Jaguar Land Rover Limited v. Colin Bowler / Racing Green Cars Ltd
Claim Number: FA1602001663204
Complainant is Jaguar Land Rover Limited (“Complainant”), represented by Jennifer K. Ziegler of Brooks Kushman P.C., Michigan, United States. Respondent is Colin Bowler / Racing Green Cars Ltd (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thejaguarshop.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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 29, 2016; the Forum received payment on February 29, 2016.
On February 29, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <thejaguarshop.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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 1, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 21, 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@thejaguarshop.com. Also on March 1, 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 March 24, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) as Panelist.
On March 24, 2016, the Forum received email correspondence from Respondent which was not a Response to the Complaint.
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.
Complainant
Complainant uses the JAGUAR mark in relation to its manufacturing and sale of premium automobiles and sport utility vehicles. Complainant has registered the JAGUAR mark with the likes of the United States Patent and Trademark Office (“USPTO”) (Reg. No. 423,961, registered September 18, 1946), which demonstrates rights in the mark. Respondent’s <thejaguarshop.com> domain name is confusingly similar to the JAGUAR mark as it incorporates the mark in its entirety while adding the descriptive words “the” and “shop”, in addition to the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <thejaguarshop.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant ever authorized Respondent to register or use the JAGUAR mark in any manner. Further, Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <thejaguarshop.com> domain name. Rather, the domain name resolves to a website offering competing services with those offered by Complainant.
Respondent is using the <thejaguarshop.com> domain name in bad faith. Respondent’s domain name serves as a disruption of Complainant’s legitimate business purposes. In addition, Respondent has attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website, and that confusion presumably resulting in profit for Respondent.
Respondent
Respondent did not submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <thejaguarshop.com> domain name.
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 (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 uses the JAGUAR mark in relation to its manufacturing and sale of premium automobiles and sport utility vehicles. Complainant states it has registered the JAGUAR mark with the USPTO (e.g., Reg. No. 423,961, registered September 18, 1946), arguing such registrations demonstrate rights in a mark, even where Respondent operates in a different country. Panels have found that a complainant need not register its trademark in the same country as that in which the respondent operates in order to have a valid claim under the UDRP, and to satisfy the rights requirement of Policy ¶ 4(a)(i). See Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Privacy Ltd. Disclosed Agent for YOLAPT / Domain Admin, FA 1625582 (Forum July 23, 2015) (holding that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i), even though Respondent reportedly resides in the Isle of Man). Therefore, the Panel finds that Complainant’s USPTO registrations are sufficient to establish its rights in the JAGUAR mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <thejaguarshop.com> domain name is confusingly similar to the JAGUAR mark, as it incorporates the mark in its entirety, adds the descriptive words “the” and “shop”, in addition to the gTLD “.com”. Panels have found such alterations to a mark are insufficient in overcoming a finding of confusing similarity under Policy ¶4(a)(i). 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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Therefore, the Panel finds that Respondent’s <thejaguarshop.com> domain name is confusingly similar to Complainant’s JAGUAR mark under Policy ¶4(a)(i).
Complainant has proved this element.
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 (Nat. Arb. 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 (Nat. Arb. 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 argues that Respondent has no rights or legitimate interests in the <thejaguarshop.com> domain name. Complainant asserts that Respondent is not commonly known by the disputed domain name. The WHOIS information regarding the disputed domain name lists “Colin Bowler/Racing Green Cars Ltd” as the registrant of record. Respondent has not submitted a response in this proceeding to refute any of Complainant’s allegations. Therefore, in light of the available evidence, the Panel finds that there is no basis to find Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant argues that Respondent is not using the <thejaguarshop.com> domain name for a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Complainant contends that the domain name resolves to a website that features links related to the sale of automotive parts, including those of Complainant’s competitors. The links displayed include, “How to Buy Online”, “Welcome to the Jaguar Parts Shop”, and “Classic Jaguar”. Panels have found such use by a respondent is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of a disputed domain name. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”). Therefore, the Panel finds that Respondent’s <thejaguarshop.com> domain name constitutes neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Complainant has proved this element.
Complainant argues that Respondent registered and used the <thejaguarshop.com> domain name in bad faith. Complainant claims that Respondent’s use of the domain name is a disruption of Complainant’s legitimate business purposes pursuant to Policy ¶ 4(b)(iii) because the confusingly similar domain name is used to offer competing products and services. Past panels have found that a respondent’s diversion of a complainant’s customers to a respondent’s competing business is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Therefore, the Panel finds Respondent intends its disputed domain to act as a diversion, and that this is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
Complainant argues that Respondent has attempted to attract Internet users for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website through their misleading domain name. Respondent’s domain name directs Internet users to a webpage containing messages that read: “How to Buy Online,” “Welcome to the Jaguar Parts Shop,” and “Classic Jaguar.” Past panels have found that the use of a domain name in such a manner can amount to bad faith under Policy ¶ 4(b)(iv). See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market). The Panel finds that Respondent has created a likelihood of confusion for profit, and accordingly finds bad faith under Policy ¶ 4(b)(iv).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <thejaguarshop.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.), Panelist
Dated: March 31, 2016
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