JAGUAR LAND ROVER LIMITED v. Martin Green / Coventry Auto Components
Claim Number: FA1703001720158
Complainant is JAGUAR LAND ROVER LIMITED (“Complainant”), represented by Jennifer K. Ziegler of Brooks Kushman P.C., Michigan, USA. Respondent is Martin Green / Coventry Auto Components (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xkparts.com>, registered with 1&1 Internet SE.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 6, 2017; the Forum received payment on March 6, 2017.
On March 7, 2017, 1&1 Internet SE confirmed by e-mail to the Forum that the <xkparts.com> domain name is registered with 1&1 Internet SE and that Respondent is the current registrant of the name. 1&1 Internet SE has verified that Respondent is bound by the 1&1 Internet SE 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 March 7, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 27, 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@xkparts.com. Also on March 7, 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.
A timely Response was received and determined to be complete on March 27, 2017.
On April 10, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant manufactures and sells vehicle- and non-vehicle-related products and services worldwide. While it generally operates under the JAGUAR mark, Complainant uses the XK mark in conjunction with its “Jaguar XK” vehicle series, introduced in 1996. Complainant registered the XK mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,737,548, registered July 15, 2003). Additionally, Complainant registered the XK mark with the Office for Harmonization in the Internal Mark, Trade Marks and Designs (“OHIM”) (e.g., 006597223, registered Nov. 17, 2008). Complainant also holds multiple trademark registrations for the XK mark from government agencies throughout North and South America, Africa, Asia, and Australia. Respondent’s <xkparts.com> is confusingly similar to Complainant’s XK mark because it incorporates the mark in its entirety, adding the descriptive term “parts” and the “.com” generic top level domain (“gTLD”). Complainant specifically notes that the addition of the term “parts” is representative of Complainant’s business offerings.
Respondent has no rights or legitimate interests in <xkparts.com>. Respondent is not commonly known by the disputed domain name. Complainant has not authorized or licensed Respondent to use the XK 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. Respondent’s <xkparts.com> resolves to a website offering automotive parts for sale in direct competition with Complainant.
Respondent registered and is using <xkparts.com> in bad faith. The disputed domain name attempts to attract Internet users to Respondent’s website for commercial gain. Respondent’s <xkparts.com> creates a false impression that Complainant is affiliated with or endorses Respondent’s business. Respondent had actual knowledge of Complainant and its rights to the XK mark.
B. Respondent
Respondent is the current owner of <xkparts.com>. Respondent’s use of the brand XKPARTS in conjunction with its business practices and advertising predates Complainant’s registration of the XK mark. Respondent invented the XKPARTS brand in 1996. Respondent has been doing business under the XKPARTS brand for over twenty years. Respondent’s automotive parts reproduction business has become globally recognized through advertising investments in specialty Jaguar magazines. Moreover, an article was written about Respondent’s business and published in Jaguar World magazine.
Respondent is affiliated with Complainant through advertising, brand sponsorship, and business transactions. Respondent began producing reproduction parts for classic vehicle models in collaboration with Complainant’s Jaguar Daimler Heritage Trust (“JDHT”), later developing a parts catalogue. Moreover, Respondent has provided parts, advice, and restoration services to JDHT since the 1990’s. Respondent received official sponsorship in an event Complainant held in 1998.
Respondent has conducted business with Complainant through four departments of Complainant’s classic car operations. Respondent continues to conduct business with Complainant’s Classic Works staff.
Complainant has engaged in Reverse Domain Name Hijacking through the commencement of this proceeding.
C. Additional Submissions
Complainant additionally proffered a ”Non-Standard Submission In Response to Respondent’s Filing”. Therein Complainant asserted that Respondent is wrong on the law as Respondent at once argues it created or invented a new mark “XKPARTS” in 1996, yet admits that Complainant owns the XK mark. Moreover, Respondent’s registration of the disputed domain in 2007 was decades after Complainant’s first use of the mark in 1949, and there has never been any explicit or implicit consent by Complainant to allow Respondent to use, adopt, or register Complainant’s mark. Complainant states Complainant and Respondent have nothing more than a customer/supplier relationship. Complainant also denies there is any reverse domain name hijacking.
Respondent sent in a slew of additional documentation after the submissions deadlines. While not required to do so, the Panel reviewed the information, and found it to be largely repetitious of Respondent’s prior exhibits. The last information tendered primarily consisted of business documents with no explanations, and thus no indication why Respondent concludes that doing business with Complainant gave Respondent superior rights to one of Complainant’s trademarks.
