Land Rover v. ABC Productions
Claim Number: FA1208001458560
Complainant is Land Rover (“Complainant”), represented by Jennifer M. Hetu of Honigman Miller Schwartz and Cohen LLP, Michigan, USA. Respondent is ABC Productions (“Respondent”), represented by Todd Ryan, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <landroverrepairshop.com>, registered with Wild West Domains, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 16, 2012; the National Arbitration Forum received payment on August 17, 2012.
On August 17, 2012, Wild West Domains, LLC confirmed by e-mail to the National Arbitration Forum that the <landroverrepairshop.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 August 21, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 10, 2012 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@landroverrepairshop.com. Also on August 21, 2012, 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 September 7, 2012.
Complainant’s Additional Submission was received on September 12, 2012.
Respondent’s Additional Submission was received on September 17, 2012.
On September 13, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 makes the following allegations:
Complainant has used the LAND ROVER mark since 1948, when it began selling vehicles in the United Kingdom. Complainant began selling LAND ROVER vehicles in the United States in 1949, and continues to do so, spending substantial resources to promote and market its brand. Complainant’s LAND ROVER mark is widely recognized, and has been mentioned in the lyrics of songs by well-known artists such as Linkin Park and Juvenile (see Complainant’s Exhibit E) and has made appearances in television shows and movies (see Complainant’s Exhibit F). Complainant owns the domain name <landrover.com>, and numerous other websites featuring its LAND ROVER mark. Complainant owns rights in the LAND ROVER mark through trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 541,722 registered May 1, 1951). See Complainant’s Exhibit N. Complainant also owns numerous other trademark registrations with agencies internationally. Complainant uses its mark not only for its vehicles but also in connection with providing information regarding its vehicles, educational services, repair services, off-road driving, and entertainment shows, as well as on apparel, footwear, outerwear, and bicycles, among other goods and services.
Respondent registered the <landroverrepairshop.com> domain name and set up a corresponding website that makes reference to Complainant’s business and its competitors. The <landroverrepairshop.com> domain name is confusingly similar to Complainant’s registered LAND ROVER mark. Respondent does not use the disputed domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name and is not commonly known by the disputed domain name. Respondent intentionally designed the disputed domain name to cause a likelihood of confusion with Complainant. Respondent is not connected with Complainant’s business or the LAND ROVER mark. Respondent registered the domain name in bad faith by attempting to sell the domain name (see Complainant’s Exhibit T), disrupting Complainant’s business, and attempting to make a profit from the domain name by confusing Internet consumers.
B. Respondent
Respondent registered the <landroverrepairshop.com> domain name on January 13, 2010. Respondent claims that Complainant’s allegations are not supported by any evidence demonstrating that the <landroverrepairshop.com> domain name is confusingly similar to Complainant’s mark. Respondent has not suggested any affiliation with Complainant’s business nor has it used the LAND ROVER logo. Complainant has failed to carry its burden of proof to show that Respondent does not have rights or legitimate interests in the domain name. Respondent operates a website at the <nationwideautorepair.com> website, which recommends independent auto repair shops throughout the United States. See Respondent’s Exhibit A. Respondent has nominative fair use rights to use Complainant’s mark to communicate the brand of vehicle being repaired. Respondent did not register and use the <landroverrepairshop.com> domain name in bad faith. Respondent owns one of Complainant’s LAND ROVER vehicles and has ownership rights to comment on and review the vehicle through the disputed domain name.
C. Additional Submissions
Complainant’s Additional Submission argues that Respondent’s nominative fair use contention should not prevail as a defense in this proceeding, citing Forum precedent. Complainant then generally reargues the points contained in the Complainant.
Respondent’s Additional Submission reargues the points made in the Response.
1. Complainant has rights in its LAND ROVER mark.
2. Respondent’s <landroverrepairshop.com> domain name is confusingly similar to Complainant’s mark.
3. Respondent has no rights to or legitimate interests in the domain name.
4. Respondent registered and used the domain name 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:
(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 asserts rights in its LAND ROVER mark via trademark registrations with the USPTO (e.g., Reg. No. 541,722 registered May 1, 1951). Complainant also claims that it owns trademark rights with other agencies throughout the world, but gives no evidence of those registrations. The panel in AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006), concluded that the complainant’s evidence of its USPTO registrations demonstrate the complainant’s rights in the mark. The Panel determines that Complainant’s multiple USPTO registrations establish rights in the LAND ROVER mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that the <landroverrepairshop.com> domain name is confusingly similar to its LAND ROVER mark due to the fact that it includes the entire LAND ROVER mark, with the addition of the generic terms “repair” and “shop,” as well as the generic top-level domain (“gTLD”) “.com.” The Panel notes that the <landroverrepairshop.com> domain name removes the space between the words of the LAND ROVER mark. The Panel finds that combining a mark with generic words and a gTLD and removing the space within the mark does not change the domain name’s confusing similarity to Complainant’s mark for the purposes of Policy ¶ 4(a)(i). See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”).
