Jaguar Land Rover Limited v. David Cullens
Claim Number: FA1505001618499
Complainant is Jaguar Land Rover Limited (“Complainant”), represented by Brian D. Wassom of Honigman Miller Schwartz and Cohn LLP, Michigan, USA. Respondent is David Cullens (“Respondent”) of Palm Harbor, Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dimmittlandrover.com> (“the Domain Name”), 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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 8, 2015; the Forum received payment on May 11, 2015.
On May 8, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the Domain Name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the Domain Name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 14, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 3, 2015 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@dimmittlandrover.com. Also on May 14, 2015, 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.
A timely Response was received and determined to be complete on June 2, 2015.
On June 5, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury as Panelist.
On June 8, 2015 Complainant filed a timely Additional Submission in compliance with the Forum’s Supplemental Rule 7.
On June 12, 2015 Respondent sent two informal emails to the Forum. The Administrative Panel (the "Panel") has taken the first into account but has disregarded the second since it does not add anything of substance to the Response.
Having reviewed the communications records, 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.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant, a United Kingdom company, has been selling motor vehicles under the trademark LAND ROVER since 1948, including in the United States since 1949. Complainant holds numerous registrations in many countries for the LAND ROVER mark, including United States registration No. 541722 issued on 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. Some of Complainant’s marks have white lettering on a green circle. The LAND ROVER mark is famous.
An authorized dealer in Complainant’s LAND ROVER vehicles, known as “Dimmit Land Rover” was established in Clearwater, Florida in 1997. Clearwater is located 8.7 miles from Respondent’s location in Palm Harbor, Florida.
The Domain Name was registered on December 23, 2004. It resolves to a web page stating: “Website coming soon!” in white lettering on a green circle and “Please check back soon to see if the site is available.”
The Domain Name is confusingly similar to Complainant’s famous LAND ROVER mark. Respondent has no rights or legitimate interests in the Domain Name, which was registered and is being used in bad faith.
As to legitimacy, Respondent’s only use of the Domain Name is in an infringing
manner. Even if Respondent had a legitimate business conducted under the “Dimmitt” surname—which does not appear to be the case—this would not legitimize Respondent’s selection of a domain name that is calculated to cause a likelihood of confusion and trade on Complainant’s goodwill. 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, DAE2007-0001 (WIPO June 16, 2007).
As to bad faith, the combination of the term LAND ROVER with the descriptive surname “Dimmitt” does not create any meaning other than an association with Complainant’s long-time licensee doing business under the same name.
Respondent uses the Domain Name to divert Internet users away from Complainant’s legitimate websites. Respondent’s use of the Domain Name disrupts Complainant’s business by diverting consumers and such use infringes upon and dilutes Complainant’s LAND ROVER mark. 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 mark, there can be no explanation other than that Respondent is attempting to highjack the goodwill of Complainant for commercial gain and to prevent Complainant from owning the Domain Name. In Toyota Motor Credit Corp. v. Mel Light, FA 1416446 (Nat. Arb. Forum Dec. 22, 2011), the panel found “sufficient evidence that Respondent registered and uses the <lexusextendedwarranty.org> domain name in an attempt to prevent Complainant’s use of its LEXUS mark in a domain name, constituting Policy ¶ 4(b)(ii) bad faith registration and use.”
Furthermore, because of the fame of the LAND ROVER mark; because it is federally registered; and because Respondent’s use of the Domain Name is so transparently opportunistic, Respondent clearly had both actual and constructive knowledge of Complainant’s rights when he registered the Domain Name. See Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“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., FA 124506 (Nat. Arb. Forum Sept. 4, 2002); see also Sea World, Incorporated v. Holix Inc., FA 924533(Nat. Arb. Forum April 19, 2007) (“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)”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum April 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).
B. Respondent
Respondent
says he has never used, listed, or in any way done anything but own this name
and has never offered to sell it for a profit or advertised it. He does
not believe he has done anything wrong. He worked for Dimmitt Land Rover and
bought the Domain Name in order to procure sales leads over 10 years ago, but
has never put it to use. He never hid the fact and was only recently contacted
in a very unprofessional manner. All he wanted was for Dimmitt to fix his truck
that he brought in for service 3 times to no avail.