Complainant, Jaguar Land Rover Limited, of the United Kingdom is the owner of numerous domestic and international registrations for the mark XK. Since at least as early as 1949 Complainant has continuously used the XK mark in connection with the sale of engines for luxury automobiles, the production of a line of automobiles, and other related goods and services. Complainant has also marketed its products in cyberspace through numerous websites incorporating its mark including the site located at <jaguarxk.com>.
Respondent is Martin Green/Coventry Auto Components of Coventry, United Kingdom. Respondent Coventry Auto Components was established in 1969 to provide auto parts to various dealerships as an independent parts manufacturer and sales company.
Respondent claims to have “invented” the term XK Parts Specialist and the brand XK Parts and variations thereof in 1996. Respondent provides no evidence of any express arrangement between itself and Complainant, although it claims close links were created with Complainant. Elsewhere Respondent states that it “has been trading in good faith, under their own brand of independently manufactured reproduction parts (the brand:XKPARTS) since its earliest trading periods (1970’s)….” Respondent’s evidence is conflicting and nowhere produces any proof that Respondent was engaging in anything other than descriptive use of common terminology regarding the terms XK and parts. Respondent nominally referred to XK engines produced by Complainant once it became one of Complainant’s parts supply options, but has provided no evidence that it was claiming rights to the XK mark until allegedly 1996. Respondent provided no evidence that in 1996 it established XKParts or any variations thereof as it’s mark. Respondent registered <xkparts.com> on or about November 7, 2007. Respondent’s registrar’s address is listed as Montabaur, Germany.
Respondent’s documentation of an alleged relationship with Complainant mainly consist of order invoices, and advertisements in magazines oriented towards those interested in Complainant’s luxury automobiles. Closely related to the adverts is the sponsorship by Respondent of a Jaguar event, which Respondent conflates into an official affiliation, albeit again without any documentary support of such an understanding being present between the parties. Sponsorship of an event is generally paid for by the sponsoring organization in response to solicitation for funding assistance, and does not imply any particular relationship between the parties regarding respective IP rights. Respondent additionally points to others use of XK in the automotive and cycling industries as what Respondent appears to believe is an indication that Complainant lacks rights in the XK mark. Respondent’s legal arguments are unclear concerning the usage of XK by others, but regardless fail to address Complainant’s extensive proof of registration of the XK mark on a broad international basis.
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.
Complainant manufactures and sells vehicle- and non-vehicle-related products and services worldwide. While it generally operates under the JAGUAR mark, Complainant uses the XK mark in conjunction with its “Jaguar XK” vehicle series. Complainant registered the XK mark with the USPTO (e.g., Reg. No. 2,737,548, registered July 15, 2003). Additionally, Complainant registered the XK mark with OHIM (e.g., 006597223, registered Nov. 17, 2008). Complainant also provided evidence that it holds multiple trademark registrations for the XK mark from government agencies throughout North and South America, Africa, Asia, and Australia. Past panels have found that USPTO and other government trademark registrations are sufficient to show rights in a mark. See Direct Mktg. Co. S.p.A. v. Morelli, D2010-1335 (WIPO Sept. 6, 2010) (finding Complainant’s OHIM trademark registration sufficient to establish complainant’s rights in its GIORNO NOTTE mark under Policy ¶ 4(a)(i)). The Panel here finds that Complainant’s multiple trademark registrations are sufficient to show rights in the XK mark.
Complainant contends that Respondent’s <xkparts.com> is confusingly similar to Complainant’s XK mark because it incorporates the mark in its entirety, adding the descriptive term “parts” and the “.com” gTLD. Complainant specifically notes that the addition of the term “parts” is representative of Complainant’s business offerings. Prior panels have held that the addition of descriptive terms, particularly terms that pertain to complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy ¶ 4(a)(i). See, e.g., Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015). Likewise, “[t]he addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.” See also, Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Forum May 27, 2003). The Panel finds that a confusing similarity exists where Respondent’s domain name contains Complainant’s entire mark, differing only by the addition of a descriptive phrase and top-level domain. See, e.g., Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016).
While Respondent argues that its use of its brand XKPARTS predates Complainant’s alleged rights in the mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”). The Panel here finds that the addition of the word “parts” to Complainant’s mark fails to distinguish the domain name from the mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes 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), 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 (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). The Complainant has met this burden.
Complainant asserts that Respondent has no rights or legitimate interests in <xkparts.com>. Complainant argues that Respondent is not commonly known by the disputed domain name. WHOIS information associated with this case identifies Respondent as “Martin Green” of “Coventry Auto Components.” Prior panels have held that, “Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent . . . is not commonly known by the [disputed domain name] in any derivation.” Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Forum Nov. 17, 2003). In the instant case since “nothing in [Respondent’s] WHOIS information implies that [Respondent] is ‘commonly known by’ the disputed domain name,” the Panel finds that Respondent is not commonly known by <xkparts.com>.
