national arbitration forum

 

DECISION

 

Jaguar Cars Limited v. Thorsten Pfeffer

Claim Number: FA1012001364292

 

PARTIES

Complainant is Jaguar Cars Limited (“Complainant”), represented by Anessa Kramer of Honigman, Miller, Schwartz, & Cohn LLP, Michigan, USA.  Respondent is Thorsten Pfeffer (“Respondent”), represented by Mitchel Krouse of The Krouse Law Firm, Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <jaguarorlando.com>, registered with GoDaddy.com, 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.

 

Mr Petter Rindforth as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 20, 2010; the National Arbitration Forum received payment on December 21, 2010.

 

On December 22, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <jaguarorlando.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name.  GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On December 28, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 18, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@jaguarorlando.com.  Also on December 28, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

A timely Response was received and determined to be complete on January 17, 2011.

 

On January 21, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Petter Rindforth as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.     Complainant

The Complainant claims to be a well-known UK-based manufacturer of high-end and luxury vehicles, which are sold in the United States and in more than 100 countries around the world. The Complainant first began selling vehicles under the JAGUAR mark in 1935, and its U.S. Trademark rights date back to 1935. Complainant continues to sell JAGUAR vehicles in the United States today. Since introducing the JAGUAR vehicle in the United States, Complainant has spent substantial sums of money to promote and advertise the brand. In 2009, almost 12,000 JAGUAR vehicles were sold in the United States.

 

The Complainant argues that the disputed domain name fully incorporates and is confusingly similar to the Complainant's trademark JAGUAR, and that the Respondent does not possess any rights to or otherwise has a legitimate interest in <jaguarorlando.com>.

 

The Complainant further refers to the trademark is widely-viewed as a "status symbol" and that the vehicles have made numerous appearances in pop culture, including in dozens of songs, on television shows and in movies (Exhibit F to the Complaint shows some examples). The JAGUAR vehicle lineup has received numerous awards over the years. The popularity of the JAGUAR brand and the resulting consumer recognition is further evidenced by the fact that there is a strong market for licensed goods bearing the JAGUAR mark. The Complainant summarize that due to widespread, continuous, and highly publicized use throughout the United States and the world, the JAGUAR trademark has become famous and was famous before Respondent registered the domain name.

 

The Complainant’s primary website is at <jaguar.com>, but Complainant also holds the domain name <jaguarusa.com>. Notably, the Complainant’s licensed dealer network often uses domain names consisting of the JAGUAR trademark followed by a geographic term (e.g., jaguar(CITYNAME).com). For example, the licensed Jaguar dealership in Marin County, California uses <jaguarmarin.com>, the licensed dealership in the Gulf Coast area uses <jaguargulfcoast.com>, and the licensed dealership in Mission Viejo, California uses <jaguarmissionviejo.com> (Exhibit P of the Complaint).

 

The Complainant is the owner of a great number of U.S. trademark registrations and applications for its JAGUAR trademark - in word, design, or stylized form (Exhibit R of the Complaint showing copies of certificates of registrations, etc.)

 

The Complainant concludes that its trademark rights in JAGUAR, based on its trademark registrations and on its common law rights acquired through the use of the mark and domain names, long predate Respondent's registration of the disputed domain name on November 16, 2009.

 

The Complainant points out that <jaguarorlando.com> domain name incorporates the mark "JAGUAR" in its entirety coupled with the geographically descriptive term "ORLANDO", and concludes that - given the uniqueness and fame of Complainant's JAGUAR mark - there can be no doubt but that the Respondent registered the domain name to trade upon Complainant's goodwill and to attract and divert Complainant's online customers for profit.

 

On August 23, 2010, the Respondent was approached regarding the disputed domain name on behalf of the Complainant’s authorized dealer Jaguar Orlando. At that time, the only content at the website was the wording “Welcome to the future home of Jaguar Orlando [t]his website is coming soon.” (Exhibit T of the Complaint). On August 24, 2010, in response to the Jaguar Orlando Dealer's inquiry, a representative for the Respondent, who identified himself as Kevin Schneider, discussed the possible sale of the disputed domain name and offered the price of $5,320, or to lease it for $399 per month. The Respondent sent a draft Contractor Agreement to Jaguar Orlando, dated September 1, 2010, that contained the same transfer terms in addition to a $500 design and SEO fee and an undisclosed monthly marketing fee. The first offer was repeated in a phone call between the parties on September 16, 2010.