C. Additional Submissions
Complainant
Respondent asserts that he registered the Domain Name while he was allegedly
employed by Complainant’s dealer-licensee, Dimmitt Land Rover (“Dealer”). Complainant has not been able to confirm this employment. More importantly, however, Respondent neither alleges nor demonstrates that the Dealer directed or authorized him to register the Domain Name. To the contrary, the Complaint alleges, and Complainant maintains, that Respondent did not have authorization to register or use the Domain Name.
Indeed, if Respondent was employed by the Dealer, that is simply one more
reason that Respondent should realize that the Domain Name contains Complainant’s famous trademark. Prior UDRP panels have agreed. See Bardón y Rufo 67, S.L. v. Marko Mattila, Auto Katti, S.L., D2012-1192 (WIPO Sep. 17, 2012) (“Respondent was a former employee of Complainant. Therefore, at the time the Respondent registered the disputed domain name it knew about the Complainant’s trademark.”); see also Banco Original do Agronegócio S.A. v. Domains By Proxy, LLC / Fernando Garcia, Case No. D2013-1960 (WIPO Jan. 23, 2014) (“Complainant further alleges that Respondent is a formal [sic] employee of Complainant, and it was never authorized to use Complainant’s trademark …, which leaves no doubts regarding the bad faith registration and absolute lack of fair use justification”). That is especially true here, where Complainant’s contractual agreements with its dealers generally prohibit dealers from owning domain names of this type. This would necessarily indicate to a dealer employee that they also are not authorized to register such domains.
Respondent
Respondent requests a copy of proof of employment at the time of purchase of the Domain Name, saying he is not sure of the exact time frame of his employment.
Complainant has failed to establish all the elements necessary to entitle it to transfer of the 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 the 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.
The Domain Name comprises Complainant’s famous LAND ROVER trademark, preceded by the personal name Dimmit. It is clearly confusingly similar to Complainant’s mark, the top level domain “.com” being generally regarded as irrelevant. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., D2000-1525 (WIPO May 2, 2001); Rollerblade, Inc. v. Chris McCrady, D2000-0429 (WIPO June 28, 2000).
Complainant has established this element.
Once a complainant establishes a prima facie case against a respondent, the burden is on the respondent to provide evidence of its rights or legitimate interests under paragraph 4(c) of the Policy, which sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in the disputed domain name for purposes of paragraph 4(a)(ii) of the Policy. Of possible relevance here is circumstance (i), which states, “[B]efore any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services.” The Panel finds that the LAND ROVER mark is distinctive and famous. Complainant’s assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interest in the Domain Name on the part of Respondent.
Paragraph 4(a)(2) of the Policy is expressed in the present tense, requiring Respondent to show that his rights or legitimate interests in the Domain Name exist at the time of the filing of the Complaint.
If, as Respondent claims, he registered the Domain Name while he was employed by Complainant’s local dealer in 2004, in order to generate sales leads for Complainant’s vehicles, the conclusion might reasonably be drawn that Respondent thereby acquired a legitimate interest in the Domain Name, whether or not he had the permission of Complainant or its dealer, since even an unauthorized reseller may under certain circumstances have a legitimate interest in a domain name that reflects another’s trademark. See ITT Manufacturing Enterprises, Inc., ITT Corporation v. Douglas Nicoll, Differential Pressure Instruments, Inc.,.D2008-0936 (WIPO July 11, 2008) (citing Volvo Trademark Holding AB v. Auto Shivuk, D2005-0447 (WIPO June 8, 2005), Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent, D2004-0481 (WIPO Aug. 20, 2004), and Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001)). However, any legitimate interest Respondent then had must have ceased upon Respondent leaving that employment. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
Complainant has established this element.
(ii) Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iv) by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
Respondent asserts that he registered the Domain Name while he was employed by Complainant’s local dealer, in order to generate sales leads for Complainant’s vehicles. Complainant has not been able to confirm such employment and Respondent appears uncertain about the dates of his employment.
Complainant refers to two cases in which former employees were found to have registered disputed domain names in bad faith, namely Bardón y Rufo 67, S.L. v. Marko Mattila, Auto Katti, S.L., D2012-1192 (WIPO Sept. 17, 2012), and Banco Original do Agronegócio S.A. v. Domains By Proxy, LLC / Fernando Garcia, D2013-1960 (WIPO Jan. 23, 2014). Although not entirely clear, in both cases it appears likely that the disputed domain name was registered after that employment ceased. Here Respondent asserts that the Domain Name was registered during his employment by Complainant’s dealer.
