISOR apart from the stylized drawings. The panel stated “Complainant’s USPTO registration explicitly limits Complainant’s use of the terms VITAMIN and ADVISOR to the context of the stylized drawings based on the disclaimer included in the registration.” Complainant’s trademark in this case is not a stylized mark, was not granted subject to a disclaimer and Complainant is entitled to the trademark as granted by the UK trademark authorities.

Respondent contends that the term “Which? Car” is descriptive of Complainant’s service related to car information. Respondent contends that accordingly, Complainant’s mark is very weak and entitled to very limited protection. The Panel is of the view that the issue under paragraph 4(a)(i) of the Policy is to determine if the disputed domain name is identical to or confusingly similar to Complainant’s trademark. See Vance International, Inc. v. Jason Abend, NAF Claim No. 970871 finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy paragraph 4(a)(i).

The Panel finds that the disputed domain name <whichcar.com> is confusingly similar to Complainant’s trademark WHICH? CAR.

B. Rights or Legitimate Interests

Under the Policy, Complainant has the burden to establish that Respondent has no rights or legitimate interests in the disputed domain name. Nevertheless, it is well-settled that Complainant need only make out a prima facie case, after which the onus shifts to Respondent to demonstrate rights or legitimate interests. See AOL LLC v. Jordan Gerberg, NAF Claim No. 780200; See also Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624.

Complainant’s trademark WHICH? CAR was registered in the UK on November 9, 1994, more than 13 years prior to registration of the disputed domain name on February 20, 2002.

Complainant contended and Respondent did not dispute that: (1) Respondent has no connection with Complainant or any company licensed by Complainant; (2) Respondent is not commonly known by the disputed domain name; (3) Respondent was not and is not authorized by Complainant to register, hold or use the disputed domain name.

Respondent contends that it has a legitimate interest in the disputed domain name because the term “which car” is a descriptive term that anyone is entitled to use if such use is without intent to profit from the trademark rights of another. Respondent argues that the descriptive nature of the term “which car” is underscored by substantial third-party use evidenced by 1.9 million third party Google results including the phrase “which car.” Complainant contends that Respondent’s web pages, associated with the disputed domain name, disclose use of the disputed domain name as a trademark and not in a descriptive manner, and secondly, that links shown on Respondent’s web pages associated with the disputed domain name relate to businesses in the UK, providing goods or services related to goods and services associated with Complainant’s trademarks.

Complainant has made out a prima facie case the Respondent does not have any rights or legitimate interests in the disputed domain name. Complainant shows in Annex 17 to the Complaint, referred to in paragraph 35 of the Complaint, that the home page associated with the disputed domain name on September 14, 2006 included links to “Which Car”, Which Car Buyers Guide”, “Which Car Road Tests”, and “Which Car UK.” The words “Which Car” are also capitalized in the line immediately below the header “Welcome to <whichcar.com> as follows; “For resources and information on Which Car and Used car prices.” When “car” or “cars” is not used in association with “Which” on the home page it is not capitalized.

The use of “Which Car” with the letters “W” and “C” capitalized on Respondent’s home page of September 14, 2006 supports an inference of a connection between the home page and the wares and services provided Complainant in association with its WHICH? CAR trademarks. The capitalization of the words “Which” and “Car” do not support a finding of descriptive use of the words “which car.”

Respondent deleted some of the links on the home pages associated with the disputed domain name following receipt of a cease and desist letter from the solicitors for Complainant on September 14, 2006. An amended home page is shown as Annex 16 to the Complaint. The amended home page includes a number of links appearing under the heading “Related Searches.” Links such as “Buy a car”, “Used car prices” and “Compare Cars” include links in the UK involving businesses selling to UK consumers.

Included as part of paragraph 2 of Exhibit 2, filed by Respondent, is a Declaration of a manager for Respondent, which includes a list of domain names registered by Respondent which include the word “car”. There is no evidence filed by Respondent of domain names registered by Respondent that include the term “which”. The word WHICH has been used as part of a trademark by Complainant for over 50 years in relation to consumer advice in relation to goods and services including cars. Complainant’s registered trademarks WHICH and WHICH? CAR are widely known trademarks in the UK.

