Patrick Jaguar, LLC, d/b/a Patrick Land Rover v. Chris Batozech
Claim Number: FA0805001190348
Complainant is Patrick Jaguar, LLC, d/b/a
Patrick Land Rover (“Complainant”), represented by Martin Stilwell, Illinois, USA.
Respondent is Chris Batozech (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <patricklandrover.com>,
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.
Debrett Gordon Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 13, 2008; the National Arbitration Forum received a hard copy of the Complaint on May 15, 2008.
On May 15, 2008,
On May 20, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 9, 2008 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
A timely Response was received on June 9, 2008 but was deemed deficient pursuant to Supplemental Rule 5 because the Response was not submitted in hard copy prior to the Response deadline.
Both parties made Additional Submissions. Complainant made a timely Additional Submission on June 13, 2008 which complied with Supplemental Rule 7. Respondent made a timely Additional Submission on June 18, 2008 which complied with Supplemental Rule 7.
On June 17, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The Complaint and the Response pay little regard to the Policy. They are more in the nature of narratives; however those claims pertinent to the application of the Policy have been distilled below.
Complainant alleges to have purchased the Land Rover franchise in
Complainant asserts that Respondent has not used, and has not made any demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. Respondent is not making legitimate noncommercial or fair use of the domain name. Complainant argues that Respondent does not appear to be commonly known by the domain name, nor has he any trademark or service mark rights related to the domain name.
Complainant posits that Respondent registered the disputed domain name in anticipation of Complainant’s purchase of the franchise. Complainant states that:
When we went to register the domain name <patricklandrover.com>, we found out Respondent discreetly
registered it with
Respondent’s account of why he registered the domain name follows.
The respondent’s given name at birth is patrick, and he is of irish heritage. The respondent is adopted. The respondent does not have any supporting documentation to show the name change. Respondent is sending a photo of the respondent’s tattoo containing the name “Patrick.” The respondent has also been a Land Rover enthusiast for his entire adult life. The respondent has owned many Land Rovers, and currently owns two. A photo and an insurance card for one is enclosed. Respondent wanted to create a website dedicated to the global Land Rover enthusiast, while identifying it with the respondent through his Irish heritage. Respondent’s website will strictly be used for networking with fellow Land Rover enthusiasts, blogging and memorabilia trading.
Respondent submits that he has not acted in bad faith. He states that there is no evidence that it was common public knowledge that Complainant was purchasing the local Land Rover franchise at the time Respondent registered the disputed domain name. Respondent denies any claim that it demanded money from Complainant for the domain name. Respondent states that he does not wish to sell the domain name.
C. Additional Submissions
Both parties made Additional Submissions
Complainant challenges Respondent’s account of why he registered the domain
name and alleges that subsequent to filing the Complaint, it was discovered
that Respondent is the sales manager for Laurel Land Rover, of
Respondent’s Additional Submissions include the following statements.
There was no public knowledge of this buyout taking place before the respondent received the first failed (sic.) complaint, although it is common knowledge that the respondent is the manager of another Land Rover dealer in the Chicago land area and has been for many years, (as well as an enthusiast) the respondent is surprised that the complainant just recently discovered that commonly known public fact as the respondent thought all along his employment was known by all the Chicago area Land Rover dealers as he has had a healthy, positive and professional business relationship with all the competing land rover dealers in the area for years , and would hope to include the new Land Rover store among them .
The respondents web site was in no way purchased in bad faith and will, in no way, hinder the effectiveness of the complainants business, as the website is not in business to retail new or pre owned Land Rovers it appears as if the complainant is confusing a personal interest or hobby with the respondents place of employment … the respondent genuinely wishes to use the domain name as was described in the original response which will have no affiliation with any Land Rover retailer … The domain name and website is in its infancy and is currently under development. … The respondents website will strictly be used for networking with fellow Land Rover enthusiasts, blogging and memorabilia trading, etc.
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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 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;
(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.
Preliminary Issue: Deficient Response
Respondent submitted a timely electronic Response, but failed to submit it in hard copy prior to the Response deadline and so the Forum deemed the Response deficient pursuant to Supplemental Rule 5. The Panel has discretion whether or not to consider Respondent’s primary submission because it was not made in compliance with the Rules. Given that the electronic Response represents the substance of Respondent’s position, the Panel takes the view that it would be unfairly prejudicial to rule the Response as a whole inadmissible. Accordingly, on this occasion the Panel has given full consideration and weight to the Response.[i]
Identical or Confusingly Similar: Policy ¶ 4(a)(i).
