Jaguar Land Rover Limited v. Domain Administrator / China Capital Investment Limited
Claim Number: FA1702001715444
Complainant is Jaguar Land Rover Limited (“Complainant”), represented by Jennifer M. Hetu of Honigman Miller Schwartz and Cohn LLP, Michigan, USA. Respondent is Domain Administrator / China Capital Investment Limited (“Respondent”), China, Hong Kong S.A.R.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jaguarwhiteplains.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 1, 2017; the Forum received payment on February 1, 2017.
On February 2, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <jaguarwhiteplains.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 February 3, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 23, 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@jaguarwhiteplains.com. Also on February 3, 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 March 9, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant is a United Kingdom-based manufacturer of motor vehicles marketed worldwide under the JAGUAR mark.
Complainant holds a registration for the JAGUAR mark, which is on file with the United States Patent and Trademark Office (“USPTO”) (Registry No. 3,493,780, registered August 26, 2008).
Respondent registered the domain name <jaguarwhiteplains.com> on or about August 11, 2016.
The domain name is confusingly similar to Complainant’s JAGUAR mark.
Respondent has not been commonly known by the domain name.
Respondent is not affiliated with Complainant in any way.
Complainant has not licensed or otherwise authorized Respondent to use the JAGUAR mark.
Respondent is not making a bona fide offering of goods and services by means of, or a legitimate non-commercial or fair use of, the domain name.
The domain name now resolves to an inactive webpage displaying the message “Coming Soon.”
Previously, the domain name resolved to a webpage hosting pay-per-click links to both Complainant’s website, and, presumably for Respondent’s profit, to websites offering products in competition with the business of Complainant.
Respondent has no rights to or legitimate interests in the domain name.
Respondent knew of Complainant and its rights in the JAGUAR mark when it registered the domain name.
Respondent registered and is using the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out 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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Complainant has rights in the JAGUAR mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See, for example, Am. Int’l Group, Inc. v. Morris, FA 569033 (Forum December 6, 2005):
Complainant has established rights in the … mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (“USPTO”).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here, Hong Kong, China). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he 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.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <jaguarwhiteplains.com> domain name is confusingly similar to Complainant’s JAGUAR mark. The domain name incorporates the mark in its entirety, merely adding the geographic term “white plains” and the generic Top Level Domain (“gTLD”) “.com.”These alterations of the mark, made in forming the domain name, do not avoid finding of confusing similarity under the standards of the Policy. See Gannett Co. v. Chan, D2004-0117 (WIPO April 8, 2004).
[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.
See also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002:
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the challenged domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <jaguarwhiteplains.com> domain name, that Respondent is not affiliated with Complainant in any way, and that Complainant has not licensed or otherwise authorized Respondent to use the JAGUAR mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Domain Administrator” of “China Capital Investment Limited,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the contested domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Forum February 10, 2003):
[N]othing in [respondent’s] WHOIS information implies that [respondent] is ‘commonly known by’ the disputed domain name.
And see Google Inc. v. Domain Admin / Whois Privacy Corp., FA1502001605239 (Forum March 22, 2015):
[When] there is nothing in the record that otherwise suggests [r]espondent is commonly known by the [disputed] domain name, [panels have found] that [ r]espondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii).
We next observe that Complainant asserts, without objection from Respondent, that the <jaguarwhiteplains.com> domain name currently resolves to an inactive webpage displaying the message “Coming Soon.” Such inactive use of the domain name is neither a bona fide offering of goods and services by means of the domain name under Policy ¶ 4(c)(i), nor a legitimate non-commercial or fair use of it under Policy ¶ 4(c)(iii), so as to show that Respondent has acquired rights to or legitimate interests in the domain name as set out in those provisions of the Policy. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Forum April 9, 2007):
Respondent’s failure to associate content with its disputed domain name evinces a lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).
Complainant also alleges, again without objection from Respondent, that the <jaguarwhiteplains.com> domain name previously resolved to a webpage with pay-per-click links to Complainant’s website and to websites marketing products in competition with the business of Complainant, presumably for Respondent’s profit. That employment of the domain name was likewise neither a bona fide offering of goods and services by means of the domain name under Policy ¶ 4(c)(i), nor a legitimate non-commercial or fair use of it under Policy ¶ 4(c)(iii), so as to demonstrate that Respondent has rights to or legitimate interests in the domain name as set out in those provisions of the Policy. See Fadal Engineering, LLC v. Daniel Strizich,Independent Technology Service Inc., FA 1581942 (Forum November 13, 2014):
[respondent’s use of a disputed domain to sell products related to the business of a UDRP 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).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s current inactive use of the <jaguarwhiteplains.com> domain name, shows that it both registered and is using the domain name in bad faith. See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015):
[F]ailure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
To the same effect, see also Indiana University v. Ryan G Foo / PPA Media Services, FA1411001588079 (Forum December 28, 2014):
[U]nder the circumstances, Respondent’s seemingly inutile holding of the at-issue domain name shows Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii).
We are also convinced by the evidence that Respondent knew of Complainant and its rights in the JAGUAR mark when it registered the challenged <jaguarwhiteplains.com> domain name. This further indicates Respondent’s bad faith in registering the domain name. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012):
[Panels have found] that, due to the fame of [c]omplainant’s . . . mark, [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).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <jaguarwhiteplains.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 16, 2017
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