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 (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 argues that Respondent is not commonly known by the <landroverrepairshop.com> domain name and has no connection to Complainant that would allow it to register a domain name using the LAND ROVER mark. The Panel notes that the WHOIS information associated with the domain name identifies “ABC Productions” as the registrant. The Panel determines that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii), based on the WHOIS information and Complainant’s assertion that Respondent was not given permission to use the LAND ROVER mark. See Oakley, Inc. v. Watson, D2000-1658 (WIPO May 3, 2001) (“It is clear that the value in the Oakley name has been created by the commercial use and registrations of the Complainant and it is also clear . . . that Respondent is taking advantage of the value created by the Complainant.”).
Complainant contends that Respondent uses the <landroverrepairshop.com> domain name to make references to Complainant and its competitors. Complainant provides evidence that the resolving website includes links that include Complainant’s LAND ROVER mark, as well as competing automotive businesses. See Complainant’s Exhibit O. The panel in H-D Mich. Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), stated that the respondent’s use of the domain names to resolve to a website containing links to third-party competitors does not demonstrate a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel finds that by posting competing hyperlinks at the resolving website, Respondent is not using the <landroverrepairshop.com> domain name in connection with 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).
Respondent argues that it has rights to and legitimate interests in the domain name because its use of Complainant’s mark is a nominative fair use of Complainant’s mark. This use, Respondent contends, occurs when the use of another’s trademark is necessary for purposes of identifying another’s product or service. The Panel finds the use of such a theory in a case, such as this, where the parties are competitors in the car repair business is misplaced. This theory, if given the broad effect advanced by the Respondent, would dilute the requirements set out in the UDRP.
Complainant contends that Respondent’s registration and use of the <landroverrepairshop.com> domain name is in bad faith because Respondent offers the disputed domain name for sale. Complainant claims that its Exhibit T provides evidence that Respondent attempts to sell the disputed domain name. The Panel notes that Complainant’s Exhibit T is a screenshot of the Registrar’s home page at <domainhollywood.com> rather than Respondent’s homepage. The Panel declines to find bad faith registration and use under Policy ¶ 4(b)(i) because Complainant’s evidence does not demonstrate that Respondent offers to sell the <landroverrepairshop.com> domain name.
Complainant argues that Respondent’s use of the disputed domain name causes a likelihood that consumers would seek information from Respondent’s website instead of Complainant’s, which disrupts Complainant’s business. The panel in Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001), held that the respondent likely registered the disputed domain name with the purpose of disrupting the complainant’s business, because the respondent and the complainant were in competition. The Panel finds that Respondent competes with Complainant by offering similar services, and Respondent’s registration and use of the <landroverrepairshop.com> domain name disrupts Complainant’s business, demonstrating bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
Complainant argues that Respondent demonstrates bad faith registration and use of the <landroverrepairshop.com> domain name because it attempts to make a profit by creating a likelihood of confusion with Complainant’s mark. Complainant argues in its Policy ¶ 4(a)(ii) section that Respondent diverts Complainant’s customers to make a commercial gain, and submits evidence showing Respondent’s website, which includes links to Complainant and Complainant’s competitors. See Complainant’s Exhibit T. The Panel determines that the links posted generate pay-per-click revenue for Respondent, and therefore finds that Respondent’s registration and use of the <landroverrepairshop.com> domain name is in bad faith under Policy ¶ 4(b)(iv) due to Respondent’s attempt to confuse Internet consumers and attract traffic to its site in order to make a profit. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
Complainant asserts that Respondent had prior knowledge of Complainant’s rights at the time it registered the <landroverrepairshop.com> domain name, demonstrated by Respondent’s “transparently opportunistic” use of Complainant’s well-known and federally registered LAND ROVER trademark. The Panel holds constructive notice of Complainant’s rights is inadequate to find Respondent’s bad faith registration and use. See The Am. Auto. Assoc., Inc. v. Zag Media Corp., FA 1226952 (Nat. Arb. Forum Nov. 13, 2008) ("Mere constructive knowledge is insufficient to support a finding of bad faith."). The Panel determines, however, that the content on Respondent’s resolving website, including the links, demonstrates that Respondent had actual knowledge of the LAND ROVER mark at the time it registered the <landroverrepairshop.com> domain name and therefore concludes that Respondent registered the domain name in bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <landroverrepairshop.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: September 26, 2012
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