 

On October 18, 2010, the Complainant sent a cease-and-desist letter to the Respondent, and immediately thereafter the website content was changed, which the Complainant argues was presumably in a feeble attempt to legitimize Respondent's clear bad faith. Specifically, the wording "Welcome to the future home of Jaguar Orlando [t]his website is coming soon" was replaced with an image of the Jacksonville Jaguar's Jaguar logo and the wording "Should the Jacksonville Jaguars Move to Orlando?" and two radio buttons that allow you to vote "Yes" or "No" and a "Vote" button. The Respondent did not directly respond to Complainant's letter.

 

The WHOIS records initially listed the registrant of the disputed domain name as “Domains by Proxy, Inc.” Therefore, the Respondent has taken active measures to conceal its identity through Registrar, by paying additional money for Domains by Proxy privacy service.

 

Furthermore, because of the fame of the JAGUAR trademark, it is virtually impossible to believe that Respondent did not have prior knowledge of the Complainant's rights when the disputed domain name was registered.

 

 

B. Respondent

According to the Respondent, the Complainant has failed to provide any evidence to support any of its claims. The Respondent states that “the Complainant’s slick sounding allegations are, presented as if it were fact, but are completely based solely on conjecture and presumptions with no facts whatsoever to support any of Complainants contentions”.

 

The Respondent states that the Complainant’s dealership was unhappy with its domain name <jaguaroforlando.com>, and contacted the Respondent to buy the disputed domain name. The Respondent attempted to settle the dispute by offering to sell <jaguarorlando.com> to the dealership.

 

The Respondent states that the Complaint has a complete absence of any factual basis for the Complainant’s allegation of bad faith. The reason why the initial text on the corresponding web site was "Welcome to the future home of Jaguar Orlando [t]his website is coming soon", was simply because “Jaguar Orlando” was the domain name.

 

The Respondent states that it is an owner of Club Avela in Panama City, FL, a world-famous club that has been in existence for more that 25 years. The Respondent concludes that Respondent’s use of the website and future business plans do not need to be disclosed but claims that the disputed domain name was not acquired for the purpose of selling it at a profit to the Complainant.

 

The Respondent summarizes that it has a legitimate interest and has not engaged in any bad faith, that the Complainant has not met its burden of proof and has not established that the Respondent has no legitimate interest and has engaged in any bad faith, that not a single factual instance has been described by the Complainant, and concludes that it would be patently wrong to grant the Complainant its requested relief on such a conspicuous absence of fact in an otherwise slick Complaint.

 

 

B.     Additional Submissions

 

Complainant’s Additional Submission

The Complainant points out that the Respondent’s Response lacks any evidence of a right or a legitimate interest in the disputed domain name. The Complainant concludes that the Respondent has acted in bad faith through: 1) the use of a privacy shield to register

the domain; 2) attempts to sell the domain to Complainant for a profit or lease the domain in exchange for a SEO contract; and 3) changing the content of the site after the initial cease-and-desist letter was sent from Complainant.

 

FINDINGS

The Respondent registered the disputed domain name <jaguarorlando.com> on November 16, 2009.

 

The Panel finds that Complainant has established trademark rights in the JAGUAR mark in the U.S.A. by:

 

- Reg. No. 3761471 JAGUARSPORT (word) filed June 8, 2009, reg. March 16, 2010

- Reg. No. 3211870 JAGUAR (word), filed March 24, 2005, reg. February 20, 2007

- Reg. No. 3493780 JAGUAR (word), filed April 18, 2001, reg. August 26, 2008

- Reg. No. 2693573 JAGUAR (word), filed June 18, 2002, reg. March 4, 2003

- Reg. No. 3739979 JAGUAR XE (word), filed July 1, 2009, reg. January 19, 2010

- Reg. No. 2319597 JAGUAR (word), filed April 29, 1999, reg. February 15, 2000

- Reg. No. 2768534 JAGUAR (word), filed August 20, 1999, reg. September 30, 2003

- Reg. No. 2629640 JAGUAR (word), filed March 25, 1999, reg. October 8, 2002

- Reg. No. 2334171 JAGUAR & Design, filed August 4, 1997, reg. March 28, 2000

- Reg. No. 2286996 JAGUAR & Design, filed August 4, 1997, reg. October 19, 1999

- Reg. No. 2230158 JAGUAR & Design, filed August 4, 1997, reg. March 9, 1999

- Reg. No. 2214138 JAGUAR & Design, filed August 4, 1997, reg. December 29, 1998

- Reg. No. 2225291 JAGUAR & Design, filed August 4, 1997, reg. February 23, 1999

- Reg. No. 2227508 JAGUAR & Design, filed August 4, 1997, reg. March 2, 1999

- Reg. No. 2175105 JAGUAR & Design, filed August 4, 1997, reg. July 21, 1998

- Reg. No. 2437348 JAGUAR & Design, filed August 4, 1997, reg. March 20, 2001

- Reg. No. 2192215 JAGUAR & Design, filed August 4, 1997, reg. September 29, 1998