Respondent filed a Declaration in which a manager for Vertical Axis stated: “We registered the Disputed Domain because it was a descriptive term to which we believed no party could claim exclusive rights”. Secondly, the Declarant stated that: “We did not register the Disputed Domain […] to confuse consumers seeking to find Complainant’s website”. Having regard to the evidence above, that Respondent is using the disputed domain name in a trademark as opposed to in a descriptive fashion in many instances, the credibility of Respondent’s evidence is weak.

Respondent, in its evidence stated, that the links related to Complainant’s “Which Cars”, marks on Respondent’s webpages associated with the disputed domain name, were auto-generated by Hit Farm.com, a domain parking service with whom Respondent hosts the disputed domain name. Respondent is responsible for the actions of its agents or associates. The effect of Respondent’s conduct is a free ride on Complainant’s goodwill. Respondent did not file copies of any webpages associated with the disputed domain name prior to September, 2006 disclosing a bona fide descriptive use of the term “which car”.

The Panel finds that the webpages associated with the disputed domain name do not support a finding of a bona fide use of the disputed domain name.

In E-Switch, Inc. v. Vertical Axis, Inc. c/o Domain Administrator, NAF Claim No. 1163985, Respondent first associated the domain name <eswitch.com> with PPC links related to switches. After Respondent received a cease and desist letter complaining about use of the domain name <eswitch> in a manner which was confusing with the Complainant’s trademark E-SWITCH before the dispute was initiated, Respondent altered its website to contain information about witches. Respondent submitted that it did not change the home page because it had acted in bad faith but rather as an accommodation in an attempt to avoid a legal dispute.

A majority of this Panel agrees with the reasoning of the panel in the E-Switch, Inc. case, supra where the majority of the panel stated: “The Panel finds that one or both of these uses is neither a bona fide offering of goods or services under Policy 4(c)(i) nor a legitimate noncommercial or fair use under Policy 4(c)(iii). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy (c)(iii); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb.Forum June 11, 2006) (finding that the Respondent’s use of a domain name to redirect Internet users to websites unrelated to a Complainant’s mark is not a bona fide use under Policy 4(c)(i)).”

The Panel finds that Complainant has proven that the Respondent does not have any rights or legitimate interests in the disputed domain name.

C. Registered in Bad Faith

Pursuant to paragraph 4(a)(iii) of the Policy, Complainant must prove that the disputed domain name has been registered and used in bad faith.

Complainant has established that it is the owner of the registered trademarks WHICH? and WHICH? CAR registered in the UK. The WHICH? trademark has been in use in the UK on a substantial scale in relation to consumer information publications on a wide variety of goods and services including cars for over 50 years. The WHICH? CAR trademark has been in substantial use in the UK since 1999 in relation to a publication relating to cars, car accessories and matters relating to cars. Complainant’s trademarks are widely known in the UK. Particulars of Complainant’s trademarks and distribution figures are more fully setout in paragraph 4 above.

The burden of proof is on Complainant to establish that the disputed domain name was registered in bad faith.

Complainant provided as attachments to the Complaint copies of web pages associated with the disputed domain name from September, 2006 which supported the finding immediately above that Respondent was using the term “Which Car” to attract Internet user familiar with Complainant’s trademarks WHICH? and WHICH? CAR to click on links associated with the disputed domain name to provide pay-per-click income to Respondent.

Complainant also provided as an attachment to the Complaint a copy of a Domain Tools Whois Record for <whichcar.com> dated October 17, 2008. The Whois record states that the domain name in dispute was created on February 20, 2002 and also stated that the Registrant of the domain name in dispute was <WHICHCAR.COM> c/o Whois IDentity Shield of Vancouver, Canada.

Subsequent to the filing of the original Complaint, in response to the Request for

Registrar Verification, the Registrar informed the Center that the Registrant Contact information for the disputed domain name is Vertical Axis, Inc., Domain Administrator, Christchurch, Barbados. The Center informed Complainant that the Registrar had informed the Center that Vertical Axis, Inc. was the Registrant of the disputed domain name.

