Aston Martin Lagonda Limited v. will jiang et al.
Claim Number: FA1611001704290
Complainant: Aston Martin Lagonda Limited of Warwick, Unknown, United Kingdom.
Complainant Representative:
Complainant Representative: Aaron B Newell of London, United Kingdom.
Respondent: will jiang of Wu Han Shi, Hu Bei, International, CN.
Respondent Representative: Unknown
REGISTRIES and REGISTRARS
Registries: DotSite Inc.; Uniregistry, Corp.
Registrars: Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn)
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 Examiner in this proceeding.
Luz Helena Villamil Jimenez, as Examiner.
Complainant submitted: November 22, 2016
Commencement: November 23, 2016
Default Date: December 8, 2016
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
The case at hand refers to the domains <astonmartin.click>, <astonmartin.gift> and <astonmartin.site> registered by will jiang of Wu Han Shi, Hu Bei, International, CN. Complainant contends that the registered domain names <astonmartin.click>, <astonmartin.gift> and <astonmartin.site> are identical to the Complainant’s registered trade mark rights and brand.
In accordance with the provisions of URS, Complainant claims
(i) that the domain names <astonmartin.click>, <astonmartin.gift> and <astonmartin.site> are identical to a word mark for which the Complainant holds a valid national or regional registration and that is in current use;
(ii) that the Registrant has no legitimate right or interest to the domain name, and
(iii) that the domain name was registered and is being used in bad faith.
Complainant mentions that it is the owner of the trademark ASTON MARTIN.
Furthermore, it informs that Aston Matin Lagonda Limited owns over 900 filed trade marks on over 80 registers around the world, including EUTM registration N° 8387815 and China TM registration N° 767245 both for ASTON MARTIN which cover, inter alia, vehicles and parts and fittings for vehicles (class 12) and retail services connected with the sale of automobiles and automotive goods (class 35).
Complainant asserts that Respondent is not authorized to use the ASTON MARTIN name; that Respondent has targeted the Complainant three times at three different registrations demonstrating a pattern of cybersquatting; that Respondent has secured domain names identical to other famous automobile brands including bentley.click, bugatti.help, porsche.gift (all also registered 15 November 2015) and also googleplus.net; that Respondent has incorporated third party brands into domain names for over a decade, as seen by its registration of googleplus.net on 26 August 2004; that Respondent was subject to an adverse UDRP decision in respect of the domain googleplus.net, in which Respondent was found to have used this domain name in bad faith; lastly, Complainant claims that Respondent would have been notified of the registration for the trademark ASTON MARTIN with the Trademark Clearing House, and despite this fact, registered the disputed domains.
Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.
[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar to a word mark:
(i) for which the Complainant holds a valid national or regional registration and that is in current use; or
(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.
Determined: Finding for Complainant
Complainant submitted evidence to demonstrate that it is the owner of the trademark ASTON MARTIN, and that said trademark is in use.
[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.
Determined: Finding for Complainant
The Examiner concurs with the Complainant in that the disputed domain names <astonmartin.click>, <astonmartin.gift> and <astonmartin.site> identically reproduce the registered trademark ASTON MARTIN. Moreover, since said trademark is registered with the Trademark Clearing House, when registering the domains <astonmartin.click>, <astonmartin.gift> and <astonmartin.site> the Respondent must have received a notification with the registered mark’s details to inform him about a potential conflict. Going ahead with the registration of the domain names suggests that there is bad faith on the part of the Respondent.
On the other hand, the Complainant submitted evidence to demonstrate that the Respondent has indeed registered in the past domains that are identical and consist of other famous automobile brands such as Bentley.click and Bugatti.help. Thus, it is clear that in fact there exists a pattern on the part of the respondent of registering domains in his name that reproduce third parties trademarks, and this behavior evidences that the Respondent does not have a legitimate right or interest to the domain names, but rather an interest of benefiting from others’ prestige and goodwill. No doubt it is for this reason that he received an adverse UDRP decision on the dispute concerning the domain googleplus.net.
Moreover, since Respondent has defaulted, there is no evidence to establish any rights or legitimate interests in respect of the domain name in his favor.
[URS 1.2.6.3] The domain name was registered and is being used in bad faith:
a. Registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.
Determined: Finding for Complainant
In the present case, the disputed domain names consist of the words <astonmartin.click>, <astonmartin.gift> and <astonmartin.site>, which happen to exactly reproduce the registered trademark ASTON MARTIN owned by the Complainant. The identical reproduction of a distinctive trademark in a domain name is hardly the result of casualty, and aside of making evident that the registrant is acting on bad faith, it does suggest an intention to mislead those who have access to the name by leading them to believe it also belongs to the owner of the registered trademark. This behavior also demonstrates an undeniable intention of taking advantage of the prestige of a trademark as ASTON MARTIN which, as mentioned by the Complainant, boasts a longstanding association with the James Bond franchise, featuring in 11 films over a 50 year period which promote Aston Martin vehicles as “James Bond’s car”.
After reviewing the Complainant’s submissions, the Examiner determines that
the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be SUSPENDED for the duration of the registrations.
Luz Helena Villamil Jimenez, Examiner
Dated: December 12, 2016
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