Jaguar Land Rover Limited v. Domain Manager / One Common Drive, LLC.
Claim Number: FA1403001550124
Complainant is Jaguar Land Rover Limited (“Complainant”), represented by Anessa Owen Kramer of Honigman Miller Schwartz and Cohn LLP, Michigan, USA. Respondent is Domain Manager / One Common Drive, LLC. (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <jaguarextendedwarranty.com>, <jaguarextendedwarranty.net>, <jaguarfactorywarranty.com>, <jaguarwarrantys.com>, <thejaguarcxf.com>, and <landroverextendedwarranty.com>, registered with GoDaddy.com, LLC.
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 March 21, 2014; the National Arbitration Forum received payment on March 24, 2014.
On March 21, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <jaguarextendedwarranty.com>, <jaguarextendedwarranty.net>, <jaguarfactorywarranty.com>, <jaguarwarrantys.com>, <thejaguarcxf.com>, and <landroverextendedwarranty.com> domain names are 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 27, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 16, 2014 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.com, postmaster@jaguarextendedwarranty.net, postmaster@jaguarfactorywarranty.com, postmaster@jaguarwarrantys.com, postmaster@thejaguarcxf.com, and postmaster@landroverextendedwarranty.com. Also on March 27, 2014, 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 April 21, 2014, 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
a) Complainant is a well-known manufacturer of high-end and luxury vehicles which are sold in the United States and around the world. Complainant began using its marks in 1935 and is the owner of numerous registrations for the United States Patent and Trademark Office (“USPTO”) for the JAGUAR mark (e.g., Reg. No. 423,961 registered Sep. 17, 1946) and the LAND ROVER mark (e.g., Reg. No. 541,772 registered May 1, 1951).
b) The <jaguarextendedwarranty.com>, <jaguarextendedwarranty.net>, <jaguarfactorywarranty.com>, <jaguarwarrantys.com>, and <thejaguarcxf.com> domain names are confusingly similar to the JAGUAR mark. Respondent merely adds descriptive or generic terms and a generic top-level domain (“gTLD”) to create the disputed domain name.
c) The <landroverextendedwarranty.com> domain name is confusingly similar to the LAND ROVER mark. Respondent adds a gTLD, removes spacing, and adds a generic phrase to create the disputed domain name.
d) Respondent uses the disputed domain names for profit, and the resolving websites contain misleading information and content while being strikingly similar to Complainant’s authorized JAGUAR and LAND ROVER websites.
e) Respondent uses Complainant’s marks to divert its consumers to Respondent’s own website by incorporating the JAGUAR and LAND ROVER marks in the disputed domain names.
f) Respondent’s use of the <jaguarextendedwarranty.com>, <jaguarextendedwarranty.net>, <jaguarfactorywarranty.com>, <jaguarwarrantys.com>, <thejaguarcxf.com>, and <landroverextendedwarranty.com> domain names is intentionally designed to cause a likelihood of confusion with Complainant and its products and to deceive consumers into mistakenly believing that Respondent is authorized, licensed, or sponsored by Complainant. Internet users who encounter the disputed domain names are likely to assume that they relate to Complainant’s business activities and are used in connection with authorized websites. Respondent misappropriated Complainant’s goodwill by registering the disputed domain names.
g) Given the fame and uniqueness of Complainant’s JAGUAR and LAND ROVER marks, there can be no doubt that Respondent registered the disputed domain names with knowledge of Complainant’s rights in those marks.
