WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Rolls-Royce Motor Cars Limited v. Auto Media Holdings Case No. D2010-0421 1. The Parties
Complainant is Rolls-Royce Motor Cars Limited of Bracknell, Berkshire, United Kingdom of Great Britain and Northern Ireland, represented by BMW AG, Germany.
Respondent is Auto Media Holdings of Las Vegas, Nevada, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2010. On March 19, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On March 21, 2010, GoD, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 22, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 11, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on April 12, 2010.
The Center appointed Ross Carson as the sole panelist in this matter on April 20, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
Complainant is the registered owner of United Kingdom Registration No. 291969 for the trademark ROLLS-ROYCE registered April 9, 1907 in respect of goods in class 12, motor cars and chassis. Complainant is also the registered owner of United States Registration No. 325,195 for the trademark ROLLS-ROYCE registered June 11, 1935 for automobiles and chassis in class 19 (Int. Cl. 12), with a claim of first use in commerce since 1906.
Complainant carries on business in the manufacture and distribution of motor vehicles, namely Rolls-Royce cars. The well-known trademark ROLLS-ROYCE has been in use for automobiles since as early as 1904 in the United Kingdom. Complainant and its predecessors in title have used the ROLLS-ROYCE trademark throughout the world over the past 100 years, directly and through appropriate licenses and permission in connection with goods and services recognized throughout the world to be of the highest quality. The trademark ROLLS-ROYCE, due to the quality and exclusivity of Rolls-Royce automobiles, is one of the most well-known and prestigious automobile brands in the world.
The disputed domain name was registered on April 13, 2004. 5. Parties' Contentions A. Complainant A.1 Identical or Confusingly Similar
Complainant states that as found in paragraph 4 above it is the owner of trademark registrations in the United Kingdom and the United States of America for the trademark ROLLS-ROYCE registered in relation to motor cars and chassis. The trademark has been widely used by Complainant, its predecessors and licensees in many countries throughout the world for over 100 years and is a famous trademark in relation to the goods for which it is registered and used.
Complainant submits that the disputed domain name is confusingly similar to the trademark ROLLS-ROYCE. The distinctive portion of the disputed domain name is “rollsroyce”, which (apart from the missing hyphen) is identical to Complainant's registered trademark. The addition of a generic term such as “inventory” to a well-known trademark is insufficient to avoid confusion. Finally, the addition of the ending “.com” (which is necessary as the generic top level domain ending) is also not sufficient to render the domain name dissimilar to the ROLLS-ROYCE trademark or to prevent consumer confusion. (See as support the decision in Rolls-Royce Motor Cars Limited v. Maria Stephen,WIPO Case No. D2006-0152). A.2 No Rights or Legitimate Interests in respect of the Disputed Domain Name
Complainant submits that Respondent has no rights or legitimate interests in respect of the disputed domain name that is the subject of the Complaint. Respondent is not a licensee of the Complainant's trademarks and has not been authorized in any way to use the same. Respondent has made no legitimate non-commercial or fair use of the disputed domain name. A.3 Registration in Bad Faith
Complainant states that it carries on business in the manufacture and distribution of motor vehicles, namely Rolls-Royce cars. The world-famous trademark ROLLS-ROYCE has been in use for automobiles since as early as 1904 in the United Kingdom. Complainant is the registered and/or beneficial owner of the ROLLS-ROYCE trademark worldwide with respect to automobiles.
Complainant states that over the last 100 years, Complainant and its predecessors in title have used the ROLLS-ROYCE trademark throughout the world, directly and through appropriate licenses and permission, in connection with goods and services recognized throughout the world to be of the highest quality. The trademark ROLLS-ROYCE, due to the quality and exclusivity of Rolls-Royce automobiles, is one of the most famous and prestigious automobile brands in the world.
Complainant states that the website associated with the disputed domain name offers the disputed domain name for sale in addition to over 25 other domain names incorporating well-known automobile trademarks.
The disputed domain name was registered on April 13, 2004. A.4 Used in Bad Faith
Complainant states that the website connected to the disputed domain name from January 21, 2010 offered to sell the disputed domain name as well as over 25 other domain names containing other car brands. An archived copy of the website from March 11, 2007 from also shows similar content.
Complainant further states that after becoming aware of the registration of the disputed domain name in December 2009, it advised Respondent by email dated January 18, 2010 that Respondent's unauthorized use of the ROLLS-ROYCE trademark in connection with the disputed domain name violated Complainant's trademark rights. The same email requested that the Respondent discontinue further use or reference to any trademarks of Complainant. Respondent replied to Complainant's email by email dated January 19, 2010 saying that it was not willing to allow the registration to lapse unless Respondent was compensated for over USD 1,500.--.
The content of the website associated with the disputed domain name has not changed and the disputed domain name continues to be offered for sale.
