Land Rover v. Private Whois landroverdealers.com
Claim Number: FA1111001415400
Complainant is Land Rover (“Complainant”), represented by Jennifer M. Hetu of Honigman Miller Schwartz and Cohn LLP, Michigan, USA. Respondent is Private Whois landroverdealers.com (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <landroverdealers.com>, registered with Internet.bs Corp.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 14, 2011; the National Arbitration Forum received payment on November 15, 2011.
On November 18, 2011, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <landroverdealers.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 November 22, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 12, 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@landroverdealers.com. Also on November 22, 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 December 20, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant is a United Kingdom-based manufacturer of high-end luxury sport utility vehicles that it sells in more than 100 countries.
Complainant began selling automobiles in 1948 under the LAND ROVER trademark.
Complainant holds trademark registrations for the LANDROVER mark which are on file with the United States Patent and Trademark Office ("USPTO"), (including Reg. No. 2,767,628, registered September 23, 2003).
Respondent registered the disputed <landroverdealers.com> domain name on August 7, 2005.
Respondent’s domain name resolves to a website featuring third-party links for “Land rover dealerships,” as well as for websites of Complainant’s commercial competitors, including “BMW Dealers,” “Jaguar Car Sales,” and others.
Respondent’s <landroverdealers.com> domain name is confusingly similar to Complainant’s LANDROVER mark.
Respondent does not have any rights to or legitimate interests in the domain name <landroverdealers.com>.
Respondent registered and uses the <landroverdealers.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 represent-tations 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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has rights in the LAND ROVER trademark under Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that a complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). This is true without regard to whether Complainant’s rights in its mark arise in a jurisdiction other than that of Respondent’s place of residence or base of operations. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates, it being sufficient that a complainant can demonstrate rights in a mark in some jurisdiction).
Respondent’s <landroverdealers.com> domain name is confusingly similar to Complainant’s LANDROVER trademark. The domain name contains Complainant’s entire mark, merely adding the descriptive term “dealers” and the generic top-level domain (“gTLD”) “.com.” The addition of a gTLD and a descriptive term to the mark of another in forming a domain name does not avoid a finding of confusing similarity under the standards of the Policy. See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions”); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002):
[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
Therefore, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s LANDROVER trademark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not have any rights to or legitimate interests in the <landroverdealers.com> domain name. Complainant is required to make a prima facie case in support of these allegations under Policy ¶ 4(a)(ii). Once Complainant has produced a prima facie case, the burden shifts to Respondent to show that it does have rights to or legitimate interest in the disputed domain name. 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 Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by a complainant, the burden then shifts to a respondent to demonstrate its rights or legitimate interests in a disputed domain name).
Complainant has established a prima facie case in support of its assertions under this head of the Policy. For this reason, and because of Respondent’s failure to respond to the Complaint filed in this proceeding, we are entitled to presume that Respondent does not have any rights to or legitimate interests in the disputed domain name. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where a respondent fails to respond to the allegations of a UDRP complaint); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002):
Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.
Nonetheless, we will examine the evidence of record, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the <landroverdealers.com> domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny, that Respondent has never been commonly known by the domain name <landroverdealers.com>, and that Respondent is not making either a bona fide offering of goods or services by means of the domain or a legitimate non-commercial or fair use of the domain. Moreover, while the WHOIS information for the domain identifies the registrant as “Private Whois landroverdealers.com”, Respondent has not produced any evidence indicating that it is commonly known by the contested domain name. On this record, we conclude that Respondent is not commonly known by the <landroverdealers.com> domain name so as to have demonstrated that it has rights to or legitimate interests in the domain under Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that a respondent was not commonly known by the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that, although a respondent listed itself as “AIM Profiles” in the pertinent WHOIS contact information, there was no other evidence in the record to suggest that that respondent was commonly known by a disputed domain name).
We also observe that Complainant asserts, without objection from Respondent, that Respondent’s domain name resolves to a website displaying links to the websites of automobile dealerships competing with the business of Complainant, under headings such as “Land rover dealerships,” “BMW Dealers” among others. In the circumstances here presented, we may comfortably presume that Respondent profits commercially in the form of click-through fees, from the visits of Internet users to the websites resolving from the sponsored links. This use of the disputed domain name 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). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website via a domain name that is confusingly similar to the mark of another was 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)); see also ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007), finding that:
using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the domain name to host links to the websites of automobile dealers competing with the business of Complainant. This behavior disrupts Complainant’s business and stands as evidence of bad faith registration and use of the domain under Policy ¶ 4(b)(iii). See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that a respondent registered and used a disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) where that respondent used the domain to advertise goods and services of a complainant’s competitors, thereby disrupting that complainant’s business); see also Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where a respondent’s website, resolving from a domain name which was confusingly similar to the mark of a complainant, featured links to websites of businesses competing with that complainant, that respondent’s use of the <redeemaamiles.com> domain name constituted bad faith disruption under Policy ¶ 4(b)(iii)).
Further, we have already concluded that Respondent profits commercially from its use of the domain name as alleged in the Complaint. For this reason, and because it is evident that Respondent has attempted to attract Internet users to its website by creating confusion with Complainant’s mark, Respondent’s conduct demonstrates that it registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where a respondent’s domain name resolved to a website offering links to third-party websites that featured services similar to those of a complainant); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003):
Respondent's … use of the … domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’
The Panel thus finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <landroverdealers.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 3, 2012
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