Jaguar Land Rover Limited v. JORDAN MCKENNA / JMS NORTH EAST LIMITED
Claim Number: FA1601001657292
Complainant is Jaguar Land Rover Limited (“Complainant”), represented by Jennifer K. Ziegler of Brooks Kushman P.C., Michigan, United States. Respondent is JORDAN MCKENNA / JMS NORTH EAST LIMITED (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xtypeparts.com>, registered with eNom, Inc.
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 Forum electronically on January 20, 2016; the Forum received payment on January 20, 2016.
On January 20, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <xtypeparts.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 January 21, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 10, 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@xtypeparts.com. Also on January 21, 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 February 12, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
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 the domain name be transferred from Respondent to Complainant.
A. Complainant
A. Complainant’s Trademark Rights and Website
1. Complainant is a globally renowned manufacturer of premium automobiles and sport utility vehicles, based in the Midlands region of England. Complainant operates from its two engineering centers at the Whitley plant in Coventry and the Gaydon site in Warwickshire, and its manufacturing plants in Castle Bromwich and Solihull near Birmingham and Halewood near Liverpool. Complainant employs over 20,000 people in the United Kingdom and is therefore the top automotive manufacturing employer in the UK.
2. Since 1935, Complainant has produced and sold vehicle models under the Jaguar® brand. In the course of its activities, Complainant has built up extensive Intellectual Property rights, including a large portfolio of trademark registrations and common law rights in its JAGUAR trademark, among others.
3. In October 2001, Complainant introduced its Jaguar X-Type® vehicle. Complainant manufactured new vehicles under the X TYPE Mark from 2001 to 2009, selling over 150,000 new X-Type® vehicles during that time. The X-Type® vehicle was Jaguar’s best-selling model during almost its entire production run.
4. Complainant’s X-Type® vehicle won Autoweek magazine’s Editors Choice Award for “Most Significant Car” at the 2001 Geneva Motor Show.
5. Through its network of authorized dealers, Complainant sells Certified Pre-Owned X-Type® vehicles and sells a wide variety of parts and accessories for its X-Type® vehicle. The Autotrader website show numerous pre-owned X-Type® vehicles being sold by Complainant and/or its authorized dealers.
6. Complainant is the owner of the X TYPE Mark.
7. Complainant is the owner of United States Trademark Registration No. 2559450 for X TYPE for “land vehicles, namely automobiles and structural part therefor,” which issued April 9, 2002 and was renewed October 13, 2011. This registration has become incontestable in accordance with the United States Trademark Act.
8. Complainant is the owner of Community Trademark Registration No. 1189778 for X TYPE for “land vehicles and parts and fittings therefore, excluding tyres,” which issued August 7, 2000.
9. Complainant is the owner of numerous registrations throughout the world for the X TYPE Mark, alone or in combination with the JAGUAR trademark.
10. Complainant’s rights in the above-described mark, together with Complainant’s common law rights in the same, are referred to herein as the “X TYPE Mark.”
11. Complainant owns the following domain names relating to and incorporating Complainant’s Mark: X-TYPE.COM, registered October 31, 1999; X-TYPE.NET, registered March 4, 2003; XTYPE.CO.UK, registered October 27, 2000; X-TYPE.CO.UK, registered October 27, 2000.
12. X TYPE is a well-known and highly regarded trademark in the automotive field. Complainant has expended significant time, money, and effort in advertising, promoting, and developing Complainant’s Mark throughout the world, including throughout the United States and the United Kingdom. As a result of such advertising and expenditures, Complainant has established immense goodwill in the X TYPE Mark.
13. Complainant’s X-Type® vehicles remain symbols of quality and luxury and the X TYPE Mark has had considerable and high profile exposure to the general public, even among those who have never purchased an X-Type® vehicle, by virtue of extensive use of X- Type® vehicles in movies, television series, and other media. According to the Internet Movie Cars Database (“IMCDb,” at http://www.imcdb.org/), “the most complete list on the web about cars, bikes, trucks and other vehicles seen in movies and TV series,” Complainant’s X-Type® vehicle has featured in over 180 movies and television series.
14. Complainant’s registration of the X TYPE Mark through its registration with the United States Patent and Trademark Office is sufficient to establish rights in the mark. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (USPTO registration is sufficient to establish Policy ¶4(a)(i) rights).
