WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rolls-Royce and Bentley Motors Limited v. Suood AL-Mansoori
Case No. D2000-0383
1. The Parties
The Complainant
Rolls-Royce and Bentley Motors Limited
Pyms Lane
Crewe, Cheshire, CW1 3PL
UK
Represented by:
Barbara Weil Gall
Sherman & Howard L.L.C.
633 17th Stree, Suite 3000
Denver, Colorado 80202
USA
The Respondent
Suood AL-Mansoori
8899 East Prentice Ave., Apt#3304
Greenwood Village, Colorado 80111
USA
2. The Domain Name and Registrar
The domain names at issue are:
B
Rolls-R
It is registered with:
R
575 8th Avenue, 11th Floor
New York, NY 10018
3. Procedural History
h On May 4, 2000, the Complaint was filed with the WIPO Arbitration and Mediation Center. The Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules.
h On May 15, 2000, the Center acknowledged of receipt of the Complaint. On that date, the Center requested R verification, and received the Registrar�s answer to that request on May 16, 2000.
h On May 19, 2000, the Center printed out the web pages for the contested domain names. Both websites stated that they are "coming soon". The Center also communicated to both parties a Notification of Complaint and Commencement together with communication records. The e-mail to the respondent was returned as an undeliverable e-mail message.
h Rule 5 of Rules for Uniform Domain Name Dispute Resolution Policy requires a respondent to submit a response to the Provider addressing the matters contained therein within twenty days of the date of commencement of the administrative proceeding. As no such response was submitted, on June 8, 2000, the Center recorded a Notification of Respondent�s Default and communicated it to both parties.
h On June 16, 2000, the sole panelist agreed to the appointment. As required by the Rules, he filed a Statement of Acceptance and Declaration of Impartiality and Independence.
h On June 20, 2000, the Center provided Notification of Appointment of Administrative Panel and Projected Decision Date to the parties.
4. Jurisdictional Basis for the Mandatory Administrative Proceeding
Paragraph 4 of the ICANN Uniform Domain Name Dispute Resolution Policy requires that a registrant must submit to a mandatory administrative proceeding in the event that a third party asserts to the applicable Provider, in compliance with the Rules of Procedure, that the registered domain name is disputed under the grounds stipulated in that paragraph.
The registration agreement, pursuant to which the domain name that is the subject of this Complaint was registered, incorporates the Policy in force at the time "or a later version of this Policy adapted by ICANN". A true and correct copy of the domain name dispute policy applicable to the domain name in question was provided by the complainant as Exhibit B to the Complaint.
As noted above, under Paragraph 4(a), a respondent is required to submit to a mandatory administrative proceeding where it is alleged that:
(1) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) The 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.
The Administrative Panel finds that the complainant has complied with the applicable rules and this dispute is properly within the scope of the Policy and, further, that the Panel has jurisdiction to decide the dispute.
5. Factual Background
The Panel must base its decision on the record evidence. As the complainant was the only party that filed evidence in support of its case, where findings of fact are made, in each instance, the Panel has satisfied itself that the evidence supports the complainant�s allegations of fact.
The domain names at issue, rolls-r and b, were registered by the respondent on October 5, and October 6, 1999, respectively. Although the Complaint is silent as to when the complainant first became aware of the respondent�s registration of the domain names, Exhibit D, dated October 20, 1999, shows that the respondent contacted Ms. Claire Smith and confirmed that he "got the domain names Rolls-R and B".
Exhibit C to the Complaint contains copies of the registration certificates showing that the complainant owns the exclusive trademark ROLLS-ROYCE, U.S. Registration No. 0325195 (for Automobiles and chassis in Class 19) and owns the exclusive trademark BENTLEY, U.S. Registration No. 0645703 (Internal combustion engines and parts thereof in Class 7).
The domain names adopted by Respondent, B and Rolls-R, are in the first instance, substantially identical to complainant�s registered trademark BENTLEY with the addition of the number "2000", and in the second instance, identical to the registered trademark, ROLLS-ROYCE.
On October 20, 1999, the respondent acknowledged that purpose for obtaining the domain names in question was to sell them and indeed, offered them for sale or "some commission". On October 24, 1999, respondent again offered to sell the domain names to the complainant for more than his out-of-pocket expenses and described other offers claimed to have been received from third parties.
6. Parties� Contentions
A. The complainant contends that:
The respondent�s purpose in registering the domain names was for the sole purpose of obtaining money for them, in violation of paragraph 4(b)(i) of the ICANN Uniform Domain Name Dispute Resolution Policy. It goes on to contend [at paragraph 12.B] that the domain names were "certainly registered in bad faith".
