Jaguar Cars Limited v. Domains By Proxy, LLC and Mel Light
Claim Number: FA1212001477048
Complainant is Jaguar Cars Limited (“Complainant”), represented by Jennifer M. Hetu of Honigman Miller Schwartz and Cohn LLP, Michigan, USA. Respondent is Domains By Proxy, LLC (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <jaguarextendedwarranty.org> registered with GoDaddy.com, LLC and <jaguarextendedwarranty.info> registered with 1&1 Internet AG.
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 December 21, 2012; the National Arbitration Forum received payment on December 21, 2012.
On December 21, 2012 GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <jaguarextendedwarranty.org> 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 agreements, and that Respondent 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 23, 2012, 1&1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <jaguarextendedwarranty.info> domain name is registered with 1&1 Internet AG and that Respondent is the current registrant of the name. 1&1 Internet AG has verified that Respondent is bound by the 1&1 Internet AG registration agreements, and that Respondent 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 31, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 22, 2013 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@jaguarextendedwarranty.org, and postmaster@jaguarextendedwarranty.info. Also on December 31, 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 January 28, 2013, 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
1. Complainant began selling high-end and luxury vehicles under the JAGUAR mark in 1935.
2. Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the JAGUAR mark (e.g., Reg. No. 423,961 registered September 17, 1946).
3. Respondent’s <jaguarextendedwarranty.org> and <jaguarextendedwarranty.info> domain names are confusingly similar to Complainant’s JAGUAR mark.
a. Each new JAGUAR-branded vehicle sold by Complainant includes a limited warranty, and Complainant also administers extended warranty contracts.
4. Respondent is not commonly known by the disputed domain names.
5. The <jaguarextendedwarranty.org> domain name resolves to a website containing information on extended warranties for Complainant’s vehicles, displaying Complainant’s logo and a photo of one of Complainant’s JAGUAR-branded vehicles.
6. The <jaguarextendedwarranty.info> domain name resolves to a website which provides links to Complainant’s competitors.
7. Respondent is attempting to hijack the goodwill of Complainant for commercial gain through the operation of each disputed domain name.
8. Respondent has a history of registering infringing domain names.
9. Complainant asserts that Respondent had knowledge of Complainant’s rights in the JAGUAR mark when Respondent registered the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the JAGUAR mark. Respondent’s domain names are confusingly similar to Complainant’s JAGUAR mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <jaguarextendedwarranty.org> and <jaguarextendedwarranty.info> 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.”).
Preliminary Issue: Multiple Respondents
Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that the registrant of both the disputed domain names is Mel Light, but that the WHOIS information for the <jaguarextendedwarranty.org> domain name identifies “Domains By Proxy” as the registrant. Complainant claims that it contacted the registrar and it was verified that the correct registrant is in fact Mel Light, and proceeds to point out that it believes that the parties are the same.
The Panel finds that Complainant has presented sufficient evidence that the disputed domain names are controlled by the same entity and thus chooses to proceed with the instant proceeding.
Registration of a mark with the USPTO is sufficient to establish rights in the mark for the purposes of Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). Complainant has provided evidence of its registrations with the USPTO for the JAGUAR (e.g. Reg. No. 423,961 registered September 17, 1946) mark. These registrations confer rights in the mark to Complainant pursuant to Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <jaguarextendedwarranty.org> and <jaguarextendedwarranty.info> domain names are confusingly similar to Complainant’s JAGUAR mark under Policy ¶ 4(a)(i). Each disputed domain name adds the terms “extended” and “warranty” to Complainant’s mark, while also adding a generic top-level domain (“gTLD”). Complainant contends that the terms “extended” and “warranty” are descriptive of Complainant’s business, as each new JAGUAR-branded vehicle sold by Complainant includes a limited warranty, and Complainant also administers extended warranty contracts. Neither the addition of terms descriptive of Complainant’s business nor the affixation of a gTLD is sufficient to distinguish the disputed domains from Complainant’s mark under Policy ¶ 4(a)(i). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied). Accordingly, the Panel determines that Respondent’s <jaguarextendedwarranty.org> and <jaguarextendedwarranty.info> domain names are confusingly similar to Complainant’s JAGUAR mark within the meaning of Policy ¶ 4(a)(i).
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.
