JAGUAR LAND ROVER LIMITED v. parvez ali
Claim Number: FA1608001690453
Complainant is JAGUAR LAND ROVER LIMITED (“Complainant”), represented by Jennifer K. Ziegler of Brooks Kushman P.C., Michigan, United States. Respondent is parvez ali (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rangeroverchauffeur.com>, registered with WEBFUSION LIMITED.
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 August 23, 2016; the Forum received payment on August 23, 2016.
On August 26, 2016, WEBFUSION LIMITED confirmed by e-mail to the Forum that the <rangeroverchauffeur.com> domain name is registered with WEBFUSION LIMITED and that Respondent is the current registrant of the name. WEBFUSION LIMITED has verified that Respondent is bound by the WEBFUSION LIMITED 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 August 26, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 15, 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@rangeroverchauffeur.com. Also on August 26, 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 September 23, 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 that 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 at least 1970, Complainant has produced and sold vehicle models under the Range Rover® brand. In the course of its activities, Complainant has built up extensive Intellectual Property rights, including a large portfolio of trade mark registrations and common law rights in its RANGE ROVER trademark, among others.
3. Complainant is the owner of the following United States Trademark Registrations for its RANGE ROVER trademark, among others: Reg. No. 929034 for RANGE ROVER for “road and cross-country motor car of the station-wagon type and structural parts thereof,” which issued February 15, 1972; and Reg. No. 4053166 for RANGE ROVER for “Automobiles and structural parts therefor,” which issued November 8, 2011.
4. Complainant is the owner of United Kingdom Registration No. 920322 for RANGE ROVER for goods in International Class 12, which issued January 30, 1968. Complainant is also the owner of United Kingdom Registration No. 2469798 for RANGE ROVER for land vehicles and related goods, which issued October 17, 2007.
5. Complainant is the owner of Community Trademark Registration No. 143792 for RANGE ROVER for land vehicles and related goods, which issued April 1, 1996. Complainant is also the owner of Community Trademark Registration No. 6447221 for RANGE ROVER for vehicles and related goods and services, which issued October 24, 2008.
6. Complainant is the owner of numerous registrations throughout the world for the RANGE ROVER Mark.
7. Complainant’s rights in the above-described mark, together with Complainant’s common law rights in the same, are referred to herein as the “RANGE ROVER Mark.”
8. RANGE ROVER is among the most well-known and highly regarded trademarks in the automotive field. Beginning with its first use in 1970, the RANGE ROVER Mark has been continuously used in connection with the promotion, advertising, and sale of Complainant’s products and services.
9. Complainant owns the domain name RANGEROVER.COM, registered February 16, 2002.
10. Complainant operates a website at LANDROVER.COM, where it offers vehicles and related products and services under the RANGE ROVER Mark. Also at its website at LANDROVER.COM, Complainant offers events, adventures, and experiences featuring its Range Rover® vehicles.
11. Complainant owns the following additional domain names that use and incorporate the RANGE ROVER Mark, among others: RANGEROVERUSA.COM and RANGEROVER.CO.UK.
12. Complainant has spent many millions of dollars and expended significant effort in advertising, promoting, and developing the RANGE ROVER Mark throughout the world, including throughout the United Kingdom. As a result of such advertising and expenditures, Complainant has established immense goodwill in the RANGE ROVER Mark.
13. Range Rover® vehicles continue to be among the most sought-after vehicles in the world. The RANGE ROVER brand is recognized throughout the world as a leading brand both within the automotive industry and more generally because of its long association with quality, style, and luxury. The RANGE ROVER brand is extremely valuable.
14. Complainant’s Range Rover® vehicles remain symbols of quality and luxury and the RANGE ROVER Mark has had considerable and high profile exposure to the general public, even among those who have never purchased a Range Rover® vehicle, by virtue of extensive use of Range Rover® vehicles by world famous celebrities and 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 Range Rover® vehicles have featured in over 1700 movies and television series.
15. Range Rover® vehicles have consistently won awards from the motor vehicle industries in the United States, United Kingdom, European Community, and throughout the world.