Complainant submits that the offer to sell the disputed domain name on a website to a third party should be taken as evidence constituting bad faith registration and use within the meaning of paragraph 4(b) of the Policy.
Specifically, paragraph 4(b)(i) of the Policy lists the following as evidence of bad faith: “circumstances indicating that [the Respondent] has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent's] documented out-of-pocket costs directly related to the domain name”.
Complainant states that prior UDRP decisions have found that offering to sell a domain name by advertising to the public at large that the domain name is for sale is evidence of bad faith and is properly regarded as an offer to sell the domain name to the Complainant or a competitor. See for example, Schott Glas and Nec/Schott Components Corp. v. Necschott,WIPO Case No. D2001-0127, (citing 8 prior decisions). It is irrelevant, therefore, that Respondent did not contact Complainant directly with an offer for sale.
Complainant submits that the fact that Respondent has not listed a specific sale price on its website is also irrelevant, since by making a general statement that the domain name is for sale, Respondent is in effect asking potential buyers to make an offer and is holding out for more than out-of pocket expenses. See, TOROC & IOC v. Peter H. Hufschmid,WIPO Case No. D2001-0604.
According to Complainant, Respondent stated in its email reply to Complainant's cease and desist e-mail that it would not stop using the disputed domain name unless the Complainant acquired it for its costs, which Respondent claimed to be over USD 1,500.--. For a domain registered since 2004 at GoD, Inc. (which sells “.com” domain names for about USD 10.-- a year), these claimed costs are over-inflated.
Complainant further submits that Respondent has, as stated under paragraph 4(b)(ii) of the Policy, “registered the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that [he has] engaged in a pattern of such conduct”. The registration and offer for sale of domain names containing third party trademarks (as can be seen on the website printouts which list over 25 domain names containing famous car brands) is evidence constituting a pattern of conduct within the meaning of paragraph 4(b)(ii) of the Policy.
Complainant states further that Respondent under its trading names and advertised on current and previous websites at show that Respondent is in the business of selling domain names.
Complainant submits that for all of the above reasons Respondent has registered and used the disputed domain name in bad faith. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the 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 disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The fact that Respondent did not submit a Response does not automatically result in a decision in favor of Complainant. The failure of Respondent to file a Response results in the Panel drawing certain inferences from Complainant's evidence. The Panel may accept all reasonable and supported allegations and inferences following therefrom in the Complaint as true. Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must establish rights in a trademark and secondly that the disputed domain name is identical to or confusingly similar to the trademark in which Complainant has rights.
Complainant has established that it is the owner of registered trademark ROLLS-ROYCE registered on the Principal Register in the United States and in the United Kingdom in relation to the goods motor cars and chassis as described in detail in paragraph 4 above. Complainant's registered trademarks were registered many decades prior to the date of registration of the disputed domain name on April 13, 2004.
The disputed domain name is comprised of the terms “rollsroyce” without a hyphen between the terms “rolls” and “royce” (as found in Complainant's registered trademarks for ROLLS-ROYCE) and the generic term “inventory” following the term “rollsroyce”. The addition of a generic term to a well-known trademark is insufficient to avoid confusion. See Rolls-Royce Motor Cars Limited v. Maria Stephen, supra. The absence of the hyphen in the disputed domain name is not sufficient to distinguish the disputed domain name from Complainant's trademark.
The inclusion of the top level domain descriptor “.com” in the disputed domain name does not affect a finding of confusingly similarity. WIPO UDRP panels have repeatedly held that the specific top level of the domain name such as “.org”, “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525 holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name; and Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429 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).
The Panel finds that Complainant has proven that the disputed domain name is confusingly similar to Complainant's trademark ROLLS-ROYCE. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Respondent is not affiliated with Complainant and has never been authorized by Complainant to use Complainant's registered trademark.
The webpage associated with the disputed domain name, incorporating Complainant's registered trademark ROLLS-ROYCE as the distinctive element, offers the disputed domain name for sale in addition to over 25 other domain names incorporating well-known automobile trademarks. The webpages associated with the disputed domain name show that Respondent is a seller of domain names and is not involved in the sale or resale of automobiles or parts for automobiles, as the term “inventory”, forming part of the disputed domain name, might imply. The use of the disputed domain name in association with a webpage inviting Internet users to make an offer to purchase the disputed domain name incorporating the trademark of a very well-known brand of automobiles as the distinctive portion of disputed domain name does not constitute a legitimate non-commercial or fair use of the disputed domain name.
It is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a disputed domain name. Respondent was given the opportunity by way of reply to demonstrate any rights or legitimate interests in the disputed domain name pursuant to paragraph 4(c) of the Policy. Previous decisions under the UDRP have found it sufficient for a complainant to make a prima facie showing that a respondent does not have any rights or legitimate interests in the disputed domain name. Once this showing is made, the burden of proof shifts to respondent to demonstrate its rights or legitimate interests in the disputed domain name. Here, Respondent did not file a Response nor avail itself of the benefits of paragraph 4(c) of the Policy.
