Jaguar Land Rover Limited v. MOUNTAIN ROVERS, INC.
Claim Number: FA1307001507702
Complainant is Jaguar Land Rover Limited (“Complainant”), represented by Jennifer M. Hetu of Honigman Miller Schwartz and Cohn LLP, Michigan, USA. Respondent is MOUNTAIN ROVERS, INC. (“Respondent”), Montana, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mountainrovers.com>, registered with GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 1, 2013; the National Arbitration Forum received payment on July 1, 2013.
On July 1, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <mountainrovers.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 July 2, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 22, 2013 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@mountainrovers.com. Also on July 2, 2013, 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 July 24, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 name be transferred from Respondent to Complainant.
A. Complainant
A. Complainant and Its Goods and Services
1. A High-End Luxury Brand. Complainant is a well-known UK-based manufacturer of high-end and luxury sport utility vehicles, which are sold in the United States and in more than 100 countries around the world. Complainant first began selling vehicles under the LAND ROVER mark in 1948, and under the RANGE ROVER mark in 1970. Complainant began selling the LAND ROVER vehicle in the United States at least as early as 1949, and began selling the RANGE ROVER vehicle in the United States at least as early as 1987. Complainant still sells LAND ROVER and RANGE ROVER vehicles in the United States and around the world today. Since introducing the RANGE ROVER and LAND ROVER vehicles in the United States, Complainant has spent substantial sums of money to promote and advertise the brand. Complainant’s marketing, advertising, and promotion have been successful as demonstrated by the response of consumers. In 2010, approximately 32,000 LAND ROVER vehicles (including the RANGE ROVER model) were sold in the United States.
2. The LAND ROVER brand and vehicles are often referred to by customers as ROVER vehicles or ROVERS, and this term is readily associated with Complainant. In fact, Respondent refers to LAND ROVER and RANGE ROVER vehicles as ROVER(S) on its website (discussed in more detail below). While the full history of the ROVER mark is beyond the scope of this Complaint, some basic history is instructive. The ROVER mark traces its lineage back to use as a vehicle brand in England in 1904. After various intermediary changes in ownership and corporate structure, in or around the late 1990s, the BMW Group sold the ROVER car business to a consortium known as MG Rover Group Limited, but retained ownership of the ROVER trademark. Around the same time, the BMW Group sold the Land Rover business to Ford Motor Company, and the parties entered into a strict coexistence agreement pertaining to the use of the ROVER, LAND ROVER, and RANGE ROVER trademarks. In 2006, Land Rover re-acquired ownership of the ROVER mark, including the goodwill and the existing licenses for the mark. The mark continues to be used today including in the following ways: a) by licensees; b) by Jaguar Land Rover Limited in reference to its vehicles; and c) as stated above, by consumers and enthusiasts of the Land Rover brand.
3. Entry-level LAND ROVER models start in the $36,000 range, and some higher-end models, including the RANGE ROVER, retail for over $80,000. The LAND ROVER and RANGE ROVER vehicles are widely-viewed as “status symbol” and have made numerous appearances in pop culture, including in dozens of songs, on television shows and in movies. For example, a number of songs feature LAND ROVER in the lyrics, including by well-known artists such as Linkin Park, MC Lyte, and Juvenile. The Internet Movie Cars Database (IMCDB.ORG), has over 3,500 hits where LAND ROVER vehicles have appeared in television shows and movies, including various James Bond movies, Outbreak, and Sex and the City 2, and other well-known shows and movies, over a period of many years (including many well before Respondent registered the Domain Name). Similarly, a search for “RANGE ROVER” reveals over 1,000 hits and a search for “ROVER” reveals over 1500 hits where these vehicles have appeared in television shows and movies.
4. The LAND ROVER and RANGE ROVER vehicle lineups have received numerous awards over the years. The LAND ROVER brand achieved the fifth highest score in the industry for customer sales satisfaction in J.D. Power and Associates 2009 Sales Satisfaction Index (SSI) Study. The 2010 LAND ROVER LR4 was recognized as the 2010 Active Lifestyle Vehicle Luxury Off-Road winner, and the LAND ROVER LR2 was rated top of its class in the Luxury Crossover Sport Utility Vehicle (SUV) segment in the AutoPacific 2009 Vehicle Satisfaction Award research. The RANGE ROVER EVOQUE was named the 2012 SUV of the year by Esquire magazine and was named “Best of the Best” in the Sport-Utility Vehicles category by Robb Report magazine. The LAND ROVER brand was ranked third in Strategic Vision Inc.’s 2012 Total Quality Index.