- Reg. No. 2567718 JAGUAR S-TYPE, filed April 2, 1998, reg. May 7, 2002

- Reg. No. 2175107 JAGUAR & Design, filed August 4, 1997, reg. July 21, 1998

- Reg. No. 2175106 JAGUAR & Design, filed August 4, 1997, reg. July 21, 1998

- Reg. No. 2173079 JAGUAR & Design, filed August 4, 1997, reg. July 14, 1998

- Reg. No. 2451257 JAGUAR & Design, filed October 30, 1997, reg. May 15, 2001

- Reg. No. 2406600 JAGUAR & Design, filed August 4, 1997, reg. November 21, 2000

- Reg. No. 1640155 JAGUAR & Design, filed January 12, 1990, reg. April 9, 1991

- Reg. No. 1615636 JAGUAR & Design, filed January 12, 1990, reg. October 2, 1990

- Reg. No. 1615725 JAGUAR & Design, filed January 12, 1990, reg. October 2, 1990

- Reg. No. 1634877 JAGUAR & Design, filed January 12, 1990, reg. February 12,       1991

- Reg. No.1729215 JAGUAR & Design, filed January 12, 1990, reg. November 3, 1992

- Reg. No. 1764382 JAGUAR & Design, filed January 12, 1990, reg. April 13, 1993

- Reg. No. 1639177 JAGUAR & Design, filed January 12, 1990, reg. March 26, 1991

- Reg. No. 1891968 JAGUAR & Design, filed January 12, 1990, reg. May 2, 1995

- Reg. No. 1645289 JAGUAR & Design, filed January 12, 1990, reg. May 21, 1991

- Reg. No. 1644889 JAGUAR & Design, filed January 12, 1990, reg. May 21, 1991

- Reg. No. 1691155 JAGUAR & Design, filed January 12, 1990, reg. June 9, 1992

- Reg. No. 1614147 JAGUAR & Design, filed March 27, 1989, reg. September 18, 1990

- Reg. No. 1562075 JAGUAR & Design, filed March 6, 1989, reg. October 24, 1989

- Reg. No. 1108664 JAGUAR, filed July 21, 1977, reg. December 12, 1978

- Reg. No. 1219068 JAGUAR, filed May 11, 1981, reg. December 7, 1982

- Reg. No. 1166342 JAGUAR, filed June 23, 1980, reg. August 25, 1981

- Reg. No. 0423961 JAGUAR, filed November 26, 1945, reg. September 17, 1946

- Published U.S. Application No. 77,008,392, JAGUAR & Design

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

As stated above, the Complainant has provided evidence of the registration of its JAGUAR mark through its numerous registrations of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 423,961 issued September 17, 1946).  Accordingly, the Panel finds that these trademark registrations sufficiently prove Complainant’s rights in the JAGUAR mark pursuant to Policy ¶ 4(a)(i).  See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).

 

The disputed domain name <jaguarorlando.com> consists of the Complainant’s trademark, with the addition of the geographic word Orlando, and the generic top-level domain “.com.” The Panel finds that the addition of a geographically descriptive term to a mark does not significantly distinguish a domain name from the mark.  Further, the affixation of a generic top-level domain (“gTLD”) like “.com” to a mark is irrelevant for Policy ¶ 4(a)(i) purposes.  See AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that the <axachinaregion.com> domain name “is confusingly similar to the Complainant's trade mark ‘AXA’” because “common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the addition of geographic terms, such as “cancun” to the end of the CHEAPTICKETS mark in the <cheapticketscancun.com>, <cheapticketscancun.biz>, <cheapticketscancun.net>, and <cheapticketscancun.org> domain names, does not overcome a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). 

 

Accordingly, the Panel concludes that the Respondent’s <jaguarorlando.com> domain name is confusingly similar to Complainant’s JAGUAR mark pursuant to Policy ¶ 4(a)(i).