B. The respondent contends that:
The respondent was duly served by the WIPO Arbitration and Mediation Center but did not file a response within the prescribed timeframe. Accordingly, a Notification of Respondent Default was issued by the Center on June 8, 2000.
In the interests of transparency, however, it is worth citing the two e-mail messages transmitted by the respondent to the Complainant prior to the filing of this Complaint.
The first, dated October 20, 1999, is reproduced in full:
"Dear Sir GARRETTS,
well I�m the one who got the domain names Rolls-R and B, well lets talk seriously, actually I�m 20 years old ..studying in USA, and I was looking at some domains that were sold for a great prices like for hundreds of thousands or millions and thought that I might get a nice name and sell it for a price like that �I don�t have any background in things like that but I thought that I might be able to sell it and buy a real nice car since I don�t got one �and I didn�t know if what I�m doing was eligal or not ..and I also thought of selling the domain names to an authorized Rolls-Royce and Bentley dealers, and at least I reserved it for them and no one else did, I�m an understanding person and I guess I understood that I�ve made a mistake ..but I wish that my dream becomes true so is there any possible way that at least I get some commission for it .. and I�ll be glad to return the domains �so I would love to be informed please and thank you
Best regards
Suood AL-Mansoori"
This message was followed by another e-mail on October 24, 1999. It is also reproduced in full:
"Dear GARRETTS,
well its me again Suood AL-Mansoori about the subject of the domain names Rolls-R and B, well you guys are trying to let me sell the domains to you by the price that I bought and not to make a website with it and do not sell it �but I think that is not fair for me, since you wanna take the name from me and I�m the one who bought it and paid for it, and I also got some bids on it and the last one was around $186,000 and I�m getting more bids each time and still didn�t decide ..and at the end you guys come to ask me to sell it by the price of $70, I guess it doesn�t fit that a big company like Rolls-Royce and Bentley will try to sue me and try to put lawyers against some one who is 20 year old only �that might be not good for companies like these �especially that those companies are very famous world wide, ..I was thinking of making a website using Java and cool stuff for Rolls-Royce and Bentley cars, but I will stop this decision �but still not thinking to sell the domain for $ 70 which is the price that I bought it for ..its unbelievable that I get a $200,000 bid for this domain and at the end I sell it for $70 that�s really not fair, so I would like you to talk to the manager and for the responsible people and make a decision about the domain name ..and I�ll be waiting for your reply �so take care and good bye ..waiting for the reply ..thank you.
Suood AL-Mansoori"
7. Discussion and Findings
The Panel is constituted in order to determine whether the respondent�s registration of b and rolls-r complies with the Uniform Domain Name Dispute Resolution Policy. As noted above, the Policy provides for a mandatory administrative proceeding on the grounds set out in paragraph 4. They are:
Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
The Complaint does not fully set out argumentation with respect to all three elements of paragraph 4(b). That being said, the Panel is of the view that the record contains sufficient evidence of each of the three elements.
The Panel finds that the complainant has proved the first element. In its view, the domain names b and rolls-r are, in the first instance, confusingly similar, and in the second, identical to trademarks in which the complainant has rights.
Secondly, the complainant must prove that the respondent has no rights or legitimate interests in respect of the domain name.
The Panel concludes that respondent has no rights or legitimate interests in respect of the domain names at issue. The complainant�s rights and legitimate interests in the name b and rolls-r are settled.
Thirdly, it must be shown that the domain name at issue has been registered and is being used in bad faith. The respondent�s two communications cited in paragraph 6(B) above indicate that the respondent reserved the domain names for the sole purpose of obtaining money for them.
The Panel concludes that a review of the evidence filed in support of the Complaint shows that b and rolls-r were registered "primarily for the purpose of selling" the domain name registration to the complainant who is the owner of the trademarks for valuable consideration in excess of the respondent�s out-of-pocket costs.
In the circumstances, the Panel has no doubt in concluding that the domain names were registered and used in bad faith.
8. Decision
At paragraph 13 of the Complaint, the complainant requested that the Panel issue a decision that the contested domain name be transferred to it. In light of the findings made above and having regard to the remedies stipulated in Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names b and rolls-r be transferred to the complainant, Rolls-Royce and Bentley Motors Limited.
J. C. THOMAS
Presiding Panelist
Dated: June 30, 2000
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