5. Incredibly Valuable Goodwill. The popularity of the LAND ROVER and RANGE ROVER brands and the resulting consumer recognition is further evidenced by the fact that there is a strong market for licensed goods bearing the Land Rover Marks. Complainant has licensed the Land Rover Marks for products from luggage to clothing. The strong sales for the LAND ROVER and RANGE ROVER vehicles, the iconic pop culture status, and the strong licensing presence all indicate that LAND ROVER and RANGE ROVER are famous trademarks and brands of incredibly valuable goodwill to Complainant.
6. Complainant’s Websites. Complainant’s primary website is at www.LandRover.com. Complainant also owns the domain name LandRoverUSA.com, which redirects consumers to the US section of the LandRover.com website. The search metric database Alexa.com ranks the LandRover.com site as among the top 10,000 sites in the United States. Notably, Complainant and its licensed dealer network also own and use numerous other Domain Names consisting of the LAND ROVER mark followed by a generic, descriptive, or geographic term, including LandRoverApproved.com, LandRoverAssistance.com, LandRoverCertified.com, and LandRoverConnect.com, among many others. Complainant also owns the domain names LandRoverTriState.com and PugetSoundLandRover.com, and the licensed Land Rover dealership in Houston, Texas uses LandRoverNorth.net, the licensed dealership in Scottsdale, Arizona uses LandRoverNorthScottsdale.com, the licensed dealership in Miami, Florida uses LandRoverSouthDade.com, the licensed dealership in Farmington Hills, Michigan uses LandRoverFarmingtonHills.com, the licensed dealership in the New York borough of Manhattan uses LandRoverManhattan.com, and the licensed dealership in Encino, California uses LandRoverEncino.com. Currently, a Land Rover dealership in the South Bay area of California uses the domain LandRoverSouthBay.com. Collectively, Complainant’s domain names are referred to as the “Land Rover Domain Names.”
B. Complainant’s Trademarks
1. The Land Rover Marks symbolize the tremendous goodwill associated with Complainant, and Complainant’s goods and services. The Land Rover Marks are unique, highly distinctive and extremely valuable. The Land Rover Marks have been widely promoted among members of the general consuming public and among the automotive trade. These marks exclusively identify Complainant and its goods and services. Furthermore, due to widespread, continuous, and highly publicized use throughout the United States and the world, the LAND ROVER and RANGE ROVER marks have become famous and were famous before Respondent registered the Domain Name. The ROVER mark is also exceedingly well-known, given the widespread promotion and sale of this vehicle and the ongoing activities today since it was initially launched in the United Kingdom in 1904.
2. Complainant owns the following U.S. trademark registrations for its ROVER mark, LAND ROVER mark, and RANGE ROVER Mark:
a) U.S. Reg. No. 3585165 for the mark ROVER filed September 27, 2006, and issued March 10, 2009 for use in connection with automobiles and their structural parts and engines, fitted and semi-fitted vehicle covers, rooftop carriers, insignia badges, sunshades, steering wheel covers, grilles, bug deflectors, wheel covers, wheels, mud flaps, all for automobiles, floor mats for vehicles, and toy and toy model vehicles.
b) U.S. Reg. No. 3566367 for the mark ROVER filed September 18, 2006 and issued January 27, 2009 for use in connection with automobiles and their structural parts and engines; fitted and semi-fitted vehicle covers, rooftop carriers, insignia badges, sunshades, steering wheel covers, grilles, bug deflectors, wheel covers, wheels, mud flaps, all for automobiles, floor mates for vehicles, and toy vehicles and model vehicles.
c) U.S. Reg. No. 3474334 for the mark ROVER filed March 13, 2003, and issued July 29, 2008 for use in connection with automobiles and structural parts therefor.
d) U.S. Reg. No. 3485024 for the mark LAND ROVER filed August 9, 2006, and issued August 12, 2008, for use in connection with sports utility vehicles.
e) U.S. Reg. No. 2767628 for the mark LAND ROVER filed September 21, 2001, and issued September 23, 2003, for use in connection with motor vehicles, namely, automobiles, sport-utility vehicles, trucks and vans, and structural parts and engines therefor; bicycles.
