DECISION
Patrick Jaguar, LLC
d/b/a Patrick Jaguar v. Alex Bruzas
Claim Number:
FA0202000105182
PARTIES
The Complainant is Patrick Jaguar, LLC d/b/a
Patrick Jaguar, Naperville, IL (“Complainant”) represented by Martin
Stilwell, COO. The Respondent is Alex Bruzas, Elmhurst, IL (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <patrickjaguar.com>
registered with Network Solutions, Inc.
PANEL
The undersigned certifies that he has acted
independently and impartially and to the best of his knowledge, has no known
conflict in serving as Panelist in this proceeding.
Judge Richard B. Wickersham,
(Ret.) as Panelist
PROCEDURAL
HISTORY
Complainant submitted a Complaint to the
National Arbitration Forum (“the Forum”) on February 26, 2002 and was received
by the Forum that date.
On February 26, 2002, Network Solutions, Inc.
confirmed to the Forum that it was the Registrar of the domain name <patrickjaguar.com>,
that the Registrant of the same was Alex Bruzas, and the status of the domain
name registration was Active. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions
5.0 Registration Agreement and has thereby agreed to resolve domain-name
disputes brought by third parties in accordance with ICANN’S Uniform Domain Name Dispute Resolution
Policy (“the Policy”).
In accordance with Rules Paragraph 4(c), the
formal date of the commencement of the Administrative Proceeding is March 4,
2002.
Respondent was notified that within twenty
calendar days from the commencement date the Forum must receive a
Response and all exhibits according to the requirements that are described in
The Rules, Paragraph 5 and the Supplemental Rules. A timely Response was made by Respondent.
On April 1, 2002, pursuant to Complainant’s request to have the dispute decided by
a One Member Panel, the Forum appointed Judge Richard B. Wickersham, (Ret.), as
Panelist.
RELIEF
SOUGHT
The Complainant requests that the domain name be
transferred from the Respondent to the Complainant.
PARTIES’
CONTENTIONS
A.
Complainant
Complainant alleges that it is an Illinois
limited liability company, Patrick Jaguar, LLC, which does business under the
trade name Patrick Jaguar. Complainant
alleges that they are the only Jaguar dealership in the United States
authorized to use this name.
Complainant further alleges that the URL being used by this Registrant
is identical to the name registered with the State of Illinois and Complainant’s
registered trade name. Complainant
notes that the Registrant has no business with this name and “has bragged to
us” that he has made a nice living by registering other businesses’ trade
names and holding them for ransom.
Complainant further notes that the Registrant is a salesman for a
competing Jaguar dealership, Westlake Jaguar in Elmhurst, Illinois. Complainant alleges that “he heard
through Jaguar that Patrick Dealer Group was awarded the Jaguar franchise for
Naperville, Illinois, the market contiguous to the market of the dealership he
is employed by.” Complainant
alleges that Respondent has no business whatsoever, let alone a business with
anything close to the name Patrick Jaguar.
Complainant avers that Respondent registered the name “as soon as he
heard we were awarded the franchise with the idea that we would have to
purchase it from him.” Complainant
notes that Respondent makes no bona fide offering of goods or services
whatsoever, let alone in conjunction with the domain name. He has never been commercially known as “Patrick
Jaguar.” He is not making any
commercial, non-commercial or any other use of the domain name other than
preventing Complainant’s use of the name and trying to sell it to
Complainant.
B.
Respondent
Alex Bruzas provides a statement in his own
behalf, stating that he has been the owner of <patrickjaguar.com>
for “well over two years.” He
said he has never had a complaint from any outside party. He said he purchased the site with the
single intent being to generate revenue for him personally as a Jaguar salesman
in the Chicago market, providing customers with simple alternatives to
purchasing a jaguar automobile. He
said he believes that a Jaguar dealership named Patrick Jaguar opened in
Naperville a suburb of Chicago, February 1, 2002. Respondent notes that “the Patrick Auto Group may be licensed
to do business in the State of Illinois under the name Patrick Jaguar but that
is a name purchased after Respondent was the owner of patrickjaguar.com.” He states “simply put they missed
the boat in purchasing patrickjaguar.com, and that fact does not entitle them
to strip me of the site I have owned and operated for well over two years
without a drop of compensation.”
FINDINGS
Complainant is an authorized dealer in Jaguar
automobiles under the name Patrick Jaguar, LLC, d/b/a Patrick Jaguar. Respondent, on the other hand, is a
salesman for a competing Jaguar dealership and Respondent’s name is Alex
Bruzas. According to Whois, <patrickjaguar.com>
was created on 30, January 2000. The
Record was last updated on 12, February, 2002 and the Record expires on 30,
January 2004. Patrick Dealer Group was
awarded the Jaguar franchise for Naperville, Illinois, the market contiguous to
the market of the dealership where Alex Bruzas is employed. Complainant alleges that Respondent Alex
Bruzas “registered the name as soon as he heard we were awarded the
franchise with the idea that we would
have to purchase it from him.” It
is clear that Respondent Alex Bruzas makes no bona fide of goods or services
whatsoever, let alone in conjunction with the domain name. He has never been commonly known as “Patrick
Jaguar.” He is not making any commercial, non-commercial, or
any other use of the domain name other than preventing Patrick Dealer Group
from using such name. E-mail messages
have been exchanged between Complainant and Respondent, including February 18,
2002, February 19, 2002 (twice). In
the message of Tuesday, February 19, 2002, Alex Bruzas e-mailed Complainant,
Chief Operating Officer M. Stilwell, and advised that “Until such time as
your group or other entity chooses to make a purchase bid, I solely retain the
rights to the site and the ability to modify its appearance at my
discretion. The purchase option has
been available to you and others for over two years and remains an option
should you choose to make an offer.”