Complainant asserts that Respondent is not commonly known by either disputed domain name pursuant to Policy ¶ 4(c)(ii), claiming that Respondent has not been authorized to use Complainant’s JAGUAR mark in any domain name. The WHOIS information for each domain lists Respondent as “Domains By Proxy, LLC and Mel Light,” which has no similarity to the disputed domain names. Moreover, Respondent has failed to present the Panel with any evidence that it is in fact commonly known by the disputed domain names. Absent evidence in the record to the contrary, the Panel finds that Respondent is not commonly known by either the <jaguarextendedwarranty.org> or the <jaguarextendedwarranty.info> domain name for the purposes of 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).
Complainant contends that neither domain is being used in accordance with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a noncommercial or fair use under Policy ¶ 4(c)(iii). Complainant claims that the <jaguarextendedwarranty.org> domain name resolves to a website containing information on extended warranties for Complainant’s vehicles, displaying Complainant’s logo and a photo of one of Complainant’s JAGUAR-branded vehicles. Respondent’s use of the <jaguarextendedwarranty.org> domain name to redirect visitors to a site which mimics Complainant’s site evidences a lack of rights and /or legitimate interests in the domain pursuant to Policy ¶ 4(a)(ii). See Am. Online, Inc. v. Advanced Membership Servs., Inc., FA 180703 (Nat. Arb. Forum Sept. 26, 2003) (“Respondent's registration and use of the <gayaol.com> domain name with the intent to divert Internet users to Respondent's website suggests that Respondent has no rights to or legitimate interests in the disputed domain name pursuant to Policy Paragraph 4(a)(ii).”).
Complainant asserts that the <jaguarextendedwarranty.org> domain name resolves to a website which provides links to Complainant’s competitors. Respondent’s use of this domain to resolve to a website which provides links to products and services that compete with those provided by Complainant under its JAGUAR mark does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a noncommercial or fair use under Policy ¶ 4(c)(iii). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant 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)).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims that Respondent has a history of registering infringing domain names, arguing that this provides evidence that Respondent registered the <jaguarextendedwarranty.org> and <jaguarextendedwarranty.info> domain names in bad faith as well. E.g., Toyota Motor Credit Corp. v. Mel Light, FA 1393651 (Nat. Arb. Form July 28, 2011);Toyota Motor Credit Corp. v. Mel Light, FA 1416446 (Nat. Arb. Form Dec. 22, 2011). The adverse decisions in each of these proceedings establishes a pattern of bad faith registration on the part of Respondent. Such pattern of bad faith registration suggests that Respondent has registered the contested domains in the immediate proceeding in bad faith pursuant to Policy ¶ 4(b)(ii) as well. See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).
Complainant contends that Respondent’s use of the disputed domain names to divert consumers away from Complainant’s legitimate sites and to Respondent’s own sites disrupts Complainant’s business and dilutes the goodwill Complainant’s JAGUAR mark has garnered. Complainant asserts that Respondent generates some sort of commercial gain from the operation of its sites. Because Complainant undoubtedly does in fact realize a commercial gain from the operation of its websites, the Panel agrees with Complainant’s assessment of Respondent’s use of the disputed domains as well. Thus, the Panel finds that such use disrupts Complainant’s business by redirecting consumers to sites which either purport to offer Complainant’s services, but in fact do not, or which provide links that directly compete with Complainant’s business. Such disruption of Complainant’s business exhibits bad faith pursuant to Policy ¶ 4(b)(iii). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); 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)).
Complainant contends that because it sells extended warranties for its JAGUAR-branded vehicles, there is a reasonable likelihood that consumers who are directed to Respondent’s sites might assume that they are seeing a site operated by Complainant related to Complainant’s warranty services. Complainant further contends that Respondent realizes a commercial gain through the operation of its websites. The Panel agrees that Respondent’s registration of two domains which are confusingly similar to Complainant’s mark suggests an attempt to create confusion as to the source of Respondent’s websites and further finds that Respondent’s attempted creation of this confusion was motivated by the prospect of commercial gain. Thus, Respondent’s registration and use of the <jaguarextendedwarranty.org> and <jaguarextendedwarranty.info> domain names for this purpose demonstrates bad faith under Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
Complainant argues that the fact that Respondent purports to sell warranties for Complainant’s JAGUAR-branded vehicles indicates that Respondent had actual knowledge of Complainant and its rights. The Panel agrees with Complainant regarding Respondent's actual knowledge concluding that Respondent registered the <jaguarextendedwarranty.org> and <jaguarextendedwarranty.info> domain names in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <jaguarextendedwarranty.org> and <jaguarextendedwarranty.info> domain names be TRANSFERRED from Respondent to Complainant
Bruce E. Meyerson, Panelist
Dated: February 11, 2013
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