f) U.S. Reg. No. 3099449 for the mark LAND ROVER filed July 5, 2005, and issued May 30, 2006, for use in connection with coffee.
g) U.S. Reg. No. 2860099 for the mark LAND ROVER filed January 30, 2003, and issued July 6, 2004, for use in connection with toys, game and playthings, namely toy model vehicles, replica and scale model vehicles, hobby kits for the construction of toy model and scale model vehicles.
h) U.S. Reg. No. 3653881 for the mark LAND ROVER and Design filed November 12, 2008, and issued July 14, 2009, for use in connection with mobile phones, batteries and battery chargers, antennas, cases for mobile phones, hands-free kits for phones, wired and wireless headsets for phones, flotation devices for protecting phones in water.
i) U.S. Reg. No. 3524906 for the mark LAND ROVER and Design filed March 28, 2007, and issued October 28, 2008, for use in connection with automobile repair and maintenance.
j) U.S. Reg. No. 3425313 for the mark LAND ROVER and Design filed February 12, 2007, and issued May 13, 2008, for use in connection with binoculars; spectacles; sunglasses.
k) U.S. Reg. No. 3529057 for the mark LAND ROVER filed February 10, 2005, and issued November 4, 2008, for use in connection with furniture.
l) U.S. Reg. No. 3340419 for the mark LAND ROVER filed September 13, 2001, and issued November 20, 2007, for use in connection with providing information in the field of vehicles and entertainment services, namely, arranging and organizing sporting competition in the field of vehicle races and off-road driving courses; educational services, namely, arranging and conducting conferences, congresses, symposiums, workshops, courses and seminars in the field of off-road driving, vehicles, four-wheel drive vehicles, vehicle club services; sport camp services; production of television and live entertainment shows; and consultancy services related thereto; providing information in the field of competitive racing.
m) U.S. Reg. No. 2339826 for the mark LAND ROVER filed April 28, 1998, and issued April 11, 2000, for use in connection with footwear.
n) U.S. Reg. No. 2268738 for the mark LAND ROVER filed April 28, 1998, and issued August 10, 1999, for use in connection with trousers, belts, sweater vests, shirts, sports shirts, sport coats, outdoor jackets, pants, skirts, sweaters, riding skirts, polo sweaters, blouses, shorts, socks, turtle necks, polo shirts, caps, t-shirts, sweat shirts, sweat pants, coats, ties, overalls and gloves.
o) U.S. Reg. No. 2260874 for the mark LAND ROVER and Design filed April 28, 1998, and issued July 13, 1999, for use in connection with trousers, belts, sweater vests, shirts, sports shirts, sport coats, outdoor jackets, pants, skirts, sweaters, riding skirts, polo sweaters, blouses, shorts, socks, turtle necks, polo shirts, caps, t-shirts, sweat shirts, sweat pants, coats, ties, overalls and gloves.
p) U.S. Reg. No. 2303630 for the mark LAND ROVER and Design filed April 28, 1998, and issued December 28, 1999, for use in connection with footwear.
q) U.S. Reg. No. 2362458 for the mark LAND ROVER filed August 10, 1995, and issued June 27, 2000, for use in connection with bicycles.
r) U.S. Reg. No. 2092438 for the mark LAND ROVER and Design filed March 1, 1995, and issued September 2, 19970, for use in connection with financing and insured financing of the purchasing and leasing of motor vehicles; credit insurance, mechanical breakdown insurance, and extended warranty insurance for motor vehicles; administration of financial and insurance service agreements providing for repairs of motor vehicles, towing, gas delivery, and flat tire service for disabled vehicles; reimbursement for substitute transportation, lodging and meals; and motor vehicle insurance underwriting.
s) U.S. Reg. No. 2120770 for the mark LAND ROVER filed August 10, 1995, and issued December 16, 1997, for use in connection with bicycles.
t) U.S. Reg. No. 2092426 for the mark LAND ROVER filed December 29, 1994, and issued September 2, 1997, for use in connection with travel services connected with safaris utilizing sport utility vehicles, namely, arranging travel tours, providing tour guides, making reservations and booking for transportation, providing off-road driving experience, and arranging for post-safari excursions.