16. Complainant’s registration of the RANGE ROVER Mark through its registration with the United States Patent and Trademark Office is sufficient to establish rights in the mark. See Jaguar Land Rover Limited v. Colin Bowler / Racing Green Cars Ltd, FA 1602001663204 (Nat. Arb. Forum Mar. 31, 2016) (“[T]he Panel finds that Complainant’s USPTO registrations are sufficient to establish its rights in the JAGUAR mark under Policy ¶4(a)(i)”); Jaguar Land Rover Limited v. Jordan McKenna / JMS North East Limited, FA 1601001657292 (Nat. Arb. Forum Feb. 15, 2016) (“Complainant’s USPTO registration (or any other governmental authority) adequately demonstrates its rights in its mark under Policy ¶4(a)(i)”); 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
17. Respondent registered the Domain Name with Webfusion on February 16, 2002, long after the RANGE ROVER Mark was first used and registered by Complainant.
18. The Domain Name fully incorporates Complainant’s valuable and protectable RANGE ROVER Mark in its entirety. Respondent also attaches the descriptive terminology “chauffeur.” Finally, Respondent affixes the generic top-level domain (“gTLD”) “.com” to Complainant’s mark. Respondent’s addition of descriptive wording and a gTLD are “insufficient in overcoming a finding of confusing similarity under Policy ¶4(a)(i).” Jaguar Land Rover Limited v. Colin Bowler / Racing Green Cars Ltd, FA 1602001663204 (Nat. Arb. Forum Mar. 31, 2016). Rather, Respondent’s additional wording “chauffeur” in the Domain Name reinforces a connection with Complainant’s vehicles and causes confusion by creating the false impression that Respondent’s website offers or leads to chauffeur services featuring Range Rover® vehicles that are offered by Complainant. Therefore, the Domain Name is confusingly similar to Complainant’s RANGE ROVER Mark pursuant to Policy ¶4(a)(i).
C. Respondent Has No Rights or Legitimate Interests in the Domain Name
19. 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 RANGE ROVER Mark is unauthorized.
20. Upon information and belief, Respondent, as an individual, business, or other organization, is not and has not been commonly known by the Domain Name.
21. 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.
22. Upon information and belief, at the time that Respondent registered the Domain Name, Respondent had actual knowledge of Complainant’s rights to the RANGE ROVER Mark and the goods and services offered at Complainant’s LANDROVER.COM website. This is evidenced by Respondent’s use of the RANGE ROVER Mark, photographs of Complainant’s Range Rover® vehicles, and the statement “We are an independent chauffeur service and are not connected with Land Rover or Ranger Rover. Click here to visit Land Rover’s own site.” Also upon information and belief, Respondent registered the Domain Name to take advantage of the reputation and goodwill of Complainant and the RANGE ROVER Mark, and Respondent has no legitimate interest in the Domain Name.
23. Respondent registered and uses the Domain Name to direct Internet users to a commercial website that features Complainant’s vehicles and services that purport to use Complainant’s vehicles. Accordingly, consumers searching for goods or services offered by Complainant are directed to Respondent’s website offering chauffeur services using Complainant’s vehicles that consumers would find or expect to find on Complainant’s legitimate website.
24. Respondent’s use of the Domain Name for its own commercial gain is additional evidence of Respondent’s bad faith registration and use. See Jaguar Land Rover Limited v. Jordan McKenna / JMS North East Limited, FA 1601001657292 (Nat. Arb. Forum Feb. 15, 2016) (“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 also Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (respondent’s use of 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 or a legitimate noncommercial or fair use).
D. Respondent Registered and is Using the Domain Name in Bad Faith
25. Respondent registered the Domain Name, which fully incorporates the RANGE ROVER Mark and is confusingly similar to the RANGE ROVER Mark, with prior knowledge of the RANGE ROVER Mark. Respondent’s knowledge of Complainant is clear, given the use of Complainant’s RANGE ROVER Mark, images of Complainant’s Range Rover® vehicles, and statements disclaiming association with Complainant on the website accessed at the Domain Name. Also without Complainant’s consent, Respondent registered the RANGEROVERCHAUFFEUR.CO.UK domain name. These activities evidence Respondent’s bad faith registration and use of the Domain Name. See Jaguar Land Rover Limited v. Jordan McKenna / JMS North East Limited, FA 1601001657292 (Nat. Arb. Forum Feb. 15, 2016) (“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 also 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. Respondent’s registration and use of the Domain Name meets the bad faith elements set forth in Sections 4(b)(iii) and (iv) of the UDRP. Specifically, Respondent uses the Domain Name to intentionally attract and divert Internet users to its website, which appears to offer unrelated and/or competing services by taking advantage of users searching for Complainant on the Internet, and by creating a likelihood of confusion with the RANGE ROVER Mark as to the source, sponsorship, and endorsement of Respondent’s website and of the services offered at the site. When users arrive at the website accessed at the Domain Name, they are misled into believing they are at an authorized site. 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. See Jaguar Land Rover Limited v. Ludovit Olah, FA1606001679864 (Nat. Arb. Forum July 28, 2016) (“[T]he Panel infers from the fame of Complainant’s mark and the manner of use of the disputed domain name by Respondent that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark, thereby violating Policy ¶4(a)(iii).”).
