Jaguar Land Rover Limited v. Ed Slingsby / SC Net
Claim Number: FA1701001714183
Complainant is Jaguar Land Rover Limited (“Complainant”), represented by Jennifer M. Hetu of Honigman Miller Schwartz and Cohn LLP, Michigan, USA. Respondent is Ed Slingsby / SC Net (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jaguarchicago.com>, registered with Wild West Domains, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 25, 2017; the Forum received payment on January 25, 2017.
On January 26, 2017, Wild West Domains, LLC confirmed by e-mail to the Forum that the <jaguarchicago.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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 January 26, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 15, 2017 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@jaguarchicago.com. Also on January 26, 2017, 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 23, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions
Complainant is a United Kingdom-based manufacturer of high-end and luxury vehicles. Complainant uses the JAGUAR mark in conjunction with its global business practices. Complainant registered the JAGUAR mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 423,961, registered Sept. 17, 1946). See Compl., at Attached Ex. U. Additionally, Complainant has sixty-six mark registrations with United Kingdom trademark agencies. See Compl., at Attached Ex. V. Respondent’s <jaguarchicago.com> is confusingly similar to Complainant’s JAGUAR mark because it incorporates the mark in its entirety, adding the geographic term “Chicago” and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in <jaguarchicago.com>. Respondent is not commonly known by the disputed domain name. Complainant has not authorized or licensed Respondent to use the JAGUAR mark in any regard, nor is Respondent affiliated with Complainant. Respondent has not made a bona fide offering of goods and services, or a legitimate non-commercial or fair use of the domain name. Respondent’s <jaguarchicago.com> resolves to a webpage with pay-per-click links to Complainant’s website, along with links to unrelated products and products in direct competition with Complainant, presumably for Respondent’s profit. See Compl., at Attached Ex. W.
Respondent registered and is using <jaguarchicago.com> in bad faith. The disputed domain name diverts internet users to Respondent’s website, creating the confusion that Respondent is associated with Complainant. Additionally, the <jaguarchicago.com> domain offers pay-per-click links to Complainant’s products, unrelated goods and services, and products in direct competition with Complainant. Respondent registered <jaguarchicago.com> with actual knowledge of Complainant and its rights to the JAGUAR mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United Kingdom-based manufacturer of high-end and luxury vehicles. Complainant uses the JAGUAR mark in conjunction with its global business practices.
2. Complainant registered the JAGUAR mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 423,961, registered Sept. 17, 1946).
3. Respondent registered the <jaguarchicago.com> domain name on June 13, 2001.
4. The domain name resolves to a webpage with unauthorised pay-per-click links to Complainant’s website, Complainant’s Jaguar products and products in direct competition with Complainant, presumably for Respondent’s profit.
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 a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant is a United Kingdom-based manufacturer of high-end and luxury vehicles. Complainant uses the JAGUAR mark in conjunction with its global business practices. Complainant claims it registered the JAGUAR mark with USPTO (e.g., Reg. No. 423,961, registered Sept. 17, 1946). See Compl., at Attached Ex. U. Additionally, Complainant submits that it has sixty-six mark registrations with United Kingdom trademark agencies. See Compl., at Attached Ex. V. The general consensus among Panels is that mark registration with government trademark agencies are sufficient to show rights in a mark. See Am. Int’l Group, Inc. v. Morris, FA 569033 (Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”). Therefore, the Panel finds that Complainant’s trademark registrations are sufficient to show rights in the JAGUAR mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s JAGUAR mark. Complainant submits that Respondent’s <jaguarchicago.com> domain name is confusingly similar to Complainant’s JAGUAR mark because it incorporates the mark in its entirety, adding the geographic term “chicago” and the “.com” gTLD. The objective bystander would naturally read the domain name as an official domain name dealing with Complainant’s business activities in Chicago. “[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). Furthermore, “it is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.” Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum Sept. 27, 2002). Hence, the Panel agrees and concludes that Respondent’s <jaguarchicago.com> domain name is confusingly similar to Complainant’s JAGUAR mark.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s JAGUAR mark and to use it in its domain name adding the geographic term “Chicago”;
(b) Respondent registered the domain name on June 13, 2001;