u) U.S. Reg. No. 1999030 for the mark LAND ROVER filed July 29, 1994, and issued September 10, 1996, for use in connection with vehicle driving instruction services and educational services, namely providing courses of instruction in four-wheel drive and off-road driving techniques, vehicle mechanics, map reading, driving safety and environmental responsibility as concerns land vehicles.
v) U.S. Reg. No. 1972267 for the mark LAND ROVER and Design filed July 29, 1994, and issued May 7, 1996, for use in connection with vehicle driving instruction services and educational services, namely providing courses of instruction in four-wheel drive and off-road driving techniques, vehicle mechanics, map reading, driving safety and environmental responsibility as concerns land vehicles.
w) U.S. Reg. No. 1138108 for the mark LAND ROVER filed December 26, 1978, and issued July 22, 1980, for use in connection with retail store services in the field of shoes, clothing and accessories therefor.
x) U.S. Reg. No. 1508235 for the mark LAND ROVER filed May 8, 1987, and issued October 11, 1988, for use in connection with jackets and blazers.
y) U.S. Reg. No. 1201939 for the mark LAND ROVER and Design filed January 13, 1981, and issued July 20, 1982, for use in connection with automobiles and structural parts therefor.
z) U.S. Reg. No. 541722 for the mark LAND ROVER filed March 17, 1949, and issued May 1, 1951, for use in connection with motor cars, commercial motor road vehicles namely, trucks, truck trailer combinations, estate wagons, and structural parts thereof.
aa) U.S. Reg. No. 0929034 for the mark RANGE ROVER filed July 13, 1970, and issued February 15, 1972, for use in connection with road and cross-country motor car of the station-wagon type and structural parts thereof.
bb) U.S. Reg. No. 4053166 for the mark RANGE ROVER filed May 3, 2011, and issued November 8, 2011, for use in connection with automobiles and structural parts therefor.
cc) U.S. Reg. No. 4053167 for the mark RANGE ROVER filed May 3, 2011, and issued November 8, 2011 for use in connection with automotive maintenance and repair.
Complainant owns hundreds more registrations for the Land Rover Marks outside of the United States.
2. Complainant’s trademark rights in the Land Rover Marks, based on its extensive trademark registrations and on its common law rights acquired through the use of the Land Rover Marks, and corresponding Land Rover Domain Names, long predate Respondent’s registration of the Domain Name.
C. Respondent’s Infringing Activities and Bad Faith Acts
1. Respondent misappropriated Complainant’s goodwill when it registered the Domain Name, which is confusingly similar to Complainant’s Land Rover Marks, and the LandRover.com domain name, as well as Complainant’s other Land Rover Domain Names, including those referenced. Specifically, the Domain Name incorporates Complainant’s ROVER Mark in its entirety coupled with the generic term “mountain,” and the generic top-level domain (“gTLD”) “.com.” “[C]ombining [a] mark with a single generic term does not remove the disputed domain name from the realm of the confusingly similar.” Grohe AG v. grohedealer.com Private Registrant, FA1011001355832 (Nat. Arb. Forum Dec. 1, 2010) (finding that respondent’s GROHEdealer.com domain name was confusingly similar to complainant’s GROHE trademark according to Policy ¶4(a)(i)). See also Sears Brands, LLC v. James Smith, FA1211001473818 (Nat. Arb. Forum Jan. 3, 2013) (“The Panel also finds that the disputed domain name is confusingly similar to the SEARS trademarks, being distinguished only by the descriptive term “investments” and the gTLD “.com” which add no distinctiveness to the disputed domain name”); Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the disputed domain name <amextravel.com> 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)); and Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain name was confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end).
Additionally, the Domain Name can be viewed as incorporating a term that is confusingly similar to Complainant’s LAND ROVER mark and RANGE ROVER mark coupled with a generic term and a gTLD. As discussed above, LAND ROVER and RANGE ROVER vehicles are often referred to as ROVERS or ROVER vehicles. In Transamerica Corporation v. domstrad.com c/o J donoghue aka James Donoghue, FA0801001140400 (Nat. Arb. Forum April 2, 2008), the Panel found the disputed domain name <transamwarranty.com>, which contained a shortened version of Complainant’s TRANSAMERICA mark coupled with a generic term, to be confusingly similar to the complainant’s mark.
