Land Rover v. Autoexporters UK Limited
Claim Number: FA1209001463880
Complainant is Land Rover (“Complainant”), represented by Anessa Owen Kramer of Honigman Miller Schwartz and Cohn LLP, Michigan, USA. Respondent is Auto Exporters UK Limited (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <berkshirelandrover.com>, <landroversusa.com>, <berkshirelandroverusa.com>, and <blrdefenders.com>.
The <berkshirelandrover.com> domain name is registered with GoDaddy.com, LLC. The <landroversusa.com>, <berkshirelandroverusa.com>, and <blrdefenders.com> domain names are registered with LCN.com Ltd.
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 September 21, 2012; the National Arbitration Forum received payment on September 24, 2012.
On September 24, 2012, LCN.com Ltd. confirmed by e-mail to the National Arbitration Forum that the, <landroversusa.com>, <berkshirelandroverusa.com>, and <blrdefenders.com> domain names are registered with and that Respondent is the current registrant of the names. LCN.com Ltd. has verified that Respondent is bound by the LCN.com Ltd. 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 September 25, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <berkshirelandrover.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain name disputes brought by third parties in accordance with the Policy.
On September 25, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 15, 2012 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@berkshirelandrover.com, postmaster@landroversusa.com, postmaster@berkshirelandroverusa.com, and postmaster@blrdefenders.com. Also on September 25, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 October 25, 2012, 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 names be transferred from Respondent to Complainant.
A. Complainant
B. Respondent
Respondent failed to submit a Response in this proceeding.[1]
Complainant holds trademark rights for the LAND ROVER and DEFENDER marks. Respondent’s domain names are confusingly similar to Complainant’s marks. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <berkshirelandrover.com>, <landroversusa.com>, <berkshirelandroverusa.com>, and <blrdefenders.com> domain names, and that Respondent registered and uses the domain names 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."
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.
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.”).
Complainant claims rights in the LAND ROVER mark pursuant to its registration of the mark with various federal trademark authorities, including the UKIPO (e.g., Reg. No. 663,199 registered October 11, 1947). The registration of a mark with a federal trademark authority like the UKIPO is sufficient to establish rights in the mark for the purposes of Policy ¶ 4(a)(i). See The Royal Bank of Scot. Group plc v. TRB, FA 622345 (Nat. Arb. Forum Feb. 22, 2006) (“The Panel accepts Complainant’s registration of the THE ROYAL BANK OF SCOTLAND mark with the United Kingdom Patent Office as evidence of Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”). Accordingly, Complainant has successfully established its rights in the LAND ROVER mark under Policy ¶ 4(a)(i).
Complainant also claims rights in the DEFENDER mark pursuant to its registration of the mark with the UKIPO (e.g., Reg. No. 1,399,593 registered April 3, 1982). Complainant’s UKIPO registration successfully establishes Complainant’s rights in the DEFENDER mark under Policy ¶ 4(a)(i). See The Royal Bank of Scot. Group plc, Direct Line Ins. plc, & Privilege Ins. Co. Ltd. v. Demand Domains, c/o C.S.C., FA 714952 (Nat. Arb. Forum August 2, 2006) (holding that registration of the PRIVILEGE mark with the United Kingdom trademark authority sufficiently established the complainant’s rights in the mark under the Policy).
Complainant alleges that Respondent’s <berkshirelandrover.com>, <landroversusa.com>, and <berkshirelandroverusa.com> domain names are confusingly similar to Complainant’s LAND ROVER mark for the purposes of Policy ¶ 4(a)(i). Complainant asserts that these disputed domain names incorporate Complainant’s LAND ROVER mark in its entirety coupled with the geographic terms “Berkshire” and/or “USA.” Complainant also notes that each disputed domain name includes the generic-top level domain (“gTLD”) “.com.” Respondent’s domain names also omit the space between words in Complainant’s LAND ROVER mark. The incorporation of geographic terms does not distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). 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”). Furthermore, neither the omission of space between words in Complainant’s mark, nor the affixation of a gTLD, distinguishes the disputed domain names from Complainant’s 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)).
Complainant further alleges that Respondent’s <blrdefenders.com> domain name is confusingly similar to Complainant’s DEFENDERS mark for the purposes of Policy ¶ 4(a)(i). Complainant asserts that this domain name incorporates the entirety of Complainant’s DEFENDER mark and the abbreviation “blr,” which presumably stands for Berkshire Land Rover. Complainant contends that taken as a whole, the <blrdefenders.com> domain name is a reference to Berkshire Land Rover Defenders and that merely adding a geographic term (or an acronym standing for one) to a domain name is insufficient to avoid a likelihood of confusion. Accordingly, the Panel finds that Respondent’s <blrdefenders.com> domain name is confusingly similar to Complainant’s DEFENDERS mark for the purposes of Policy ¶ 4(a)(i). See 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.”); 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.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
The Panel finds that the WHOIS information for the disputed domain names, which identifies “Autoexporters UK Limited” as the registrant, does not support a finding that Respondent is commonly known by the <berkshirelandrover.com>, <landroversusa.com>, <berkshirelandroverusa.com>, and <blrdefenders.com> domain names, despite Respondent’s assertions that it is actually conducting business as Berkshire Land Rover. 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). Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Further, Complainant argues that Respondent is not using the <berkshirelandrover.com>, <landroversusa.com>, <berkshirelandroverusa.com>, and <blrdefenders.com> domain names for 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). Complainant contends that the <landroversusa.com> domain name simply redirects Internet users to the <berkshirelandroverusa.com> domain name, while the <berkshirelandrover.com> and <blrdefenders.com> domain names resolve to similar websites. All of the websites above feature pictures of LAND ROVER vehicles while advertising parts and customization services. Further, Respondent itself states that it is a parts reseller for Complainant’s parts. Complainant asserts that the resolving websites use its marks and logos to confuse Internet users as to Complainant’s involvement with the website. The Panel finds that such use, without Complainant’s authorization, 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 Caterpillar Inc. v. Huth, FA 169056 (Nat. Arb. Forum Sept. 2, 2003) (“Respondent lacks rights in the disputed domain names because Respondent competes with Complainant by selling Complainant's used parts without a license from Complainant to do so.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s use of the LAND ROVER and DEFENDER marks in the disputed domain names and on the resolving websites creates confusion on the part of Internet users as to Complainant’s involvement with the websites. Complainant notes that it also provides repair and maintenance services for its LAND ROVER vehicles through an authorized dealer network, and therefore Respondent’s use is competitive and will result in Respondent’s commercial gain by hijacking the goodwill of Complainant. The Panel agrees and finds that Respondent has registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Further, Complainant argues that Respondent had actual knowledge of Complainant’s prior rights in the LAND ROVER and DEFENDER marks, as evidenced by the content of the websites and through Complainant’s extensive trademark registrations. The Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel finds Complainant has satisfied 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 <berkshirelandrover.com>, <landroversusa.com>, <berkshirelandroverusa.com>, and <blrdefenders.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: November 2, 2012
[1] Although Respondent did not submit a Response to the Complaint in accordance with the Rules, in several emails Respondent made a number of arguments with respect to the allegations of the Complainant. The Panel has considered those arguments and finds that they do not warrant a different outcome in this matter.
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