Complainant alleges only that the disputed domain name is identical to Complainant’s d/b/a, “Patrick Land Rover”. That allegation does not address Policy ¶ 4(a)(i) according to which Complainant must establish that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
the Complaint is a copy of a State of
Also appended to the Complaint is a photograph of Complainant’s business premises which prominently shows the name “Patrick” on the face of the building and, on another wall, the words “Land Rover.”
Neither of those attachments does anything to establish trademark rights in either “Patrick” or “Patrick Land Rover”. There is no evidence that Complainant has registered the name “Patrick” or “Patrick Land Rover” as a trademark. Nevertheless, for the purpose of establishing rights in a trademark pursuant to Policy ¶ 4(a)(i), registration is not mandatory if Complainant can show trademark rights acquired through use and reputation.[ii]
Complainant has not claimed trademark rights acquired through use and reputation and it would be open to this Panel to refuse to transfer the disputed domain name simply because Complainant had failed at the first hurdle under Policy ¶ 4(a)(i).[iii]
Together with the National Arbitration Forum, the World Intellectual Property Organization (WIPO) provides an arbitration service under the Policy. Some time ago, WIPO published an overview of some commonly recurring questions under the Policy.[iv] The question and answer to 1.6 and 1.7 were:
Consensus view: While the UDRP does not specifically protect personal names, in situations where an unregistered personal name is being used for trade or commerce, the complainant can establish common law trademark rights in the name. Reference can be made to the test required for the common law action of passing off. Personal names that have been trademarked are protected under the UDRP.
Roberts v. Boyd, D2000-0210 (WIPO May 29, 2000) (Transfer)
Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (among
Crichton v. In Stealth Mode, D2002-0874 (WIPO Nov. 25, 2002) (Transfer)
However: The name in question should be actually used in trade or commerce to establish unregistered trademark rights. Merely having a famous name (such as a businessman, or religious leader) is not necessarily sufficient to show unregistered trademark rights.
Asper v. Communication X Inc., D2001-0540 (WIPO June 11, 2001) (among others, Denied)
Ghose v. ICDSoft.com and Sliwa, D2003-0248 (WIPO May 22, 2003) (Transfer).
Consensus view: The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographic area does not limit complainant’s rights in a common law trademark. Unregistered rights can arise even when the complainant is based in a civil law jurisdiction.
Uitgeverij Crux v. Isler, D2000-0575 (WIPO Oct. 30, 2000) (Transfer)
Skattedirektoratet v. Eivind Nag, D2000-1314 (WIPO Dec. 18, 2000) (Transfer)
Amsec Enters., L.C. v. McCall, D2001-0083 (WIPO April 3, 2001) (Denied)
Australian Trade Comm’n. v. Reader, D2002-0786 (WIPO Nov. 12, 2002) (Transfer)
Imperial College v. Dessimoz, D2004-0322 (WIPO June 30, 2004) (among others, Transfer)
Applying these criteria, it is clear that Complainant is using the name “Patrick” in trade or commerce. The name is part of Complainant’s company name. It appears prominently on its showroom premises and on its various websites. This Panel has no doubt that the name is being used as a trademark and the only important issue is whether there is sufficient indication of use and reputation to support common law trademark rights.
It is said that a complainant has common law rights if it could sustain an argument of passing off. It was said in one passing off case that:
The nature and degree of business activity will differ from case to case. …A business has goodwill attached to it in a particular place if there is an attraction among people there to do business with it. … In many cases distance or the nature of the business will make it unlikely that anyone could be so attracted[v]
Passing off actions have, however, frequently succeeded based on regional reputation or goodwill, especially in cases of localized service providers such as restaurants, builders, hairdressers, and similar service providers. There is a respectable argument that main line motor dealers fall into that category. They provide not just new car sales, but typically sales of approved used cars of the same make(s), provide servicing of those vehicles, provide courtesy cars, deal with warranty claims, offer trade-in services, and today frequently provide a range of ancillary services. Their customer base is typically local.
case, the evidence is that in February 2008, Complainant opened discussions to
acquire the Land Rover franchise in
The corresponding websites referred to earlier all contain statements similar to the following:
According to Crain's Chicago
Business, the Patrick Dealer Group is
The Panel has no reason to question those claims. Given the inherently local nature of the services provided by car dealerships and the fact that Complainant holds the franchise to a number of prestigious European car makes, the Panel finds that Complainant has common law rights in its PATRICK trademark.[vi]
The remaining issue under Policy ¶ 4(a)(i) is whether the domain name is confusingly similar to the trademark PATRICK. The domain name fully contains Complainant’s PATRICK mark with the addition of the secondary trademark “Land Rover”, which in the context of Complainant’s business, describes what is being sold by Complainant. The Panel finds the domain name to be confusingly similar to the trademark and so finds that Complainant has established the first element under the Policy.[vii]
Rights and Legitimate Interests: Policy ¶ 4(a)(ii).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Accordingly, the burden shifts to Respondent to show it does have rights or legitimate interests in the disputed domain name.[viii]
Policy ¶ 4(c) states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of Policy ¶ 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(iii) you are making a 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.