Moreover, the term “mountain” can also be regarded as a geographically descriptive term because Respondent is located in Billings, Montana, which is considered a mountainous region. Therefore, customers who encounter the domain name MOUNTAINROVERS.COM are likely to assume it is either a genuine website operated by Complainant or that it is authorized or sponsored by Complainant in a manner similar to authorized dealer network websites that use the LAND ROVER mark in connection with a geographically descriptive term. “[I]t is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.” Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004); see also AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that the <axachinaregion.com> domain name is confusingly similar to the complainant's trade mark “AXA” because “common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights”); Land Rover v. HK Domain Privacy/Name Administrator, FA1008001341065 (NAF Sept. 29, 2010) (finding that the addition of the geographic term “USA” rendered the disputed domain (rangeroverusa.com) confusingly similar to the complainant’s mark, RANGE ROVER); Jaguar Cars Limited v. Thorsten Pfeffer, FA1012001364292 (NAF Feb. 4, 2011) (finding that the addition of the geographically descriptive term “ORLANDO” to the complainant’s mark, JAGUAR, resulted in the confusingly similar domain jaguarorlando.com); and VeriSign, Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding confusing similarity between the complainant’s VERISIGN mark and the verisignindia.com and verisignindia.net domain names where the respondent added the word “India” to the complainant’s mark).
Furthermore, the addition of a gTLD is of no consequence to the Policy ¶4(a)(i) analysis. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶4(a)(i) analysis.”).
Accordingly, consumers who encounter the Domain Name are likely to assume that it relates to Complainant’s business.
2. Given the uniqueness and fame of the Land Rover Marks, there can be no doubt but that Respondent registered the Domain Name to trade upon Complainant’s goodwill and to attract and divert Complainant’s online customers for profit. By the time Respondent registered the Domain Name, Complainant’s Land Rover Marks had been well-established and at least the LAND ROVER and RANGE ROVER marks considered famous. The website associated with the Domain Name (the “Infringing Website”) further establishes Respondent’s bad faith. The Infringing Website prominently displays the famous and widely-registered Land Rover Oval Logo (without authorization of Complainant). Additionally, as indicated above, Respondent consistently refers to LAND ROVER and RANGE ROVER vehicles as ROVER(S) on the Infringing Website. The Infringing Website contains information about Respondent’s “Rovers for Sale” and lists “[s]ome of our Rover sales,” and also describes certain LAND ROVER vehicles as follows: “A great highway cruiser plus very capable off road Rover.” The “What We Do” section of the Infringing Website indicates that Respondent offers “Parabolic Springs for Series Rovers” and that Respondent will “undertake a search for the Rover of your dreams.”
3. Similarly, there can be no question but that Respondent is referring to Complainant’s well-known and widely-registered Land Rover Marks in the Domain Name. The Infringing Website advertises that Respondent is a “Classic Series Land Rover Importer[]” and references the name “Mountain Rovers” throughout. This is further evidence of bad faith, as it indicates that Respondent is attempting to hold itself out as authorized by or affiliated with Complainant.
4. Commencing on March 16, 2012, Complainant has sent numerous cease and desist letters to Respondent via regular mail to the Belgrade, Montana and Billings, Montana postal addresses listed on the Infringing Website, as well as via email to the email address listed on the Infringing Website. Complainant also attempted to contact Respondent directly through the “Contact Us” section of the Infringing Website. Complainant never received a response to any of its letters or emails, and each letter sent via regular mail was returned to Complainant.
5. Respondent’s use of the Domain Name with the Infringing Website was intentionally designed to cause a likelihood of confusion with Complainant and its services and to deceive consumers into mistakenly believing that Respondent is authorized, licensed, or sponsored by Complainant; or is otherwise connected, associated, or affiliated with Complainant and/or its Land Rover Marks and the Land Rover Domain Names. The Infringing Website contains further misleading information and content, and does not contain any legitimate non-infringing offering of products or services. Moreover, the Domain Name is strikingly similar to Complainant’s Land Rover Domain Name.
6. As evidenced above, Respondent’s misappropriation of the Domain Name has injured and will continue to irreparably injure the reputation and hard-earned goodwill of Complainant and its Land Rover Marks. If Respondent is allowed to retain ownership of the infringing Domain Name, Internet users will continue to be confused and deceived, and Complainant’s reputation will be harmed.