(c) The domain name resolves to a webpage with unauthorised pay-per-click links to Complainant’s website, Complainant’s Jaguar products and products in direct competition with Complainant, presumably for Respondent’s profit;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant asserts that Respondent has no rights or legitimate interests in the <jaguarchicago.com> domain name. To support its argument, Complainant contends that Respondent is not commonly known by the disputed domain name. WHOIS information associated with this case identifies Respondent as “Ed Slingsby” of “SC Net.” Thus, “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name.” Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003). Furthermore, when “there is nothing in the record that otherwise suggests [a r]espondent is commonly known by the [disputed] domain name, panels have found] that [a r]espondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii).” Google Inc. v. Domain Admin / Whois Privacy Corp., FA1502001605239 (Forum Mar. 22, 2015). The Panel therefore finds that Respondent is not commonly known by the <jaguarchicago.com> domain name;
(f) Complainant submits that it has not authorized or licensed Respondent to use the JAGUAR mark in any regard, nor is Respondent affiliated with Complainant. Respondent has not made a bona fide offering of goods and services, or a legitimate non-commercial or fair use of the domain. Complainant illustrates that the domain name resolves to a webpage with unauthorized pay-per-click links to websites realting to Complainant’s products, unrelated products, and products in direct competition with Complainant, presumably for Respondent’s profit. See Compl., at Attached Ex. W. Panels have typically found that respondents fail to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolves to a website that offers both competing hyperlinks and hyperlinks unrelated to the complainant’s business. Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015). Furthermore, Panels have found that a respondent’s use of a disputed domain to sell products related to complainant without authorization “does not amount to a bona fide offering of goods or services under policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).” Fadal Engineering, LLC v. Daniel Strizich,Independent Technology Service Inc., FA 1581942 (Forum Nov. 13, 2014). Therefore, the Panel concludes that Respondent does not have rights or legitimate interests in the <jaguarchicago.com> domain name pursuant to Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant maintains that Respondent registered and is using the <jaguarchicago.com> domain name in bad faith. The Panel notes Respondent’s <jaguarchicago.com> domain name resolves to a parked webpage with pay-per-click links. Complainant illustrates that the disputed domain name diverts internet users to Respondent’s website displaying the JAGUAR mark, creating the confusion that Respondent is associated with Complainant. Panels have found that a respondent’s use of the disputed domain name to sell the complainant’s products “creates a likelihood of confusion with [complainant’s] mark as to the source, sponsorship, or affiliation of the website and constituted bad faith pursuant to Policy ¶ 4(b)(iv).” Compaq Info. Techs. Group, L.P. v. Waterlooplein Ltd., FA 109718 (Forum May 29, 2002). Additionally, the <jaguarchicago.com> domain name offers pay-per-click links to Complainant’s products, unrelated goods and services, and products in direct competition with Complainant. “[Panels have found] that [r]espondent’s inclusion of various hyperlinks; some of which direct Internet users to competing websites of [c]omplainant, some which direct Internet users to [c]omplainant’s own website, and some of which are unrelated to [c]omplainant’s business; evince bad faith attraction for commercial gain.” Therefore, the Panel finds that Respondent registered and is using the <jaguarchicago.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Secondly, Complainant contends that Respondent registered the <jaguarchicago.com> domain name with actual knowledge of Complainant and its rights to the JAGUAR mark. Complainant argues that Respondent's offering of Complainant's own products and competing products at the resolving website indicates that Respondent had actual knowledge of Complainant's mark and rights. Furthermore, in light of the fame and notoriety of Complainant's JAGUAR mark, Complainant argues that it is inconceivable that Respondent could have registered the <jaguarchicago.com> domain name without actual and/or constructive knowledge of Complainant's rights in the mark and the Panel agrees with that submission. Complainant has illustrated its submission with very extensive evidence that makes its submission unanswerable. “[Panels have found] that, due to the fame of [a c]omplainant’s . . . mark, [a r]espondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).” Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012). Here, the Panel agrees and concludes that Respondent knew and clearly must have known of Complainant and its rights to the JAGUAR mark when registering the <jaguarchicago.com> domain name.
Thirdly, in addition and having regard to the totality of the evidence, the Panel
finds that, in view of Respondent’s registration of the disputed domain name using the JAGUAR mark and in view of the conduct that Respondent has
engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <jaguarchicago.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
The Honourable Neil Anthony Brown QC
Panelist
Dated: February 24, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page