Respondent does not satisfy any of those criteria. He is not known by the disputed domain name, even if his first used Christian name was in fact “Patrick.”[ix] Contrary to Respondent’s assertions, the website corresponding to the disputed domain name is clearly of a commercial character. Respondent’s use of the disputed domain name to redirect Internet users to Complainant’s competitors’ websites is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).[x] There is absolutely no evidence that the website might be directed towards Land Rover aficionados.
In short, Respondent has no demonstrable rights or legitimate interests in the disputed domain name and so Complainant has established the second limb of the Policy.
Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).
Paragraph 4(b) of the Policy sets out the circumstances which shall be evidence of the registration or use of a domain name in bad faith and so the Panel considers it logical to first compare them to the facts of the case. They are:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out‑of‑pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your website or location or of a product or service on your website or location.
Respondent claims to have registered the domain name before he had any knowledge of Complainant’s intended purchase of the Land Rover franchise. The Panel must judge the veracity of that claim based on the evidence before it and on the balance of probabilities. The Respondent admits to being the manager of a Land Rover dealership. Complainant’s claim that the two businesses are in contiguous market areas is not contradicted by Respondent. Respondent admits to knowledge of Complainant’s business. Respondent registered the disputed domain name in the same timeframe as the purchase discussions. Respondent’s claim that the disputed domain name would be used for a non-commercial website devoted to Land Rover enthusiasts is without foundation. The website currently shows information of a commercial nature competitive with Complainant’s business interests.
Weighing the evidence, the Panel can give no credibility to Respondent’s account of why he registered the domain name[xi] and the Panel finds that Respondent’s actions fall squarely within Policy ¶ 4(b)(ii) and (iii) set out above.
Accordingly, Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <patricklandrover.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett Gordon Lyons, Panelist
Dated: June 30, 2008
[i] See J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where Respondent submitted a timely Response electronically, but failed to submit a hard copy of the Response on time, “[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight”); see also Strum v. Nordic Net Exch. AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (“[R]uling a Response inadmissible because of formal deficiencies would be an extreme remedy not consistent with the basic principles of due process”).
[ii] See SeekAmerica
Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the
Rules do not require that the complainant's trademark or service mark be
registered by a government authority or agency for such rights to exist); see also
[iii] See Molecular Nutrition, Inc. v. Network News & Publ’ns, FA 156715 (Nat. Arb. Forum June 24, 2003) (finding that the complainant failed to establish common law rights in its mark because mere assertions of such rights are insufficient without accompanying evidence to demonstrate that the public identifies the complainant’s mark exclusively or primarily with the complainant’s products); see also Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (“Although Complainant asserts common law rights in the WELLSERV mark, it failed to submit any evidence indicating extensive use or that its claimed mark has achieved secondary source identity . . . [Complainant’s claim that it is well known] is a finding that must be supported by evidence and not self-serving assertions.”).
[iv] See WIPO Overview of WIPO Panel Views on Selected UDRP Question, (February 2005).
[v] See Taco Bell Pty. Ltd. v. Taco Co. of Australia Inc., 60 F.L.R. 60 (1981).
[vi] See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”).
[vii] See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where respondent’s domain name combines complainant’s mark with a generic term that has an obvious relationship to complainant’s business; see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
[viii] See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that complainant must first make a prima facie case that respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to respondent to show that it does have rights or legitimate interests in the subject domain names.”)
[ix] See Sumner v. Urvan, D2000-0596 (WIPO July 24, 2000) (finding that the respondent’s evidence that he used the name “Sting” as a login name at a gaming site was “at the weaker end of the spectrum of such evidence” and thus did “not establish that he has been ‘commonly known’ by the domain name as contemplated by” the Policy); see also DIMC, Inc. v. Phan, D2000-1519 (WIPO Feb. 20, 2001) (rejecting the claim that the respondent was commonly known by the “Krylon” nickname since there was no evidence indicating when the alleged nickname was adopted and how it was used).
[x] See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because respondent used the names to divert Internet users to a website that offered services that competed with those offered by complainant under its marks); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because respondent used the domain name to take advantage of complainant's mark by diverting Internet users to a competing commercial site); see also WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) finding that respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to complainant’s mark, websites where respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy; see also Deutsche Telekom AG v. SKK, D2003-0744 (WIPO Nov. 17, 2003).
[xi] See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”).
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