Complainant contends that if Respondent genuinely intended to register and use the disputed domain name in connection with a bona fide offering of goods and services it would have no reason or cause to hide its identity or contact details.

The evidence surrounding the registration of the disputed domain name and the knowledge of the Respondent about the Complainant’s trademarks WHICH? and WHICH? CAR at the date of registration of the disputed domain name is within the power and control of Respondent. As shown above, when the Complainant visited the Respondent’s website in September of 2006, the home page associated with the website included links which included the words “WhichCar” used as a trademark as opposed to use in a descriptive or generic manner. Use of the Internet Archive Wayback Machine did not show any webpages associated with the disputed domain name as the webpages appear to have been subject to Robot Text Retrieval Exclusion. As the information relating to registration of the disputed domain name, prior to September 2006, appears to be exclusively within the power and control of Respondent, the Panel considers it appropriate to place the onus of production upon Respondent, and to infer absent evidence to the contrary that the disputed domain name was registered for purposes consistent with the manner in which it was being used in September 2006.

Respondent filed a Declaration of a manager, who stated that the testimony contained in the Declaration was based on his own personal knowledge. It is not clear if the Declarant is an officer of the company having access to company records. There is no evidence of when or in what jurisdiction the Respondent company is incorporated. In decisions over the past few years Respondent has given its location as Central Hong Kong, China, MBNA American Bank, N.A. v. Vertical Axis Inc., NAF Claim No.133632; Gyeonggi-do, Republic of Korea, HSM Argentina S.A. v. Vertical Axis, Inc, WIPO Case No. D2007-0017; or Barbados, Ustream.TV, Inc. V. Vertical Axis, Inc, WIPO Case No. D2008-0598. The Declaration filed by Respondent is not attested to by a Notary Public or person having authority to attest a Declaration as required in many jurisdictions. The Declarer states that; “We registered the Disputed Domain on February 20, 2002”. It is not clear if “we” is the company. It is not evident if the Declarer was employed by the Respondent Company on February 20, 2002. The Declarer states: “We registered the Disputed Domain on February 20, 2002 because it was a descriptive term to which we believed no party could claim exclusive rights.” The Declarer did not file any documentation concerning the previous owner or webpages used by the previous owner, if any, or any webpages showing use of the words “which car” in a descriptive manner that support Respondent’s conclusion that there was no trademark significance associated with the disputed domain name. The evidence submitted by Complainant in Annex 17 to the Complaint discloses use of the words “Which Car” on Respondent’s home page on September 14, 2006 in a trademark sense as opposed to use of the words “which car” in a descriptive or generic manner. The use of the words “Which Car” as seen on the webpages on September 14, 2006 is inconsistent with the statement that the domain name was comprised of descriptive terms, as Respondent did not use the words descriptively in many headings and related links.

Respondent is responsible for the presentation of the words “Which Car” on the webpages associated with the disputed domain name whether the website is prepared by Respondent or its agents. Respondent has failed to show any documentation concerning acquisition of the disputed domain name or file copies of webpages associated with the disputed domain name in use which support Respondent’s statement that it intended to use the words “which car” in a descriptive or generic manner. Further Respondent appears to have utilized Robot Text Retrieval Exclusion of actual webpages associated with the disputed domain name to prevent access to evidence that may be relevant in UDRP proceedings.

Respondent has failed to qualify the Declarant as a person employed with Respondent in 2002 or as an employee of Respondent having access to Respondent’s records relating to the disputed domain name at the date of registration of the disputed domain name. In the absence of any documentary support to substantiate Respondent’s registration of the disputed domain name in good faith at the date of registration, and in light of Complainant’s documentary support showing that the Respondent used the disputed domain name in bad faith in September 2006, the Panel infers that Respondent registered the disputed domain name in bad faith.

D. Used in Bad Faith

Based on the evidence of use of the disputed domain name in bad faith by Respondent as described above, the Panel finds that Respondent has intentionally attempted to attract for commercial gain Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s trademarks as to source, sponsorship, affiliation or endorsement of Respondent’s website or of the products and services referred to on Respondent’s website contrary to paragraph 4(b)(iv) 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 domain name <whichcar.com> be transferred to Complainant.

Dated: January 27, 2009