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the
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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
Identical and/or Confusingly Similar Policy ¶ 4(a)(i).
Complainant asserts that the disputed domain
name <patrickjaguar.com> is confusingly similar, indeed exactly
similar and identical to Complainant’s name registered with the State of
Illinois and with Complainant’s registered trade name. The Complainant alleges, and we agree, that
the Registrant has no business with this name, and has bragged to Complainant
that Registrant has made a nice living by registering other businesses’ trade
names and holding them for ransom. See
Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026
(WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in
dispute contains the identical mark of the Complainant combined with a generic
word or term). Furthermore, the
addition of “.com” is irrelevant when considering whether or not a mark is
confusingly similar. See Sony
Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that
“[n]either the addition of an ordinary descriptive word...nor the suffix ‘.com’
detract from the overall impression of the dominant part of the name in each
case, namely the trademark SONY” and thus Policy 4(a)(i) is satisfied).
Rights or Legitimate Interests Policy ¶ 4(a)(ii).
Complainant asserts that Respondent is using the
disputed domain name in order to sell the same product sold by Patrick Dealer
Group, i.e., Jaguar automobiles.
Complainant asserts that the use of <patrickjaguar.com>
domain name to sell competing products is not a bona fide offering of goods and
services pursuant to Policy ¶ 4(c)(i).
See Nat’l Collegiate Athletic Assoc. v. Halpern, D2000-0700 (WIPO
Dec. 10, 2000) (finding that domain names used to sell complainant’s goods
without complainant’s authority, as well as others’ goods is not bona fide
use); see also Chip Merchant, Inc. v. Blue Star Elec., D2000-0474 (WIPO
Aug. 21, 2000) (finding that the disputed domain names were confusingly similar
to the Complainant’s mark and that the Repondent’s use of the domain names to
sell competing goods was illegitimate and not a bona fide offering of goods).
The Panel finds that, due to the distinct nature
of Complainant’s mark, it is not possible for Respondent to be commonly known
as <patrickjaguar.com> pursuant to Policy ¶ 4(c)(ii). See Nike, Inc. v. B.B. de Boer,
D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests
where one “would be hard pressed to find a person who may show a right or
legitimate interest” in a domain name containing Complainant’s distinct and
famous NIKE trademark).
Complainant further asserts that Respondent is
not making a legitimate noncommercial or fair use of the disputed domain
name. See Telstra Corp. Ltd. v.
Nuclear Marshmallow, D2000-0003 (WIPO Feb. 18, 2000) (finding that (i) the
fact that the Complainant has not licensed or otherwise permitted the
Respondent to use any of its trademarks or to apply for or use any domain name
incorporating any of those marks, and (ii) the fact that the word
<TELSTRA> appears to be an invented word, and as such is not one traders
would legitimately choose unless seeking to create an impression of an
association with the Complainant the Respondent lacks rights or legitimate
interests in the domain name); see also Ullfrottré AB v. Bollnas Imp.,
D2000-1176 (WIPO Oct. 23, 2000) (finding that although the Respondent
legitimately sells goods originating from the Complainant, this does not give
him the right to register and to use the mark as a domain name without the
consent of the holder of the trademark); see also Pitney Bowes Inc. v.
Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (finding no rights or legitimate
interests in the <pitneybowe.com> domain name where Respondent purports
to resell original Pitney Bowes’ equipment on its website, as well as goods of
other competitors of Complainant).
Registration and Use in Bad Faith Policy ¶ 4(a)(iii).
Complainant asserts that Respondent was on
notice of Complainant’s mark when it registered the disputed domain name and
therefore acted in bad faith. See Samsonite
Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence
of bad faith includes actual or constructive knowledge of commonly known mark
at the time of registration); see also Victoria’s Secret v. Hardin, FA
96694 (Nat. Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety
of Complainants’ famous marks, Respondent had actual or constructive knowledge
of the BODY BY VICTORIA marks at the time she registered the disputed domain
name and such knowledge constitutes bad faith).
Complainant asserts that Respondent’s <patrickjaguar.com>
domain name is confusingly similar to Complainant’s mark and the Internet user
will likely believe that there is an affiliation between Respondent and
Complainant. Registration of the
confusingly similar <patrickjaguar.com> domain name is evidence of
bad faith pursuant to Policy ¶ 4(b)(iv).
See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9,
2000) (finding that bad faith registration and use where it is ‘inconceivable
that the respondent could make any active use of the disputed domain names
without creating a false impression of association with the Complainant”). The Panel so finds.
Complainant further asserts that Respondent
registered the disputed domain name in order to disrupt Complainant’s business
because Respondent sells the same products as Complainant on its website. See Southern Exposure v. Southern
Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding
Respondent acted in bad faith by attracting Internet users to a website that
competes with Complainant’s business).
The Panel so finds.
DECISION
I find that the domain name registered by the
Respondent is identical or confusing similar to a trademark or service mark in
which the Complainant has rights; further, that the Respondent has no rights or
legitimate interests in respect of the domain name; and, the domain name has
been registered and is being used in bad faith. Further, I find that the request of the Complainant that the
domain name be transferred from the Respondent to the Complainant be GRANTED.
RICHARD
B. WICKERSHAM, (Ret. Judge)
Dated:
April 12, 2002
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