Land Rover v. JWi
Claim Number: FA1108001401906
Complainant is Land Rover (“Complainant”), represented by Anessa Owen Kramer of Honigman Miller Schwartz and Cohn LLP, Michigan, USA. Respondent is JWi (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <socallandrover.com>, registered with GoDaddy.com, 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 4, 2011; the National Arbitration Forum received payment on August 5, 2011.
On August 4, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <socallandrover.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 August 5, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 25, 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@socallandrover.com. Also on August 5, 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 August 29, 2011 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <socallandrover.com> domain name is confusingly similar to Complainant’s LAND ROVER mark.
2. Respondent does not have any rights or legitimate interests in the <socallandrover.com> domain name.
3. Respondent registered and used the <socallandrover.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Land Rover, is a global automobile manufacturer and distributor focusing in the luxury auto market. Complainant owns multiple governmental trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 541,722 registered March 17, 1949) and the United Kingdom Intellectual Property Office (“UKIPO”). Complainant uses the mark as its brand name for the vehicles it manufactures and sells.
Respondent, JWi, registered the disputed domain name on January 30, 2006. The disputed domain name resolves to a site containing an offer to sell and an area in which Internet users may inquire about purchasing the site. The website contains no other information.
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 argues that it has established rights in the LAND ROVER mark by registering that mark with governmental trademark authorities including the USPTO and the UKIPO. Complainant submitted sufficient evidence in the form of trademark certificates showing that the mark was registered with the USPTO (e.g., Reg. No. 541,722 registered March 17, 1949) and that it was the rightful owner. However, Complainant failed to submit evidence verifying its registration held with the UKIPO. Nonetheless, the Panel finds that Complainant’s verified registration of the LAND ROVER mark with the USPTO establishes its rights in the mark under 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 Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).
Complainant also argues that Respondent’s <socallandrover.com> domain name is confusingly similar to its LAND ROVER mark. The disputed domain name contains the entire mark, removing only the space between the terms and adding the generic top-level domain (“gTLD”) “com,” as well as the geographic identifier “socal.” Complainant submits that it has established a common practice of utilizing geographic identifiers along with its mark for the dissemination of its products outside of the UK and primarily in the US. The Panel finds that Respondent’s <socallandrover.com> domain name is confusingly similar to Complainant’s LAND ROVER mark under Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)0; see also Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”).
The Panel finds that Complainant has established Policy ¶ 4(a)(i).
Complainant claims, and the Panel agrees, the it has made a prima facie case showing Respondent’s lack of rights or legitimate interests in the disputed domain name. Complainant’s successful prima facie showing shifts the burden of proof to Respondent under Policy ¶ 4(a)(ii) to Respondent. 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.”). However, Respondent has failed to submit a Response in this matter which allows this Panel to assume Respondent lacks rights or legitimate interests in the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Before making such a determination, the Panel will examine the entire record in accordance with the factors listed in Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the disputed domain name. Complainant asserts that the WHOIS information, which identifies the registrant of the disputed domain as “JWi,” supports its assertion. Respondent has offered no evidence to support a finding that it is commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See 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); see also 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).
Complainant also asserts that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Respondent’s <socallandrover.com> domain name resolves to a site offering the domain name for sale. No other information is offered on the website. Thus, the Panel finds that Complainant is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the respondent registered the domain name with the intention of selling its rights); 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 finds that Complainant has established Policy ¶ 4(a)(ii).
Complainant claims that Respondent is offering the disputed domain name for sale from its website indicating bad faith registration and use. Complainant submits screen prints of the website to which the disputed domain name resolves to support its claim. The website merely consists of an offer to sell the disputed domain name to Internet users arriving at the site along with windows where Internet users may enter their information to inquire about purchasing the site. The Panel finds that Respondent registered the disputed domain name for the purpose of selling it indicating that it was registered and is being used in bad faith pursuant to Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); see also Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where the respondent offered the domain names for sale).
Complainant also claims that Respondent intends to gain commercially from the disputed domain name constituting bad faith registration and use. Respondent’s disputed domain name resolves to a site which offers to sell the disputed domain name. Presumably, Respondent intends to profit from the sale of the disputed domain name and capitalize of the Internet users diverted thereto. The Panel finds that Respondent is attempting to profit by diverting Internet users seeking Complainant to its own website. The Panel neglects to find that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv) because Respondent’s espoused use applies more readily to Policy ¶ 4(b)(i) and is not an example of bad faith registration and use under Policy ¶ 4(b)(iv). See Chestnutt v. Tumminelli, D2000-1758 (WIPO Feb. 2, 2001) (finding that the respondent did not register and use the <racegirl.com> domain name in bad faith because the complainant provided no evidence that the respondent intended to disrupt or divert business from the complainant); see also Accu-Find Internet Servs. v. AccuFind, FA 94831 (Nat. Arb. Forum June 19, 2000) (denying the complainant’s request because the complainant’s allegations that the respondent registered the disputed domain name to divert Internet users from the complainant’s business were not sufficiently substantiated under Policy ¶ 4(a)(iii)).
The Panel finds that Complainant has established Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <socallandrover.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: August 29, 2011
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