VI. RESPONDENT HAS NO RIGHTS OR LEGITIMATE INTEREST IN THE DOMAIN NAME
1. As stated above, Respondent’s only use of the Domain Name is in an infringing manner. While Respondent may have a legitimate business in selling or servicing LAND ROVER and RANGE ROVER vehicles, this does not legitimize Respondent’s website content and selection of a domain name that was calculated to cause a likelihood of confusion and trade on Complainant’s goodwill. See Volvo Trademark Holding AB v. Peter Lambe, WIPO Case No. D2001-1292 (in transferring volvoexhausts.com, the panelists stated“[T]he manufacturer of spare parts is entitled to a certain limited use of the trademark of the manufacturer of the original products in connection with the bona fide offering of these goods, but this principle does not entitle the said manufacturer to incorporate the trademark in his business name or . . . a domain name.”). Numerous UDRP panelists have held that “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant.” See eBay Inc. v. Akram Mehmood, WIPO Case No. DAE2007-0001.
VII. RESPONDENT’S BAD FAITH UNDER SECTION 4(B) OF THE UDRP
1. Respondent’s registration and use of the Domain Name meets the bad faith element set forth in §§4(b)(i), (ii), (iii) and (iv) of the UDRP. Respondent registered a domain name comprised entirely of the ROVER Mark, or viewed another way, a term that is confusingly similar to the LAND ROVER and RANGE ROVER marks (both of which are strong trademarks), which is commonly used to refer to these vehicles, coupled with a generic and/or geographically descriptive term. In the present case, the term ROVER has no meaning other than as Complainant’s ROVER trademark or as a reference to Complainant’s LAND ROVER and RANGE ROVER trademarks. Nor does the combination of the term ROVERS with the generic/geographically descriptive term “mountain” create any meaning other than an association with Complainant. Respondent uses the Domain Name to divert internet users to its Infringing Website. Respondent’s use of the Domain Name is likely to cause confusion with and dilution of Complainant’s Land Rover Marks. Moreover, because Complainant provides sales, repair, and maintenance services for its LAND ROVER and RANGE ROVER vehicles using an authorized retail dealer network, there is a reasonable likelihood that consumers who are directed to the Infringing Website might assume that they are seeing a genuine LAND ROVER or RANGE ROVER importer or service or repair shop.
2. Respondent’s registration and use of the Domain Name meets the bad faith element set forth in Section 4(b)(i) and (iv) of the UDRP. Specifically, because Respondent has no legitimate non-infringing interest in the Domain Name and because it is clearly likely to cause confusion with Complainant’s Land Rover Marks, there can be no explanation other than that Respondent is attempting to highjack the goodwill of Complainant for commercial gain.
3. Furthermore, because of the fame of the LAND ROVER and RANGE ROVER marks and the well-known status of the ROVER mark, along with the fact that Respondent services vehicles known by these names, Respondent clearly had prior knowledge of Complainant’s rights when it registered the Domain Name. Respondent also had constructive knowledge of Complainant’s marks, because the marks are well-known and federally registered, and because Respondent’s use is so transparently opportunistic. See Orange Glo Int’l v. Blume, (NAF FA 118313) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof”). “[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.” Digi Int’l v. DDI Sys. (NAF FA 124506); see also Sea World, Incorporated v. Holix Inc. (NAF FA0702000924533) (“registration of a domain name containing Complainant’s well-known mark with knowledge of Complainant’s rights is evidence of bad faith registration and use pursuant to Policy ¶4(a)(iii)”); Samsonite Corp. v. Colony Holding, (NAF FA 94313) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration). Accordingly, Complainant has established bad faith.
4. Finally, Respondent’s unwillingness to comply with Complainant’s request to transfer the Domain Name is further evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is not identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has rights or legitimate interests in respect of the domain name; and
(3) the domain name was not registered in bad faith and is not being used 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 Complainant to prove each of the following three elements to obtain an order canceling or transferring a domain name:
(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 is a well-known UK-based manufacturer of high-end and luxury sport utility vehicles, which are sold in the United States and in more than 100 countries around the world. Complainant is the owner of trademark registrations with the United States Patent & Trademark Office (“USPTO”) for the LAND ROVER mark (e.g., Reg. No. 541,722, registered May 1, 1951). Complainant’s registration of the LAND ROVER mark with the USPTO sufficiently demonstrates rights in the mark under Policy ¶4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶4(a)(i)).
