JAGUAR LAND ROVER LIMITED v. PAUL BARBELL / MOMENTUM TECHNOLOGY CORPORATION
Claim Number: FA1604001669967
Complainant is JAGUAR LAND ROVER LIMITED (“Complainant”), represented by Jennifer K. Ziegler of Brooks Kushman P.C., Michigan, USA. Respondent is PAUL BARBELL / MOMENTUM TECHNOLOGY CORPORATION (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jaguargear.com>, registered with eNom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 11, 2016; the Forum received payment on April 11, 2016.
On April 11, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <jaguargear.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 April 12, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 2, 2016 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@jaguargear.com. Also on April 12, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On May 4, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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’s Contentions
1. Complainant has registered the JAGUAR trademark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 423,961, registered Sept. 17, 1946). The mark is used on or in connection with the sale of motor land vehicles and automotive-related services. The <jaguargear.com> domain name is confusingly similar to the JAGUAR trademark because the domain name contains the entire mark and differs only by the addition of the generic or descriptive word “gear” and the generic top-level domain (“gTLD”) “.com.”
2. Respondent has no rights or legitimate interests. Respondent is not commonly known as the domain name, nor is Respondent a licensee of Complainant. Further, Respondent is using the domain name to sell competing goods or services, and thus cannot have rights under Policy ¶¶ 4(a)(i) and (iii).
3. Respondent has engaged in bad faith registration and use. By using the domain name to sell competing goods or services, Respondent has engaged in bad faith under Policy ¶¶ 4(b)(iii) and (iv). Furthermore, the use of the domain name makes it clear that, at the time of registration, Respondent had actual knowledge of Complainant and its trademark rights.
B. Respondent’s Contentions
1. Respondent failed to submit a response in this proceeding
1. Respondent’s <jaguargear.com> domain name is confusingly similar to Complainant’s JAGUAR mark.
2. Respondent does not have any rights or legitimate interests in the <jaguargear.com> domain name.
3. Respondent registered or used the <jaguargear.com> domain name 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(f), 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 (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 has registered the JAGUAR trademark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 423,961, registered Sept. 17, 1946). The mark is used on or in connection with the sale of motor land vehicles and automotive-related services. The Panel finds that registration with the USPTO is sufficient to establish rights under Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Complainant argues that the <jaguargear.com> domain name is confusingly similar to the JAGUAR trademark. Complainant notes that the domain name contains the entire mark and differs only by the addition of the generic or descriptive word “gear” and the generic top-level domain (“gTLD”) “.com.” As a general rule, the gTLD “.com” cannot distinguish a domain name from the trademark at issue. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). In addition, panels in the past have found that the addition of generic or descriptive words to a domain name containing the entire mark results in a confusing similarity. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent is not commonly known as the <jaguargear.com> domain name, nor is Respondent in possession of licensing rights that would allow him to use the JAGUAR mark in domain names. The Panel notes that “PAUL BARBELL” is listed as the registrant of record for the disputed domain name. The Panel also notes that the record is devoid of any evidence to indicate that Respondent is either commonly known as the disputed domain name or in possession of licensing rights. Where such a void exists, Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (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).
Complainant argues that Respondent’s use of the <jaguargear.com> domain name fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. To support this claim, Complainant asserts that the domain name is used to sell goods that compete with the goods and services offered under Complainant’s JAGUAR trademark. When finding that a domain name is or has been used to market competing goods or services, prior panels have found that such use does not amount to a bona fide offering of goods or services or a legitimate or noncommercial fair use. See Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). In this case, the Panel notes that the domain name resolves to a webpage with a message reading: “Jaguar Gear: Auto Parts, Accessories, and Upgrade Kits.” See Compl., at Attached Ex. L. As the panel did in Alcon, Inc., the Panel here finds that Respondent does not have rights under Policy ¶¶ 4(c)(i) or (iii).
First, Complainant argues that Respondent has engaged in bad faith under Policy ¶ 4(b)(iii) by disrupting Complainant’s business. In the past, panels have found that a Complainant’s business has been disrupted in bad faith where the domain name was used to market competing goods or services. For example, in DatingDirect.com Ltd. v. Aston, the respondent was using the complainant’s mark to divert customers to the respondent’s competing business. FA 593977 (Forum Dec. 28, 2005). The panel held that such diversion was evidence of bad faith pursuant to Policy ¶ 4(b)(iii). Id. Similar to DatingDirect.com Ltd., Complainant contends that Respondent is using the domain name to offer competing services, and thus run a competing business. The Panel again notes the webpage resolving from the disputed domain name, which can be found at Complainant’s attached Exhibit L. Thus, the Panel finds that Respondent is offering competing goods or services, and they too find that Respondent has engaged in Policy ¶ 4(b)(iii) bad faith.
Second, Complainant argues that Respondent has displayed bad faith under Policy ¶ 4(b)(iv) by attempting to commercially profit from a likelihood of confusion. Complainant argues that a likelihood of confusion exists because the domain name resolves to a webpage that markets competing goods or services. Furthermore, Complainant is attempting to sell competing services, so its attempt at commercial gain is evident. Again, the Panel notes Complainant’s attached Exhibit L. In the past, panels have found that such use amounts to 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). The Panel here also finds that Respondent has created a likelihood of confusion from which it either is profiting or attempting to profit, and they establish bad faith under Policy ¶ 4(b)(iv).
Complainant argues that Respondent had actual knowledge of Complainant's rights in the JAGUAR mark. Complainant argues that Respondent's use of Complainant’s name and registered trademark on the resolving webpage indicates that Respondent had actual knowledge of Complainant's mark and rights. Again, a copy of the resolving website may be found at Complainant’s attached Exhibit L. Panels have not generally regarded constructive notice to be sufficient for a finding of bad faith. Here, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (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 (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").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <jaguargear.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: May 16, 2016
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