The Complainant is Land Rover of Gaydon, Warwick, United Kingdom of Great Britain and Northern Ireland, represented by Brooks Kushman, P.C., United States of America.
The Respondent is Xabier Amezaga of Caracas, Bolivarian Republic of Venezuela. 2. The Domain Names and Registrar
The disputed domain names and are registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 21, 2011. On July 22, 2011, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. a request for registrar verification in connection with the disputed domain names. On July 25, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on July 26, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 15, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 16, 2011.
The Center appointed Charné Le Roux as the sole panelist in this matter on August 22, 2011. 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
The Complainant is the owner of the well known RANGE ROVER, LAND ROVER and LAND ROVER logo trademarks. The Complainant has manufactured sport utility vehicles for more than 60 years and those vehicles branded with the trademark RANGE ROVER, for over 40 years. RANGE ROVER has been recognized in numerous countries as a premier automotive brand. The trademark signifies luxury standards and capability.
The first “Range Rover” vehicle went on sale in 1970 and one of the first registrations that the Complainant obtained for the trademark RANGE ROVER was in the United Kingdom in 1968. The first USA registration for the same trademark was obtained in 1972. The Complainant also owns four trademark registrations in Venezuela for RANGE ROVER for “land motor vehicles”, registered in 1970 and 1997 respectively. The Complainant owns over 270 trademark applications and registrations for RANGE ROVER and variations of it in approximately 140 different territories worldwide. The Complainant furthermore owns the domain name that it registered on February 17, 2002.
The Respondent registered the disputed domain names and on October 20, 2009 and October 9, 2007 respectively. The websites at the disputed domain names display the Complainant’s RANGE ROVER and LAND ROVER trademarks and images of the Complainant’s vehicles in connection with the sale of parts for the Complainant’s vehicles. 5. Parties’ Contentions A. Complainant
The Complainant contends that it is the owner of the famous RANGE ROVER, LAND ROVER and LAND ROVER logo trademarks that it uses in connection with the manufacture, promotion and sale of sport utility vehicles. It commenced use of the trademark RANGE ROVER in connection with vehicles in 1970. It owns various trademark registrations and a domain name for the RANGE ROVER trademark in many countries in the world.
The Complainant contends that it has spent millions of dollars in advertising and promoting its RANGE ROVER and LAND ROVER trademarks throughout the United States and the world and that, as a consequence of this promotion, and also the resulting level of consumer recognition, the Complainant’s RANGE ROVER and LAND ROVER trademarks are highly distinctive and represent considerable goodwill. The Complainant submits that the public readily accepts the Complainant’s trademarks as the hallmark of automobile sales and services by the Complainant.
The Complainant contends that the disputed domain names are confusingly similar to its RANGE ROVER trademark despite the addition of the geographic term “Venezuela” and the appearance of “ltd” which is an abbreviation for the word “limited” and a general identifier of a limited corporation. The Complainant contends that the disputed domain names are designed to lead consumers who are searching for the Complainant’s goods to the Respondent’s website.
The Complainant indicates that it was successful in effecting the transfer of the unauthorized domain name to it by the National Arbitration Forum (“NAF”) in circumstances similar to the present case (See LAND ROVER vs HK Domain Privacy /Name administrator, NAF Claim No. 1341065).
The Complainant contends that the Respondent lacks rights or legitimate interests in the disputed domain names for the following reasons:
a. The Complainant has not authorized the Respondent to register or use the RANGE ROVER trademark in any way;
b. The Respondent is not commonly known by the disputed domain names, despite the fact that it is using “RANGE ROVER Limited” and/or “RANGE ROVER Venezuela” as trading names. The Complainant contends that these trading names were adopted with a mala fide intent and that there is no information to support the fact that the Respondent was known by either of these names prior to the registration of the disputed domain names.
c. The Respondent is not using the disputed domain names in connection with the bona fide offering of goods or services;
d. The Respondent is not making legitimate, noncommercial or fair use of any of the disputed domain names but intends, for commercial gain, and by misleading Internet users, to divert them to the websites to which the disputed domain names resolve. In fact, the disputed domain names falsely appear to be associated with the Complainant, thereby luring Internet users to purchase goods from the website associated with them, which goods the Complainant contends are counterfeit;
e. The Respondent had actual knowledge of the Complainant’s rights in the RANGE ROVER trademark and the Complainant’s operation of a website at “www.” at the time that the Respondent registered the disputed domain names; and
f. The Respondent cannot avail itself of any of the defenses provided in terms of Paragraph 4(c) of the Policy because it has not registered or is using the disputed domain names for reasons unconnected with their significance as the Complainant’s trademark.