The Panel finds that Complainant has proven on a balance of probabilities that Respondent does not have any rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(a)(iii) of the Policy, Complainant must prove that the disputed domain name has been registered and used in bad faith. C. 1. Registered in Bad Faith
Complainant is the owner of numerous trademark registrations in the United States and throughout the world for the trademark ROLLS-ROYCE registered in relation to motor vehicles and chassis. It has been held in previous UDRP decisions that Complainant has substantial goodwill and reputation in its ROLLS-ROYCE trademark. See, Rolls-Royce Motor Cars Limited v. Maria Stephen, supra. Complainant has also established registered trademark rights in the ROLLS-ROYCE trademark. See paragraph 4 above for particulars of the United Kingdom and the United States Trademark registrations. The registration for the ROLLS-ROYCE trademarks extend back for decades. As a result of extensive advertising and use of the ROLLS-ROYCE trademarks in association with goods and services relating to automobiles for over one hundred years, the trademark ROLLS-ROYCE was a very well-known trademark in relation to Complainant's goods and services in the United States prior to registration of the disputed domain name by Respondent on April 13, 2004.
It is difficult to conceive how Respondent could have created the disputed domain name without prior knowledge of Complainant's registered trademarks for ROLLS-ROYCE. Respondent was invited to file a Response. Respondent's failure to explain any reason for choosing the disputed domain name strengthens the Panel's inference that Respondent registered the disputed domain name with knowledge of Complainant's trademarks which were well-known in the United States at the date of registration of the disputed domain name on April 13, 2004.
The Panel finds that Respondent registered the disputed domain name in bad faith. C.2. Domain Name Used in Bad Faith
Paragraph 4(b) of the Policy provides a number of circumstances that constitute bad faith registration and use.
Paragraph 4(b)(i) of the Policy lists the following circumstance as evidence of bad faith: “circumstances indicating that [the Respondent] has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent's] documented out-of-pocket costs directly related to the domain name”.
The webpage associated with the disputed domain name, incorporating Complainant's registered trademark ROLLS-ROYCE as the distinctive element, offers the disputed domain name for sale in addition to over 25 other domain names incorporating well-known automobile trademarks. The webpages associated with the disputed domain name show that Respondent is a seller of domain names and is not involved in the sale or resale of automobiles or parts for automobiles as the term “inventory” forming part of the disputed domain name might imply.
After becoming aware of the registration of the disputed domain name in December 2009, Complainant advised Respondent by email dated January 18, 2010 that its unauthorized use of the ROLLS-ROYCE trademark in connection with the disputed domain name violated Complainant's trademark rights. The same email requested that Respondent discontinue further use or reference to any of Complainant's trademarks. Respondent replied to Complainant's email by email dated January 19, 2010 saying that it was not willing to allow the registration to lapse unless Respondent was compensated for over USD 1.500,--. Respondent's request for payment of over USD 1,500 for the disputed domain name is well in excess of Respondent's conceivable out-of- pocket expenses directly related to the disputed domain name.
In similar circumstances, offering to sell a domain name by advertising to the public at large that the domain name is for sale is evidence of bad faith and is properly regarded as an offer to sell the domain name to the complainant or a competitor. See, Schott Glas and Nec/Schott Components Corp. v. Necschott, supra. It is irrelevant, therefore, that Respondent did not contact Complainant directly with an offer for sale. The fact that Respondent has not listed a specific sale price on its website is also irrelevant, since by making a general statement that the disputed domain name is for sale, Respondent is in effect asking potential buyers to make an offer and is holding out for more than out-of pocket expenses. See, TOROC & IOC v. Hufschmid, supra.
A further circumstance showing evidence of bad faith is described in paragraph 4(b)(ii) of the Policy as registering “the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that [he has] engaged in a pattern of such conduct”.
The registration and offer for sale of the disputed domain name incorporating Complainant's well-known trademark ROLLS-ROYCE as the distinctive element on the webpage associated with the disputed domain name in association with more than 25 other domain names containing famous car brand names of competitors of Complainant as the distinctive element is evidence constituting a pattern of conduct of use in bad faith as contemplated within the meaning of paragraph 4(b)(ii) of the Policy.
The Panel finds that Complainant has proven on a balance of probabilities that Respondent has used the disputed domain name in bad faith within the meaning of paragraph 4(b)(i), 4(b)(ii) and therefore paragraph 4(a)(iii) of the Policy, and that the Complaint satisfies the requirements under paragraph 4(a)(iii) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to Complainant.
Ross Carson
Sole Panelist
Dated: May 2, 2010
Full & Egal Universal Law Academy