Complainant has registered its ROVER mark in a variety of countries. See Uruguay Reg. No. 274,686 registered Oct. 23, 1995; United Kingdom Patent and Trademark Office ("UKPTO") Reg. No. 1,509,419 registered on August 12, 1992. The registration of the ROVER mark in multiple jurisdictions sufficiently evidences Complainant’s Policy ¶4(a)(i) rights. See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶4(a)(i).”).
The <mountainrovers.com> domain name incorporates Complainant’s ROVER mark in its entirety coupled with the term “mountain,” and the gTLD “.com.” Respondent’s addition of a gTLD does not affect a Policy ¶4(a)(i) analysis. However, this Panel does not believe Complainant’s mark is confusingly similar to Complaint’s marks. The addition of ANY word to Complainant’s mark does not automatically create confusing similarity.
The Panel finds Policy ¶4(a)(i) NOT satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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.”).
The Panel is not required to suspend its common sense because a Respondent does not appear in a proceeding.
Complainant was a little too glib in its submission of the WHOIS information to this Panel. Complainant somehow forgot to include the registered owner’s name in the WHOIS material, although that is very easy for the Panel to determine…by looking at the top the Complaint. Mountain Rovers, Inc. registered the disputed domain name and Respondent is clearly commonly known by that name. Complainant has failed to prove its case under Policy ¶4(c)(ii).
It should be noted Respondent has been actually using this disputed domain since February 12, 1998, all without objection until March 16, 2012. Certainly Complaint is guilty of latches by allowing Respondent to use the disputed domain without objection for 5,146 days. All during that time, Respondent was acquiring rights to the disputed domain name. This Panel has held rights can be fairly quickly obtained by bona fide use (Policy ¶4(c)(i)):
Case Docket #
Opus Northwest Construction v. Opus Realty FA0408000318960 Acquired-10 years
VideoCall Company v M Koenig c/o Techton LLC FA0307000167922 Acquired-5.3 years
Target Brands, Inc. v. 4160894 Canada Inc. FA0401000227648 Acquired-4 years
Target Brands, Inc. v. ALDnet Media Group FA0401000227647 Acquired-1.75 years
Global Informational Licensing v. Bankers Online FA0405000267427 Not Acquired-4 months
Yupi Internet Inc. v. Mercantil Inc. FA0207000117302 Acquired-3.5 months
This Panel has no qualms in finding Respondent has acquired rights to the disputed domain name with Complainant’s tacit acquiescence.
The Panel finds Policy ¶4(a)(ii) NOT satisfied.
The Policy sets forth a non-exclusive list of ways to determine whether or not a disputed domain name has been registered and is being used in bad faith:
Policy ¶4(b)(i) finds bad faith if there are circumstances indicating Respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the owner of the mark or to a competitor of that complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name. That isn’t the case here.
Policy ¶4(b)(ii) finds bad faith if Respondent registered the domain name to prevent the owner of the mark from reflecting the mark in a corresponding domain name, provided Respondent has engaged in a pattern of such conduct. That isn’t the case here. Complainant has numerous domain names which reflect its mark, including LandRover.com.
Policy ¶4(b)(iii) finds bad faith if Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor. That isn’t the case here. Complainant and Respondent’s aren’t even competitors.
Policy ¶4(b)(iv) finds bad faith if Respondent intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site by using the disputed domain name to create a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site. That isn’t the case here. Respondent actually sells cars manufactured by Complainant.
Respondent has admittedly used Complainant’s oval logo. However, that is only used in the context of selling cars manufactured by Complaint or its predecessor.
Complainant believes it has demonstrated Respondents bad faith solely by demanding the domain name be transferred and Respondent’s failure to do so. This Panel thinks not.
The Panel finds Policy ¶4(a)(iii) NOT satisfied.
Complainant certainly knew all of this when it filed this Complaint, which was clearly unfounded from the moment it was filed. How could Complainant possibly think it could prevail on the issue of whether or not Respondent had rights to the domain when Respondent is actually known by the domain name? It couldn’t. While others might argue this Panel’s rulings on other points could not be anticipated, any Panel worth its salt would have found Respondent had rights under Policy ¶4(c)(ii). Complainant has engaged in a clear case of reverse domain name hijacking.
Having considered all three elements required under the ICANN Policy, the Panel concludes relief shall be DENIED.
Accordingly, it is Ordered the <mountainrovers.com> domain name REMAIN WITH Respondent.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: August 15, 2013
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