Patrick Jaguar, LLC d/b/a
Claim Number: FA0807001215186
Complainant is Patrick Jaguar, LLC d/b/a Land
Rover Naperville (“Complainant”),
represented by Martin C. Stilwell, Illinois,
USA. Respondent is Bill Jacobs
BMW (“Respondent”), represented by Gerald O. Sweeney, of Barnes & Thornburg LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <landrovernaperville.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 14, 2008; the National Arbitration Forum received a hard copy of the Complaint on July 16, 2008.
On July 14, 2008, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <landrovernaperville.com> domain name is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that the Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.com 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”).
On July 24, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 13, 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 and determined to be complete on August 12, 2008.
On August 20, 2008, Complainant submitted an Additional Submission that was received after the deadline for submissions. The Panel in its discretion has considered this submission.
On August 26, 2008, Respondent submitted a timely Additional Submission.
All submissions were considered by the Panel.
On August 21, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
This Complaint is based on the name LAND ROVER NAPERVILLE, which Complainant is granted trademark and service mark rights to by its franchise agreement with Land Rover North America, Inc. (LRNA), and is its registered d/b/a name with the Secretary of State of Illinois.
Complainant purchased the Land Rover franchise from Bill Jacobs Jr. (owner of respondent) on April 18, 2008. The provisions of the Dealership Asset Buy-Sell Agreement, Sections 5.B and 7.A, provide for seller to terminate its franchise rights to Land Rover and its dealer agreement.
The domain name at issue, <landrovernaperville.com>, is identical to and confusingly similar to Complainant’s registered d/b/a name, LAND ROVER NAPERVILLE.
Seller resigned the Land Rover
Respondent is using the domain name
bad faith. Seller, which was owned by
the same owner as Respondent, agreed to give up the name LAND ROVER NAPERVILLE, so that
Complainant could adopt it. The
purchased assets specifically included the LAND ROVER NAPERVILLE “good will” which under
Instead of relinquishing the domain name, Seller apparently transferred the domain name to Respondent. For a period of months, Respondent used the domain name to intentionally mislead the customer base of Land Rover Naperville, by directing the domain name to the website of its Hoffman Estates, Illinois and Hinsdale, Illinois Land Rover franchises, giving the appearance to customers that the Naperville franchise was no longer in business.
Land Rover North America, Inc., LRNA, sent a send a cease-and-desist letter to William Jacobs Jr. demanding that his organization stop using the domain name <landrovernaperville.com> to divert Internet traffic to his other dealerships.
After receiving the cease-and-desist letter, Respondent stopped directing the domain name to the website for its Hoffman Estates and Hinsdale Land Rover franchises, and now the domain name is directed to the directNIC “under construction” website.
Admittedly, Respondent was making a bona fide offering of goods and services in connection with the trade name and domain name, LAND ROVER NAPERVILLE and <landrovernaperville.com>, respectively, prior to April 18, 2008. Respondent sold the right to make that bona fide offering of goods and services to Complainant and relinquished its right to the trademark and service mark LAND ROVER NAPERVILLE and <landrovernaperville.com>.
Complainant has not supported it claims of contractually-based rights to the domain name <landrovernaperville.com>, and cannot prove, as is its burden, that each of the three elements specified in ICANN Policy 4(a) subparagraphs (i), (ii) and (iii) are present.
Complainant purchased a Land Rover franchise from Respondent on April 18, 2008. In that transaction, Complainant did not acquire any right in the domain name <landrovernaperville.com>, which was registered and owned by Respondent.
Complainant is now asking this Panel for: (a) a declaration of its contractual rights under a franchise agreement between Complainant and nonparty Land Rover North America, which is not of record in this proceeding, and for (b) a declaratory judgment and a material revision to its buy/sell agreement with Respondent.
Complainant waived its right to assert this claim when it elected not to obtain the domain name as part of its negotiated buy/sell agreement with Respondent. It has further failed to provide any evidence for its claim that it has rights based on a franchise agreement with Land Rover North American, the presumptive owner of the LAND ROVER word mark.
Complainant admits in its Complaint that Respondent (as a business) has been commonly known by the domain name, <landrovernaperville.com>.
The domain name was not “registered and being used in bad faith” as the evidence of record is that Respondent’s domain name was registered and used in the course of Respondent’s business effective as of May 31, 2007, a date substantially prior to Complainant’s purchase of the franchise on April 18, 2008.
C. Additional Submissions
Respondent attempts to confuse the issue by claiming that Complainant must prove it purchased the domain name. The issue is the right to the underlying name “Land Rover Naperville” which Respondent voluntarily relinquished when it sold its business. Respondent’s continued use of the identical domain name constitutes cybersquatting, without regard to any other transactions between the parties.
Respondent has not brought forward any evidence to deny or counter the allegations in the Complaint that, following Respondent’s sale of its rights in the Naperville Land Rover franchise, Respondent now has no rights or legitimate interests in respect of the domain name.
Item 2 of the Uniform Domain Name Dispute Resolution Policy imposes an ongoing obligation on the registrant to not violate the rights of others.
It is not necessary for this Panel to determine rights under the franchise agreement, nor for Land Rover North America to intervene in this proceeding, given that Respondent has not denied that Complainant has the right to use the underlying mark LAND ROVER NAPERVILLE.
Complainant’s Additional Submission is a restatement of the Complaint.