It is therefore clear from the Response that Respondent was well aware of Complainant’s LAND ROVER mark when he registered the Domain Name. That does not necessarily mean that the Domain Name was registered in bad faith. To the contrary, the inclusion in the Domain Name of the Dimmitt surname supports Respondent’s contention that the Domain Name was registered in order to bring trade to that dealership and this is consistent with his assertion that, at the time, he was an employee of that dealer. Even if this was done without Complainant’s or the dealer’s permission, because there are circumstances under which a registrant may have a legitimate interest in a domain name which is identical or confusingly similar to the trademark of another, the Panel is not prepared to find that Respondent’s registration, even if unauthorized, amounts to bad faith registration.
Complainant’s primary contention is that Respondent’s present use of the Domain Name is an attempt to highjack the goodwill of Complainant for commercial gain and to prevent Complainant from owning the Domain Name.
Registration in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name is evidence of both bad faith registration and bad faith use, but only where a respondent has engaged in a pattern of such conduct. There is no evidence of any such pattern in this case and Complainant does not contend that Respondent registered the Domain Name to prevent Complainant from owning it.
Bad faith use of the kind described in paragraph 4(b)(iv) of the Policy is also evidence of both bad faith registration and bad faith use. Respondent is using the Domain Name to resolve to a “coming soon” website featuring colors which Complainant says are those of some of its trademarks. Assuming that such use amounts to bad faith use within paragraph 4(b)(iv) of the Policy, the question arises whether such bad faith use can change good faith registration into bad. This was addressed in Yoomedia Dating Limited v. Cynthia Newcomer / Dateline BBS, D2004-1085 (WIPO Feb. 22, 2005) as follows:
“Previous decisions have considered the matter of good faith registration followed by bad faith use. The prevailing view is that the Policy was not designed to prevent such situations. In Substance Abuse Management, Inc. v. Screen Actors Modesl [sic] International, Inc. (SAMI), D2001-0782 (WIPO Aug. 14, 2001), the panel stated that “If a domain name was registered in good faith, it cannot, by changed circumstances, the passage of years, or intervening events, later be deemed to have been registered in bad faith”. In Teradyne Inc.Teradyne, Inc. [sic] v. 4tel Technology, D2000-0026 (WIPO May 10, 2000), the Respondent registered a domain name to reflect its own business name but subsequently sought to sell the name for profit when its business dissolved. The panel found that to decide the case on the subsequent bad faith action would “extend the Policy to cover cases clearly intended to be outside its scope.” Similarly, in Telaxis Communications Corp. v. William E. Minkle, D2000-0005 (WIPO May 7, 2000), the respondent registered the disputed domain name in good faith but subsequently began to use it in bad faith. It was held that because the registration was made in good faith the requirement of Paragraph 4(a)(iii) was not met.”
As mentioned, the kind of bad faith use described in paragraph 4(b)(iv) of the Policy is “evidence” of both bad faith registration and bad faith use but this evidence is not necessarily conclusive. It must be weighed against any evidence of good faith registration: Shirmax Retail Ltd./D¢etaillants Shirmax Lt¢ee v. CES Marketing Group Inc., eResolution Case No. AF-0104; Viz Communications, Inc., v. Redsun dba www.animerica.com and David Penava, D2000-0905 (WIPO Dec. 29, 2000).
Here a period in excess if 10 years has elapsed since Respondent registered the Domain Name, at a time when he asserts he was employed by Complainant’s dealer, an assertion that Complainant has neither confirmed nor contradicted. This factor militates against any conclusion arising from Respondent’s present use (assuming it to be in bad faith) that Respondent registered the Domain Name in bad faith in 2004.
In the result, Complainant has not shown that Respondent registered the Domain Name in bad faith. It is therefore unnecessary for the Panel to reach a conclusion as to whether Respondent is using the Domain Name in bad faith.
Complainant has failed to establish this element.
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <dimmittlandrover.com> domain name REMAIN WITH Respondent.
Alan L. Limbury, Panelist
Dated: June 15, 2015
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