Complainant avers it has not authorized or licensed Respondent to use the XK mark in any regard, nor is Respondent affiliated with Complainant. Complainant contends that Respondent has not made a bona fide offering of goods and services, or a legitimate non-commercial or fair use of the domain. To support its argument, Complainant demonstrates that Respondent’s <xkparts.com> resolves to a website offering automotive parts for sale in direct competition with Complainant. Previous panels have found that the “use of a domain 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).” General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016). Therefore, the Panel may find that “capitalizing on the well-known mark[ ] of Complainant by attracting internet users to its disputed domain name[ ] where Respondent sells competing products . . . 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).” Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010).
Respondent asserts legitimate rights and interests in <xkparts.com>, claiming affiliation through advertising, brand sponsorship, and business transactions. Respondent contends that it began producing reproduction parts for classic Jaguar models in collaboration with Complainant’s JDHT, producing a subsequent parts catalogue. As evidence Respondent provides documents designated as “July 98 C.A.C. XKPARTS…”; and “Coventry Auto Components LTD…” p.1. While courts have held that a primary market seller cannot prevent a secondary market seller from using a version of its trademark in a domain name to describe the secondary market goods being sold, Respondent is in different posture here. It’s domain name fails to identify Respondent’s company in the manner noted on the provided evidence referenced above, or in any other manner, instead utilizing only Complainant’s full mark and the generic term parts. To the extent that Respondent may be alluding to common law rights it feels it may have, Respondent has failed to specifically plead the same or provide any evidence of such rights.
The Panel here finds the evidence fails to support a conclusion that Respondent has any rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Complainant has proven this element.
Complainant maintains that Respondent registered and is using <xkparts.com> in bad faith. In support Complainant notes Respondent’s <xkparts.com> resolves to a website offering products for sale that are in direct competition with Complainant. Additionally, Complainant asserts that the disputed domain name attempts to attract Internet users to Respondent’s website for commercial gain. Prior panels have found that “[r]espondent’s use of the website to display products similar to [c]omplainant’s, imputes intent to attract Internet users for commercial gain,” thereby evincing bad faith per Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015). Furthermore, Complainant emphasizes that Respondent’s <xkparts.com> creates a false impression that Complainant is affiliated with or endorses Respondent’s business. Panels have found bad faith where the respondent's use of the disputed domain name to resolve to a website where similar services are offered is likely to confuse users into believing that the complainant is the source of or is sponsoring the services offered. See, e.g., Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000). “As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant,” the Panel may determine bad faith registration and use pursuant to Policy ¶ 4(b)(iv). Amazon.com, Inc. v. Shafir, FA 196119 (Forum Nov. 10, 2003). The Panel here finds that Respondent’s use indicates bad faith.
Finally, Complainant contends that Respondent registered <xkparts.com> with actual knowledge of Complainant and its rights to the XK mark. Complainant argues that Respondent's offering of 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 XK mark, Complainant argues that it is inconceivable that Respondent could have registered the <xkparts.com> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent 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).”). The Panel here finds that Respondent knew of Complainant’s rights to the XK mark when registering <xkparts.com>. Complainant’s mark was registered prior to Respondent’s 2007 domain name registration. Additionally, Respondent stated that it has supplied parts to Complainant since the 1970’s for Complainant’s XK engines, and later claims to have invented the XKParts mark used in the domain name in 1996. Complainant began producing a new line of automobiles in 1996 known as the Jaguar XK models. Respondent’s use of Complainant’s XK mark to sell various parts to Complainant for its XK auto line or its XK engines, or its nominal use in connection with advertising for Complainant’s automobiles failed to establish rights to the XK mark in Respondent. The Panel here finds Respondent’s use disruptive, and for commercial gain, imputing both Policy ¶¶ 4(b)(iii) and (iv) registration and use in bad faith.
Complainant has proven this element.
Reverse Domain Name Hijacking
Respondent claims that Complainant seeks “to take by stealth a 20 year old established asset of a worldwide established, small company, rather than approach it in a normal manner and negotiate the proper purchase settlement terms….” Respondent’s statements are unsubstantiated by any facts. Respondent failed to provide proof it established any rights to any specific asset or mark. Respondent’s references to XKParts were merely nominal and descriptive of one aspect of Respondent’s business. Nor did Respondent provide any evidence that it was a worldwide established, small company. Moreover, Respondent apparently refuses to acknowledge Complainant’s efforts at contacting Respondent in hopes of resolving the present dispute prior to filing this proceeding.
Respondent has failed to prove its claim.
As Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <xkparts.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: April 25, 2017
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