As evidenced by the allegations in the Complain, the dispute over the domain name is centered on the interpretation of contractual language of a fully negotiated buy-sell agreement between the Parties and the UDRP is an inappropriate mechanism for the resolution of this matter as it is outside the scope of the Policy.
Complainant readily admits that this dispute arises out of a disagreement between the parties as to the interpretation of the terms and conditions of a thirty page Dealership Asset Buy-Sell Agreement.
Complainant fails to meet its burden of proof as the Exhibits attached to the Complainant and the Additional Submission are not dispositive of any issue for which they are offered and the buy-sell agreement between the Parties is not of record in this administrative proceeding.
For the reasons set forth below the Panel finds Complainant has not proven the required elements.
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.
Respondent challenges Complainant’s rights in the LAND ROVER NAPERVILLE mark. According to Respondent, Complainant has not provided adequate evidence that it has rights to use the LAND ROVER NAPERVILLE mark, which belongs to Land Rover North America, Inc. The Panel agrees and finds that Complainant has not established common law rights in the LAND ROVER NAPERVILLE mark pursuant to Policy ¶ 4(a)(i). See Voip Review LLC v. Nokta Internet Techs., FA 1095192 (Nat. Arb. Forum Dec. 12, 2007) (“Complainant has not sufficiently established common law rights in the VOIP REVIEW mark and merely makes bald assertions as to its rights in the mark without offering any evidence to support those assertions.”); see also EU Prop. Portfolio Ltd. v. Salvia Corp., FA 873726 (Nat. Arb. Forum Feb. 7, 2007) (“Although it has been held that there is no requisite showing to establish common law rights, common sense dictates that something beyond mere proof of business establishment is necessary.”).
While Complainant urges the Panel to find that Complainant was granted trademark rights in the LAND ROVER NAPERVILLE mark via franchise agreement with Land Rover North America, Inc., Complainant has not elaborated on any trademarks, registered or common law, held by Land Rover North America, Inc. which Land Rover North America, Inc. was empowered to grant. Similarly, Complainant has not elaborated on specific contractual language which might show such a grant of rights in the LAND ROVER NAPERVILLE mark. The Panel finds that Complainant has failed to demonstrate rights sufficient to satisfy Policy ¶ 4(a)(i). See Backstreet Boys Prods., Inc. v. Zuccarini, D2000-1619 (WIPO Mar. 27, 2001) (dismissing the complaint because the complainant “failed to carry its burden that it ha[d] rights in the [BACKSTREET BOYS] trademark”); see also Brinks Servs. Inc. v. Holt, FA 324699 (Nat. Arb. Forum Nov. 4, 2004) (finding that the complainant did not have standing to bring a complaint under the Policy because the complainant did not provide any evidence that it had valid trademark registrations for the mark or common law rights in the mark); see also Enmersan Granit Mermer ve Insaat Taahhut Sanayi ve Ticaret A.S. v. Sahin, D2004-0439 (WIPO Aug. 13, 2004) (denying transfer of a domain name where the complainant did not hold a trademark or service mark registration for its mark but merely operated under the trade name); see also Cf. Discover New England v. Avanti Group, Inc., FA 123886 (Nat. Arb. Forum Nov. 6, 2002) (finding the dispute outside the scope of the UDRP because the dispute centered on the interpretation of contractual language and whether or not a breach occurred).
Complainant has not proven this element.
Respondent alleges it was previously commonly known by the <landrovernaperville.com> domain name when Respondent conducted business under the LAND ROVER NAPERVILLE mark pursuant to its former franchise agreement with Land Rover North America, Inc. Respondent claims and Complainant concedes that this was a bona fide use of the disputed domain name. The Panel therefore finds that Respondent had rights and/or legitimate interests in the <landrovernaperville.com> domain name pursuant to Policy ¶¶ 4(c)(i) and/or (ii). See AmeriCares Found., Inc. v. Ewing, D2003-0347 (WIPO June 26, 2003) (finding that the <americare.org> domain name was used in a bona fide manner since respondent registered the domain name on behalf of AmeriCare MedServices, which had been using the “AmeriCare” name in business for seven years prior to the dispute); see also Bankinter S.A. v. BI Fin. Inc., D2000-0460 (WIPO Sept. 5, 2000) (stating that “[b]y September 1999, when first approached by the Complainant, the Respondent or its predecessors had used the <bankinternet.com> website for almost 4 years, thus demonstrating “a bona fide offering of goods and services”).
Complainant has not proven this element.
Respondent notes that Complainant is required to prove bad faith registration and use. Respondent or its predecessor-in-interest registered the <landrovernaperville.com> domain name in good faith based on the then-existing franchise agreement with Land Rover North America, Inc. The Panel finds that Respondent’s registration and/or use of the <landrovernaperville.com> domain name was in good faith pursuant to Policy ¶ 4(a)(iii). See Sanitech Corp. v. Paton, FA 935273 (Nat. Arb. Forum Apr. 30, 2007) (holding that Policy ¶ 4(a)(iii) requires bad faith registration and use, so where a respondent initially registered the disputed domain name in good faith, the panel should deny the transfer of the disputed domain name to the complainant); see also Creative Paradox LLC v. Talk Am., FA 155175 (Nat. Arb. Forum June 23, 2003) (finding no bad faith registration of the domain name where the panel found evidence that the respondent was authorized to register the disputed domain name).
Complainant has not proven this element.
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <landrovernaperville.com> domain name remain with Respondent.
Honorable Karl V. Fink (Ret.), Panelist
Dated: September 4, 2008
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