Land Rover v. CSRUS Enterprises / Gerente de Dominia
Claim Number: FA1106001395620
Complainant is Land Rover (“Complainant”), represented by Anessa Owen Kramer of Honigman Miller Schwartz and Cohn LLP, Michigan, USA. Respondent is CSRUS Enterprises / Gerente de Dominia (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <landroverdiscovery.com>, registered with POWER BRAND CENTER CORP.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically June 24, 2011; the National Arbitration Forum received payment June 27, 2011.
On July 6, 2011, POWER BRAND CENTER CORP. confirmed by e-mail to the National Arbitration Forum that the <landroverdiscovery.com> domain name is registered with POWER BRAND CENTER CORP. and that Respondent is the current registrant of the name. POWER BRAND CENTER CORP. verified that Respondent is bound by the POWER BRAND CENTER CORP. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 12, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 1, 2011, 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@landroverdiscovery.com. Also on July 12, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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 August 2, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <landroverdiscovery.com>, is confusingly similar to Complainant’s LAND ROVER mark.
2. Respondent has no rights to or legitimate interests in the <landroverdiscovery.com> domain name.
3. Respondent registered and used the <landroverdiscovery.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Land Rover, first began selling vehicles under its LAND ROVER mark in 1948 and has continued to sell vehicles under that mark since that time. Complainant’s LAND ROVER vehicles have been featured in numerous movies and songs. One of Complainant’s vehicles under the LAND ROVER mark is Complainant’s DISCOVERY model. Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its LAND ROVER (e.g., Reg. No. 541,722 registered May 1, 1951) and DISCOVERY marks (e.g., Reg. No. 1,301,508 registered October 23, 1984).
Respondent, CSRUS Enterprises / Gerente de Dominia, registered the <landroverdiscovery.com> domain name October 23, 2001, some 61 years after Complainant acquired legal rights in its original mark. The disputed domain name resolves to a website containing hyperlinks to Complainant’s website and the websites of Complainant’s automotive competitors.
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."
Given 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 will draw such inferences as the Panel 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.”).
Paragraph 4(a) of the Policy requires Complainant to 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.
As Complainant holds multiple trademark registrations with the USPTO for its LAND ROVER (e.g., Reg. No. 541,722 registered May 1, 1951) and DISCOVERY marks (e.g., Reg. No. 1,301,508 registered October 23, 1984), the Panel finds that Complainant established that it has rights in the marks under Policy ¶ 4(a)(i). Complainant did not provide the Panel with a trademark registration in the country Respondent resides in; but it is not necessary for Complainant to have such a registration. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Respondent’s <landroverdiscovery.com> domain name combines Complainant’s LAND ROVER and DISCOVERY marks, removing the space between “land rover.” The only other modification to the disputed domain name is the addition of the generic top-level domain (“gTLD”) “.com.” The Panel finds that such changes fail to sufficiently distinguish the disputed domain name from Complainant’s mark, rendering the <landroverdiscovery.com> domain name confusingly similar to Complainant’s LAND ROVER mark under Policy ¶ 4(a)(i). 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)); see also Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name); 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).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected marks; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant established its own rights in the two marks that Respondent used in the confusingly similar domain name. Complainant alleges that Respondent lacks such rights and legitimate interests in the <landroverdiscovery.com> domain name. Once a complainant makes a prima facie case to support its allegations, the burden of proof shifts to the respondent to prove that it does have such rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant made a prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the <landroverdiscovery.com> domain name. However, this Panel still examines the record to determine whether evidence there suggests that Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). 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 Policy ¶ 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 Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
The Panel finds no evidence that suggests that Respondent has such rights and interests and Respondent has produced none on its own behalf. Complainant presented substantial evidence that Respondent is not commonly known by the disputed domain name. Complainant also notes that it has not given Respondent any authorization to register a domain name containing Complainant’s marks. Complainant also asserts that Respondent does not operate any business under the disputed domain name. Complainant also produced WHOIS information that ultimately identifies the disputed domain name registrant as “CSRUS Enterprises / Gerente de Dominia.” Based on these factors, the Panel finds that Respondent is not commonly known by the <landroverdiscovery.com> domain name pursuant to 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); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent’s <landroverdiscovery.com> domain name resolves to a parked website that features hyperlinks to Complainant’s website and the websites of Complainant’s competitors. The Panel determines that this use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <landroverdiscovery.com> domain name in bad faith under Policy ¶ 4(b)(i). However, Complainant did not offer any evidence that Respondent offered to sell the domain name. Therefore, the Panel finds that Complainant did not establish bad faith under Policy ¶ 4(b)(i).
Complainant also urges that Respondent registered and uses the <landroverdiscovery.com> domain name to resolve to a website containing hyperlinks to Complainant’s competitors, along with a hyperlink to Complainant’s website. Complainant does not allege bad faith under Policy ¶ 4(b)(iii), but Respondent’s use of the disputed domain name disrupts Complainant’s business by diverting Internet users to Complainant’s competitors, which the Panel determines is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant further argues that Respondent commercially benefits from the hyperlinks found on the website resolving from the <landroverdiscovery.com> domain name. As Respondent is attempting to profit by using a confusingly similar disputed domain name to create confusion as to Complainant’s affiliation with the disputed domain name, the Panel finds that Respondent also registered and uses the <landroverdiscovery.com> domain name in bad faith under a Policy ¶ 4(b)(iv) analysis. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
Complainant also contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the LAND ROVER and DISCOVERY marks. As a general rule constructive notice alone is not sufficient to support findings of bad faith registration and use. Although the LAND ROVER mark is well known and more than half a century old, Complainant did not present sufficient evidence to support findings that Respondent had actual knowledge of Complainant’s two marks that are combined in this domain name. For that reason, the Panel cannot find that Respondent registered and used the disputed domain name in bad faith under constructive and actual notice doctrines. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith).
It is only necessary that Complainant establish one of the many situations that support findings of bad faith registration and use under the Policy.
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii) and 4(b).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <landroverdiscovery.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 10, 2011.
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