Jaguar Cars Limited v. Dr Lemonde / VVNW Inc
Claim Number: FA1105001387439
Complainant is Jaguar Cars Limited (“Complainant”), represented by Anessa Owen Kramer of Honigman Miller Schwartz and Cohn LLP, Michigan, USA. Respondent is Dr Lemonde / VVNW Inc (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jaguarxj.com>, registered with Alice's Registry, Inc.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 6, 2011; the National Arbitration Forum received payment on May 9, 2011.
On June 8, 2011, Alice's Registry, Inc. confirmed by e-mail to the National Arbitration Forum that the <jaguarxj.com> domain name is registered with Alice's Registry, Inc. and that Respondent is the current registrant of the name. Alice's Registry, Inc. has verified that Respondent is bound by the Alice's Registry, 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 June 9, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 29, 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@jaguarxj.com. Also on June 9, 2011, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 6, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <jaguarxj.com> domain name is confusingly similar to Complainant’s JAGUAR and XJ marks.
2. Respondent does not have any rights or legitimate interests in the <jaguarxj.com> domain name.
3. Respondent registered and used the <jaguarxj.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Jaguar Cars Limited, is the owner of the JAGUAR mark which it uses in connection with the manufacture and sale of its cars, including the Jaguar XJ model, as well as clothing and accessories. Complainant has registered its JAGUAR mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 423,961 issued September 17, 1946). Complainant also registered its XJ mark with the USPTO (e.g., Reg. No. 2,681,671 issued January 28, 2003).
Respondent, Dr Lemonde / VVNW Inc, registered the <jaguarxj.com> domain name on May 11, 2005. The disputed domain name resolves to a webpage which previously contained links to various automotive websites, including links to Complainant’s competitors’ websites, but which currently has no active content.
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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant contends that it has established rights in both its JAGUAR mark and its XJ mark. The registration of a mark with a federal trademark authority sufficiently established rights in a mark. 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 Metropolitan Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Complainant has provided records of registration with the USPTO of its JAGUAR mark (e.g., Reg. No. 423,961 issued September 17, 1946) and its XJ mark (e.g., Reg. No. 2,681,671 issued January 28, 2003). Therefore, the Panel finds that Complainant has established rights in its JAGUAR and XJ marks under Policy ¶ 4(a)(i).
Complainant also contends that the disputed domain name is confusingly similar to its marks. The addition of a generic top-level domain (“gTLD”) is insufficient to distinguish a mark from a domain name. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (concluding that the <redhat.org> domain name is identical to the complainant’s RED HAT mark because the mere addition of gTLD was insufficient to differentiate the disputed domain name from the mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Additionally, the combination of two of a complainant’s marks fails to distinguish the domain name from the marks. See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name); see also G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that the addition of other drug names does not create a distinct mark capable of overcoming a claim of confusing similarity, “it merely creates a domain name with severe potential to confuse Internet users as to the source, sponsorship and affiliation of the domain”). Respondent’s domain name simply combines Complainant’s JAGUAR and XJ marks and follows them with a gTLD as required in order to register a domain name. Therefore, the Panel finds that the <jaguarxj.com> domain name is confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) is met.
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name. When a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to contradict the complainant’s assertions. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name”). The Panel finds that Complainant has made a prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent lacks rights and legitimate interests in the disputed domain name. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). The Panel will, however, review the record to determine if Respondent has any rights or legitimate interests in the <jaguarxj.com> domain name.
Complainant contends that Respondent is not commonly known by the <jaguarxj.com> domain name. Reviewing the WHOIS information for a domain name registrant often determines whether a respondent is commonly known by a domain name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”). Nothing in the WHOIS information for the disputed domain name suggests any links between the domain name and Respondent. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant contends that the previous use of the disputed domain name demonstrated a lack of rights or legitimate interests by Respondent as it was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii). The use of a website to display links to a complainant’s competitors and others in a complainant’s industry is a demonstration of a respondent’s lack of rights and legitimate interests. See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (holding that the respondent’s use of the contested domain name to maintain a commercial website with links to the products and services of the complainant’s competitors did 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)); see also Bond & Co. Jewelers, Inc. v. Texas Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the use of the disputed domain name to operate a website displaying links to competing goods and services 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 ¶ 4(c)(iii)). Respondent’s prior use of the disputed domain name was to display various links to automotive websites, including Complainant’s direct competitors. The Panel finds that this use violated Policy ¶¶ 4(c)(i) and 4(c)(iii) as being neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.
Complainant also contends that Respondent’s current use of the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests in the disputed domain name. The inactive holding of a webpage demonstrates that a respondent does not have rights or legitimate interests in a disputed domain name. See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”). The current website resolving from the disputed domain name has no active content. As such, the Panel finds this to be further evidence that Respondent does not have rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent’s registration and prior use of the disputed domain name disrupted its business. The registration and use of a domain name that may result in diverting users away from a complainant’s website to web pages of the complainant’s competitors, thus disrupting its business, is evidence that the domain name was registered and used in bad faith. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)). The disputed domain name previously resolved to a website which offered links to various automotive services, including Complainant’s direct competitors. Inevitably, some of the Internet users will reach Respondent’s website instead of Complainant’s website due to the confusing similarity of the disputed domain name to Complainant’s mark. As a result, Complainant’s consumer base is reduced and Complainant will generate less profit. The Panel finds that the disputed domain name disrupted Complainant’s business pursuant to Policy ¶ 4(b)(iii) and thus the registration and use of the disputed domain name was done in bad faith under Policy ¶ 4(a)(iii).
Complainant next contends that the registration and prior use of the disputed domain name evidenced bad faith because of the attraction for commercial gain resulting from a confusingly similar domain name. The use of a confusingly similar domain name in order to divert Internet users to a respondent’s webpage so that the respondent is able to profit is evidence of bad faith. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name). The prior resolution of the disputed domain name provided links from which Respondent likely received referrals fees for the Internet users who clicked through the links. Therefore, the confusingly similar nature of the domain name was likely done to increase Respondent’s commercial gain given the greater number of Internet users viewing the disputed domain name, albeit accidentally. Therefore, the Panel finds that, pursuant to Policy ¶ 4(b)(iv), the attraction for commercial gain evidences that Respondent registered and used the disputed domain name in bad faith.
The current resolution of the disputed domain name is to an inactive webpage. The holding of an inactive webpage is further evidence that a respondent lacks rights or legitimate interests in a domain name. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith). Respondent currently has no content displayed on the <jaguarxj.com> domain name. The Panel finds that the registration and use of a disputed domain name is evidence of bad faith registration and use where a respondent fails to make an active use of the webpage under Policy ¶ 4(a)(iii).
The Panel finds that Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <jaguarxj.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: July 8, 2011
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