Aston Martin Lagonda v. Fur-out
Claim Number: FA1611001704925
Complainant: Aston Martin Lagonda of Warwick, United Kingdom.
Complainant Representative:
Complainant Representative: Aaron B Newell of London, United Kingdom.
Respondent: Fur-out of Canberra, ACT, International, AU.
Respondent Representative: Unknown
REGISTRIES and REGISTRARS
Registries: .CLUB DOMAINS, LLC
Registrars: Crazy Domains FZ-LLC
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 29, 2016
Commencement: November 30, 2016
Default Date: December 15, 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 <astonmartindb4.club>, <astonmartindb6.club> and <astonmartin-usa.club> registered by Fur-out Fur-out of 69 Franklin Street Forrest Canberra, ACT 2603 AU. Complainant contends that the registered domain names <astonmartindb4.club>, <astonmartindb6.club> and <astonmartin-usa.club> are identical or confusingly similar to the Complainant’s registered trademark rights and brand.
In accordance with the provisions of URS, Complainant claims
(i) that the domain names <astonmartindb4.club>, <astonmartindb6.club> and <astonmartin-usa.club> are strikingly similar to the Complainant registered trademark and brand.
(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 claims that it is the owner of the trademark ASTON MARTIN, which identifies luxury sports cars. Complainant adds that it 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”.
Furthermore, Complainant 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 the Respondent is not authorized to use the ASTON MARTIN name; that following an adverse URS decision made against him in respect of aston-martin.club on 6 November 2014, Respondent has continued to renew astonmartin-usa.club and has subsequently used it for the purposes of click through advertising, evidencing clear intention of seeking to profit from the DN and the ASTON MARTIN name. The Complainant also informs that Respondent has listed astonmartindb4.club and astonmartindb6.club for sale (including as “premium domain names”) clearly seeking to profit from the DNs and the ASTON MARTIN name. Lastly, according to the Complainant the Respondent has secured various domain names containing other famous automotive brands, demonstrating knowledge of famous
brands and a pattern of targeting these and AML in bad faith, including alfaromeo105.club, bugatti-europe.club, ferrari- usa.club and fiat-500.club.
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 <astonmartindb4.club>, <astonmartindb6.club> and <astonmartin-usa.club> reproduce the registered trademark ASTON MARTIN. Moreover, since said trademark is registered with the Trademark Clearing House, when registering the domains <astonmartindb4.club>, <astonmartindb6.club> and <astonmartin-usa.club> 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 FERRARI-USA.CLUB and FIAT-500.CLUB. Thus, it is undeniable 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 URS decision on the dispute concerning the domain aston-martin.club on November 6, 2014.
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 <astonmartindb4.club>, <astonmartindb6.club> and <astonmartin-usa.club>, which happen to reproduce the registered trademark ASTON MARTIN owned by the Complainant. The inclusion of a distinctive trademark in a domain name is hardly the result of casualty, and aside of making evident that the registrant is acting in 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, and this is confirmed by the fact that the Respondent has listed the domains astonmartindb4.club and astonmartindb6.club for sale (including as “premium domain names”) clearly seeking to profit from the DNs and the ASTON MARTIN name.
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 registration:
<astonmartindb4.club>, <astonmartindb6.club> and <astonmartin-usa.club>
Luz Helena Villamil Jimenez, Examiner
Dated: December 15, 2016
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