B. The Domain Name is Identical and/or Confusingly Similar to Complainant’s Mark
15. Respondent registered the Domain Name with eNom on April 21, 2011, long after the X TYPE Mark was first used by Complainant.
16. The Domain Name fully incorporates Complainant’s valuable and protectable X TYPE Mark. Respondent also attaches the descriptive terminology “parts,” to Complainant’s X TYPE Mark. Finally, Respondent affixes the generic top-level domain (“gTLD”) “.com” to Complainant’s mark. Respondent’s alterations do not negate a finding of confusing similarity. Rather, Respondent’s additional wording “parts” in the Domain Name reinforces a connection with Complainant’s vehicle-related products and services and creates confusion as to the source of Respondent’s goods and services. Therefore, the Domain Name is confusingly similar to Complainant’s X TYPE Mark pursuant to Policy ¶4(a)(i).
C. Respondent Has No Rights or Legitimate Interests in the Domain Name
17. Respondent does not have any rights or legitimate interests in the Domain Name, because it is not affiliated with Complainant and Respondent’s use of the X TYPE Mark is unauthorized.
18. Upon information and belief, Respondent, as an individual, business, or other organization, is not and has not been commonly known by the Domain Name.
19. Upon information and belief, Respondent is not using and has not used, or is not demonstrating and has not demonstrated, an intent to use the Domain Name in connection with a bona fide offering of goods or services.
20. Upon information and belief, at the time that Respondent registered the Domain Name, Respondent had actual knowledge of Complainant’s rights to the X TYPE Mark. Also upon information and belief, Respondent registered the Domain Name to take advantage of the reputation and goodwill of Complainant and the X TYPE Mark, and Respondent has no legitimate interests in the Domain Name.
21. Respondent is using the Domain Name to direct Internet users to a commercial website that features the sale of automotive parts, including the sale of automotive parts of Complainant’s competitors. Consumers searching for Complainant’s genuine automotive parts and/or services for its X-Type® vehicles are directed to Respondent’s website offering competing vehicle-related goods and services, like those that consumers would find on Complainant’s legitimate websites operated by Complainant and its authorized dealers.
22. These facts demonstrate that Respondent has no rights or legitimate interests in the Domain Name. See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)). See also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
D. Respondent Registered and is Using the Domain Name in Bad Faith
23. Respondent registered the Domain Name, which fully incorporates the X TYPE Mark and is confusingly similar to the X TYPE Mark, with prior knowledge of Complainant’s Mark and Complainant’s offering of goods and services in connection with the X TYPE Mark. Respondent’s knowledge of Complainant is clear, given the automotive-related content on the website accessed by the Domain Name, the use of Complainant’s JAGUAR trademark, and the use of images of Complainant’s X-Type® vehicle. Respondent’s knowledge of Complainant is further evidenced by its use of the tagline “Quality new & used parts for all X- Type models.” Such use and registration has the primary purpose and effect of diverting and misleading customers and disrupting Complainant’s business and thus constitutes bad faith under Section 4(b)(iii) of the UDRP.
24. Respondent’s registration and use of the Domain Name meet the bad faith element set forth in Section 4(b)(iv) of the UDRP. Specifically, Respondent is using the Domain Name to intentionally attract and divert Internet users to its website, which appears to offer unrelated and/or competing vehicle-related goods and services by taking advantage of users searching for Complainant on the Internet, and by creating a likelihood of confusion with the X TYPE Mark as to the source, sponsorship, and endorsement of Respondent’s website and of the products and services offered at the site. When users arrive at the Domain Name, they are misled into believing they are at an authorized site. Indeed, the resolving website purports to offer vehicle-related goods and services for Complainant’s Jaguar X-Type® vehicle, clearly demonstrating intent to mislead consumers into believing that Respondent is Complainant or at least affiliated with Complainant.
25. Respondent’s use of the Domain Name for its own commercial gain is additional evidence of Respondent’s bad faith registration and use pursuant to Policy ¶4(b)(iv). See Associated Materials, Inc. v. Perma Well, Inc., FA 154121 (Nat. Arb. Forum May 23, 2003) (finding that the respondent’s actual knowledge of the complainant’s rights in the ULTRAGUARD mark served as evidence that the domain name was registered in bad faith).
