Jaguar Land Rover Limited v. Ludovit Olah
Claim Number: FA1606001679864
Complainant is Jaguar Land Rover Limited (“Complainant”), represented by Jennifer K. Ziegler of Brooks Kushman P.C., Michigan, USA. Respondent is Ludovit Olah (“Respondent”), Slovakia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jlrengineering.com>, registered with Realtime Register B.V.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 16, 2016; the Forum received payment on June 16, 2016.
On June 20, 2016, Realtime Register B.V. confirmed by e-mail to the Forum that the <jlrengineering.com> domain name is registered with Realtime Register B.V. and that Respondent is the current registrant of the name. Realtime Register B.V. has verified that Respondent is bound by the Realtime Register B.V. 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 June 20, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 11, 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@jlrengineering.com. Also on June 20, 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 July 20, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant is a globally renowned manufacturer of premium automobiles and sport utility vehicles, based in the Midlands region of England. Complainant has registered the JLR mark with the European Union’s Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 10258747, registered Feb. 23, 2012), which demonstrates Complainant’s rights in its mark. The <jlrengineering.com> domain is confusingly similar to Complainant’s mark as it incorporates Complainant’s mark in its entirety, adds the descriptive term “engineering,” and adds the generic top-level domain (“gTLD”) “.com.”
ii) Respondent has no rights or legitimate interests in the disputed domain name. First, Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Second, Respondent is not licensed or authorized to use Complainant’s mark. Finally, Respondent is not making a bona fide offering of goods or services through the disputed domain name or a legitimate noncommercial or fair use. Rather, Respondent uses its disputed domain name to direct Internet users to a commercial website that prominently features Complainant’s mark.
iii) Respondent has registered and is using the disputed domain name in bad faith. First, Respondent’s disputed domain name disrupts and competes with Complainant’s business. Second, Respondent uses the disputed domain name to profit from Internet users’ confusion. Finally, because of the use of Complainants trademark on Respondent’s website, it is clear that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark.
B. Respondent
Respondent did not submit an official response in this proceeding. Respondent sent an email to the Forum stating that the disputed domain name was created without any connections to Jaguar company for its business. There is no fraudulent behavior or bad faith. There was no connection to Complainant. Respondent is willing to sell the disputed domain if it is not possible to keep it for Respondent's purposes. Complainant can contact Respondent at any time.
The Panel notes that the disputed domain name was registered on September 18, 2015.
Complainant established that it had rights in the mark contained in the disputed domain name. The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed 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.
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 is a globally renowned manufacturer of premium automobiles and sport utility vehicles, based in the Midlands region of England. Complainant has registered the JLR mark with the OHIM (Reg. No. 10258747, registered Feb. 23, 2012). Complainant contends that its OHIM registration demonstrates its rights in its mark. The Panel finds that trademark registrations with the OHIM suffice to demonstrate a complainant’s rights in its mark for the purposes of Policy ¶ 4(a)(i). See Pettigo Comercio Internacional Lda v. Siju Puthanveettil, FA 1600741 (Forum February 18, 2015) (“The Panel concludes that Complainant’s valid registration of LYCA with OHIM sufficiently demonstrates Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has demonstrated its rights in its mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that the <jlrengineering.com> domain is confusingly similar to Complainant’s mark as it incorporates Complainant’s mark in its entirety, while adding the descriptive term “engineering” and the gTLD “.com.” Panels have concluded that neither the addition of a descriptive word nor the affixation of the gTLD “.com” serves to adequately distinguish a respondent’s disputed domain name from a complainant’s mark under the Policy. See Am. Online, Inc. v. Karandish, FA 563833 (Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to a registered mark does not sufficiently distinguish a domain name under Policy ¶ 4(a)(i)); see also AOL Inc. v. Morgan, FA 1349260 (Forum Nov. 4, 2010) (concluding that the addition of the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name from the mark). For these reasons, the Panel finds that Respondent’s domain is confusingly similar to Complainant’s mark per 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 (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.”).
Complainant argues that Respondent has no rights or legitimate interests in the domain name. Complainant contends that Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Further, Complainant argues that Respondent has no license or authorization to use Complainant’s mark. The Panel notes that the WHOIS information lists “Ludovit Olah” as registrant and that Respondent has failed to provide any evidence for the Panel’s consideration. Therefore, the Panel finds no basis in the available record to find Respondent commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant contends that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Specifically, Complainant argues that Respondent uses its disputed domain name to direct Internet users to a commercial website that features services like those found on Complainant’s website. The Panel notes screenshots of the website that resolves from Respondent’s domain. Previous panels have held that 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 Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant 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).”).
Respondent sent an email to the Forum stating that the disputed domain name was created without any connections to Jaguar company for its business; there was no fraudulent behavior or bad faith; and there was no connection to Complainant. However, the Panel finds that none of the Respondent's statements shows Respondent's rights or legitimate interests in the disputed domain name. As such, the Panel finds that Respondent is not 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).
Complainant alleges that Respondent’s disputed domain name disrupts and competes with Complainant’s business. Past panels have found evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent appropriates a complainant’s mark in an attempt to divert the complainant’s customers to the respondent’s competing business. See Spark Networks PLC v. Houlihan, FA 653476 (Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)). Respondent sent an email to the Forum stating that the disputed domain name was created without any connections to Jaguar company for its business; there is no fraudulent behavior or bad faith; there was no connection to Complainant; and Respondent is willing to sell the disputed domain if it is not possible to keep it for Respondent's purposes. However, the Panel finds that none of the Respondent's statements shows good faith registration and use of the disputed domain name. Therefore, the Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iii).
Complainant contends that Respondent uses the disputed domain name to profit from Internet users’ confusion. Complainant has submitted evidence that Respondent has attempted to connect with Complainants employees on social media platforms in an attempt to further strengthen the sense of affiliation that Respondent is attempting to foster. Previous panels have determined that a respondent’s use of a confusingly similar domain name to sell products and/or services that are in direct competition with a complainant’s business constitutes bad faith registration and use per Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)). Accordingly, the Panel decides that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Finally, because of the automotive-related content on Respondent’s resolving webpage and the prominent use of Complainant’s trademarks, Complainant argues that it is clear that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark. Past panels have held that a respondent demonstrated 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 Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Accordingly, the 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <jlrengineering.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: July 28, 2016
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