h) The domain names in dispute were registered as follows:
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the JAGUAR and LAND ROVER marks. Respondent’s domain names are confusingly similar to Complainant’s JAGUAR and LAND ROVER marks. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <jaguarextendedwarranty.com>, <jaguarextendedwarranty.net>, <jaguarfactorywarranty.com>, <jaguarwarrantys.com>, <thejaguarcxf.com>, and <landroverextendedwarranty.com> domain name 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 asserts that it is a well-known manufacturer of high-end and luxury vehicles which are sold in the United States and around the world. Complainant began using its marks in 1935 and is the owner of numerous registrations with the USPTO for the JAGUAR mark (e.g., Reg. No. 423,961 registered Sep. 17, 1946) and the LAND ROVER mark (e.g., Reg. No. 541,772 registered May 1, 1951). Complainant’s registration of the marks is evidence of its rights in the marks under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant alleges that the <jaguarextendedwarranty.com>, <jaguarextendedwarranty.net>, <jaguarfactorywarranty.com>, <jaguarwarrantys.com>, and <thejaguarcxf.com> domain names are confusingly similar to the JAGUAR mark. Respondent merely adds descriptive or generic terms and a gTLD to create the disputed domain names. Such changes are insufficient to counter claims of confusing similarity. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, the Panel finds that Respondent’s <jaguarextendedwarranty.com>, <jaguarextendedwarranty.net>, <jaguarfactorywarranty.com>, <jaguarwarrantys.com>, and <thejaguarcxf.com> domain names are confusingly similar to the JAGUAR mark under Policy ¶ 4(a)(i).
Complainant next alleges that the <landroverextendedwarranty.com> domain name is confusingly similar to the LAND ROVER mark. Respondent adds a gTLD, removes spacing, and adds a generic phrase to create the disputed domain name. The removal of spaces and addition of a gTLD are irrelevant to a Policy ¶ 4(a)(i) decision. 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)). Again, as noted above, the addition of additional terms do not negate a finding of confusing similarity. See Am. Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001) (finding that the addition of the generic word “Net” to the complainant’s ICQ mark, makes the <neticq.com> domain name confusingly similar to the complainant’s mark). Therefore, the Panel finds that under Policy ¶ 4(a)(i) the <landroverextendedwarranty.com> domain name is confusingly similar to the LAND ROVER mark.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. 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 lacks rights and legitimate interests in the disputed domain names having established that the WHOIS records for the disputed domain names list “Domain Manager / One Common Drive, LLC.” as the domain name registrant. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant argues that Respondent uses the disputed domain names for profit, and the resolving websites contain misleading information and content while being strikingly similar to Complainant’s authorized JAGUAR and LAND ROVER websites. The Panel agrees and finds that Respondent’s use of the disputed domain names is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent has used Complainant’s marks to divert its consumers to Respondent’s own website by incorporating the JAGUAR and LAND ROVER marks in the disputed domain names. The Panel therefore finds that the disputed domain names are disruptive to Complainant’s business under Policy ¶ 4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)).
Complainant contends that Respondent’s use of the <jaguarextendedwarranty.com>, <jaguarextendedwarranty.net>, <jaguarfactorywarranty.com>, <jaguarwarrantys.com>, <thejaguarcxf.com>, and <landroverextendedwarranty.com> domain names is intentionally designed to cause a likelihood of confusion with Complainant and its products and to deceive consumers into mistakenly believing that Respondent is authorized, licensed, or sponsored by Complainant. Complainant states that Internet users who encounter the disputed domain names are likely to assume that they relate to Complainant’s business activities and are used in connection with authorized websites. Further, Complainant argues that Respondent misappropriated Complainant’s goodwill by registering the disputed domain names. Based on the foregoing the Panel finds that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iv). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith).
Complainant asserts that, given the fame and uniqueness of Complainant’s JAGUAR and LAND ROVER marks, there can be no doubt that Respondent registered the disputed domain names with knowledge of Complainant’s rights in those marks. The Panel finds that, due to the fame of Complainant's marks, Respondent had actual knowledge of the marks and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
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 <jaguarextendedwarranty.com>, <jaguarextendedwarranty.net>, <jaguarfactorywarranty.com>, <jaguarwarrantys.com>, <thejaguarcxf.com>, and <landroverextendedwarranty.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: May 5, 2014
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