26. Pursuant to Section 4(c) of the UDRP: (i) Respondent is not using and has not used or is not demonstrating and has not demonstrated an intent to use the Domain Name in connection with a bona fide offering of goods or services; (ii) Respondent is not and has not been commonly known by the Domain Name; and (iii) Respondent is not making legitimate noncommercial or fair use of the Domain Name without intending to mislead and divert consumers for commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 prove the following three elements to obtain an order cancelling 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(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 is a globally renowned manufacturer of premium automobiles and sport utility vehicles, based in the Midlands region of England. Complainant registered the X TYPE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,559,450, registered April 9, 2002). Complainant’s USPTO registration (or any other governmental authority) adequately demonstrates its rights in its mark under Policy ¶4(a)(i). See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶4(a)(i)] rights even when Respondent lives or operates in a different country.”). In addition, Complainant registered its trademark in the European Union (Reg. No. 1189778 registered August 7, 2000). Complainant has demonstrated its rights in its mark pursuant to Policy ¶4(a)(i).
Complainant claims the <xtypeparts.com> domain is confusingly similar to Complainant’s mark because it incorporates Complainant’s mark in its entirety, eliminates the space between the words of Complainant’s mark, adds the descriptive term “parts” and adds the gTLD “.com.” Domain name syntax prohibits a space in a domain name. This means the omission of a space does not (and cannot) adequately distinguish a domain name from a 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)). Adding a descriptive word does not adequately distinguish a respondent’s disputed domain name from a complainant’s mark under Policy ¶4(a)(i). See Am. Online, Inc. v. Karandish, FA 563833 (Nat. Arb. Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to a registered mark does not sufficiently distinguish a domain name under Policy ¶4(a)(i)). Likewise every domain name must have a TLD (whether a gTLD or ccTLD). Adding a TLD does not adequately distinguish a respondent’s disputed domain name from a complainant’s mark under Policy ¶4(a)(i). See Paisley Park Enterprises v. James Lawson, FA 0412000384834 (Nat. Arb. Forum Feb. 1, 2005) and AOL Inc. v. Morgan, FA 1349260 (Nat. Arb. Forum Nov. 4, 2010) (concluding that the addition of the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name from the mark). Respondent’s domain is confusingly similar to Complainant’s mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) 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.”).
Complainant claims Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. This appears correct because Respondent’s name bears no obvious relationship to the domain name. The WHOIS information merely lists “JORDAN MCKENNA / JMS NORTH EAST LIMITED” as registrant and that Respondent has failed to provide any evidence for the Panel’s consideration. Respondent is not licensed or authorized to use Complainant’s mark. There is no basis in the available record to find Respondent commonly known by the disputed domain names pursuant to Policy ¶4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶4(c)(ii) does not apply).
Complainant claims Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Specifically, Respondent uses the disputed domain name to direct Internet users to a commercial website featuring the sale of automotive parts, including Complainant’s competitors. A respondent’s use of a domain name to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a noncommercial or fair use pursuant to Policy ¶4(c)(iii).”). Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶4(c)(i) and Policy ¶4(c)(iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent’s disputed domain name disrupts and competes with Complainant’s business. There is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iii) where a respondent appropriates a complainant’s mark in an attempt to divert the complainant’s customers to the respondent’s competing business. See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶4(b)(iii)). Respondent’s web site doesn’t sell just Complainant’s parts. It sells parts made by Complainant’s competitors. Respondent has engaged in bad faith registration and use under Policy ¶4(b)(iii).
Complainant claims Respondent uses the disputed domain name to profit from Internet users’ confusion. A respondent’s use of a confusingly similar domain name to sell products and/or services that directly compete with complainant constitutes bad faith registration and use under Policy ¶4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶4(b)(iv)). Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶4(b)(iv).
Respondent’s resolving webpage contains the tagline “Quality new & used parts for all X-Type models”. Respondent clearly registered the disputed domain name with actual knowledge of Complainant’s mark. A respondent demonstrates bad faith under Policy ¶4(a)(iii) where the respondent was well-aware of the complainant’s mark at the time the disputed domain name was registered. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Respondent registered the disputed domain name with actual knowledge of Complainant’s mark, thereby violating Policy ¶4(a)(iii).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <xtypeparts.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, February 15, 2016
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