27. Complainant (through its counsel) sent a letter dated March 18, 2016 to Respondent responding to Respondent’s earlier request for permission to register the Domain Name by stating that Respondent did not have Complainant’s permission.
28. Pursuant to Section 4(b) 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 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 has not 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 (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 uses the RANGE ROVER mark in connection with its business of providing vehicles, vehicle-related goods and services, and a wide range of non-vehicle-related goods and services. Complainant registered the RANGE ROVER mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 929,034, registered Feb. 15, 1972), the United Kingdom Intellectual Property Office (“UKIPO”) (e.g. Reg No. 920322, registered Jan. 30, 1968) and European Intellectual Property Office (“EUIPO”) (e.g., Registration No. 143792, issued Apr. 1, 1996). Registration of a trademark with a governmental authority (such as the USPTO) adequately demonstrates Complainant’s trademark rights under Policy ¶ 4(a)(i). See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (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.”). Complainant has demonstrated its rights in its mark pursuant to Policy ¶4(a)(i).
Complainant claims Respondent’s domain is confusingly similar to Complainant’s mark because it incorporates the mark in its entirety and merely adds the descriptive term “chauffeur” and the gTLD “.com.” A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the lack of a space is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits spaces. See Rackspace US, Inc. v. Russell Harrower, FA 1592005 (Forum Jan. 5, 2014) (holding that the <rackspace.xyz> domain name is identical to the complainant’s RACKSPACE mark, because, “the addition of a generic top-level domain is seen as trivial and non-distinctive for the purposes of this comparison does not lessen in any way the confusing similarity between the disputed domain name and Complainant’s mark.”). However, this Panel does not believe the domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). Complainant is not in the business of being a chauffeur. Complainant’s marks are only for land motor vehicles and parts thereof. The addition of ANY word to Complainant’s mark does not automatically create confusing similarity, see Jaguar Land Rover Limited v. MOUNTAIN ROVERS, INC., FA1307001507702 (Forum Aug. 15, 2013).
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 (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 (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.”).
Clearly, Respondent is not commonly known by the terms of the domain Policy ¶ 4(c)(ii) and Respondent is not affiliated with Complainant. Any possible affiliation is clearly disclaimed on Respondent’s web site. The WHOIS information merely lists “parvez ali” as the domain name owner.
The question is whether Respondent is not using the domain in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. According to the UDRP decision in Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001), a reseller has a limited right to use the trademarks of others so long as all of certain criteria are met:
• Respondent must actually be offering the goods or services at issue; AND
• Respondent must use the site to sell only the trademarked goods; AND
• The site must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents; AND
• The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
Respondent uses the domain name to advertise its business of providing Ranger Rover chauffeured cars for hire. There doesn’t seem to be a real dispute on this point (even though Respondent did not file a formal response). The cars are genuine Range Rovers. Respondent is only advertising the fact Respondent is using Range Rovers (meaning Respondent is not advertising Bentley chauffeured cars in addition to Range Rover chauffeured cars). Respondent expressly disclaims any relationship to Complainant and provides a link to Complainant’s web site. Respondent is not trying to “corner the market” in domain names using Complainant’s mark. Respondent meets all of the criterial in Oki Data Americas, Inc. v. ASD, Inc., supra. Respondent is 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) 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 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 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 chauffeurs cars manufactured by Complainant and is apparently proud of the fact. A disclaimer appears on Respondent’s web site and directs visitors to Complainant’s web site if that is what they want.
Complainant believes it has demonstrated Respondents bad faith by refusing permission to register this domain name. This Panel thinks not because Respondent has the right to register this domain name under the circumstances of this case. The fact Respondent is aware of the trademark does not automatically mean Respondent registered and uses the domain name in bad faith.
The Panel finds Policy ¶4(a)(iii) NOT satisfied.
Having not established all three elements required under the ICANN Policy, the Panel concludes relief shall be DENIED.
Accordingly, it is Ordered the <rangeroverchauffeur.com> domain name REMAIN WITH Respondent.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, October 4, 2016
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