 

 

Rights or Legitimate Interests

 

The Complainant’s assertion that the Respondent lacks rights or legitimate interests in the disputed domain name establishes a prima facie case under the Policy.  Once a prima facie case has been established, the burden shifts to Respondent to demonstrate that it does have rights or legitimate interests pursuant to Policy ¶ 4(c). See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the 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.”).

 

Complainant asserts that it has not licensed or otherwise authorized Respondent to use the JAGUAR mark.  Furthermore, the WHOIS information lists “Thorsten Pfeffer” as the registrant of the disputed domain name, which is obviously not similar to the <jaguarorlando.com> domain name.  The Panel finds that the Complainant’s assertion combined with the WHOIS registrant information indicates that the Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).  See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).

 

The Complainant contends the <jaguarorlando.com> domain name previously resolved to an inactive website, submitting a screen shot of the website resolving from the disputed domain name on October 5, 2010, with the only content: “Welcome to the future home of Jaguar Orlando [t]his website is coming soon.”  The Respondent claims to be the owner of Club Avela in Panama City, Florida, and that Respondent plans to use the disputed domain name for future business plans, “which need not be disclosed.”  The Panel is not convinced by the loose arguments from the Respondent, which are not supported by any documentation showing any plans of rightful use of the disputed domain name. On the contrary, the Panel finds that <jaguarorlando.com> resolved to an inactive web page, that the Respondent changed the content on the website after the negotiations with the Complainant’s business partner, but that this change is more likely to be a part of Respondent’s plans to force Complainant to pay for the domain name.

 

Accordingly, the Panel concludes that Respondent did not use the disputed domain name to make 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).  See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (concluding that the respondent had no rights or legitimate interests in the <worldgyms.com> domain name because it contained no substantive content, just the phrase “coming soon” and a picture of someone working out), see also Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent 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).”).

 

As further showed by the Complainant, and confirmed by the Respondent, the Respondent offered to sell <jaguarorlando.com> to the Complainant for $5,320. This offer clearly exceeds the Respondent’s out-of-pocket costs, which is further evidence that the Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).  See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“An attempt by a respondent to sell a domain name to a complainant who owns a trademark with which the domain name is confusingly similar for an amount in excess of out-of-pocket costs has been held to demonstrate a lack of legitimate rights or interests.”); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).

 

The Panel concludes that Respondent does not have any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).

 

 

Registration and Use in Bad Faith

 

The Panel agrees with the Complainant that Respondent’s offer to sell or lease the disputed domain name to Complainant amounts to bad faith under Policy ¶ 4(b)(i).  See Dollar Rent A Car Sys., Inc. v. Jongho, FA 95391 (Nat. Arb. Forum Sept. 11, 2000) (finding that the respondent demonstrated bad faith by registering the domain name with the intent to transfer it to the complainant for $3,000, an amount in excess of its out of pocket costs); see also Wake Forest Univ. v. Needham, FA 125751 (Nat. Arb. Forum Nov. 27, 2002) (finding bad faith pursuant to Policy ¶4(b)(i) where the panel found the respondent had proposed rental fees for use of the domain names in dispute).

 

The Complainant has proved an extensive and long term trademark registration and use of JAGUAR, also within the U.S.A. The Respondent does not deny to have had previous knowledge of the existence of the Complainant’s trademark. Accordingly, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii), as it is likely that Respondent had actual notice of Complainant’s trademark rights.  See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).

 

Finally, Complainant contends that the <jaguarorlando.com> domain name previously resolved to an inactive website.  The Panel finds that the Respondent’s failure to make active use of the disputed domain name, obviously confusingly similar Complainant’s well-known and since long protected trademark, amounts to bad faith, especially as the domain name registration occurred long after the Complainant acquired rights in the JAGUAR trade mark.  See Accor v. Value-Domain Com, Value Domain, D2009-1797 (WIPO Feb. 8, 2010) (finding bad faith use where respondent passively held the domain name and the domain name registration occurred approximately 19 years after the complainant had filed trademark registrations in the mark); see also OneWest Bank, FSB v. Jacob Zakaria d/b/a EQ Funding, FA 1328894 (Nat. Arb. Forum July 20, 2010) (the panel found bad faith use where respondent failed to make active use of the disputed domain name and the respondent registered the domain name approximately 7 years after the complainant registered its trademark with the USPTO). 

 

Referring to all the above circumstances, the Panel concludes that Respondent has registered and used the domain name in bad faith. The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <jaguarorlando.com> domain name be TRANSFERRED from Respondent to Complainant.

 

__________________________________________________________________

 

Petter Rindforth, Panelist

Dated:  February 4, 2011

 

 

 

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