The Complainant further contends that the disputed domain names were registered and are being used in bad faith. According to the Complainant, given the prominence of its RANGE ROVER trademark worldwide, the Respondent must have known that the incorporation of the name “Range Rover” in the disputed domain names would be likely to cause Internet users to believe that they are affiliated with the Complainant. The Complainant submits that the Respondent’s bad faith is also illustrated by the fact that the websites to which the disputed domain names resolve include corporate materials related to the Complainant. By the addition of the geographical indication “Venezuela” and the identifier “ltd”, the Respondent clearly pretends to be a corporate entity related to the Complainant, thereby creating a false association between the Complainant and the disputed domain names. The Complainant submits as provided in Paragraph 4(b)(iv) of the Policy that the Respondent attempts to attract, for commercial gain, Internet users to the website to which the disputed domain names resolve, by creating the likelihood of confusion with the Complainant’s RANGE ROVER trademark.
The Complainant requests that the disputed domain names be transferred to it. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In accordance with Paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove:
i) That the disputed domain names are identical or confusingly similar to the mark in which it has rights;
ii) That the Respondent has no rights or legitimate interests in respect of the disputed domain names;
iii) That the disputed domain names have been registered and are being used in bad faith.
In accordance with Paragraph 14(b) of the Rules, the Panel will draw such inferences from the Respondent’s default as it considers appropriate. This will include the acceptance of plausible evidence of the Complainant which has not been disputed. A. Procedural Issue concerning pending Court proceedings between the parties
The Complainant initiated criminal proceedings against the Respondent in Venezuela alleging in part the sale of counterfeit parts. Before a finding of the substantive issues arising from Paragraph 4(a) of the Policy can be made, the Panel must exercise its discretion whether to suspend or terminate the administrative proceeding, or to proceed to a decision, as provided for in Paragraph 18(a) of the Rules.
The Panel decides to exercise its discretion to proceed to a decision and in doing so, takes the following factors into account:
a. The Respondent did not object to the dispute proceeding to a decision;
b. It is not clear to the Panel that the criminal proceedings that have been instituted would necessarily deal with any substantive issues concerning the ownership of the disputed domain names (and in any event, naturally a UDRP decision (if issued) would not be binding on a national court as such); and
c. The decision of the Panel in this matter will not preclude the Respondent from seeking relief in Court. B. Identical or Confusingly Similar
The Panel finds on the evidence that the Complainant owns both registered and common law rights in the trademark RANGE ROVER and also that this trademark is well known and famous worldwide.
The Panel also finds that the disputed domain names are confusingly similar to the Complainant’s RANGE ROVER trademark. The differences between the Complainant and the disputed domain names are the addition of the words “Venezuela” and “ltd” which are descriptive and do not serve a distinguishing function. The Panel agrees with the Complainant that these additional elements do not assist the Respondent in escaping a finding of confusing similarity.
The first requirement of Paragraph 4(a) of the Policy is satisfied. C. Rights or Legitimate Interests
The Panel considers that the Respondent’s use of the disputed domain names is not in connection with the bona fide offering of goods and services. The Panel takes into account that the Complainant made a very serious allegation regarding the sale of counterfeit goods on the website to which the disputed domain names resolve, which the Respondent did not place in dispute in these UDRP proceedings. See e.g Advance Magazine Publishers Inc. v. Arena International Inc., WIPO Case No. D2011-0203.
The Panel finds that the Respondent’s use of the disputed domain names takes unfair advantage of the extensive reputation of the Complainant’s RANGE ROVER trademark in order to divert Internet users seeking information about the Complainant and its goods to the Respondent’s website.
The Panel further finds that there is no evidence that the Respondent is commonly known by the disputed domain names, and finds that it is not making legitimate, noncommercial or fair use of the disputed domain names, that it is not authorized by the Complainant to use the disputed domain names and that there is no other basis on which it could claim to have rights or legitimate interests in the disputed domain names in this case.
The second requirement of Paragraph 4(a) of the Policy is satisfied. D. Registered and Used in Bad Faith
The Panel finds on the evidence that due to the registration of the disputed domain names by the Respondent many years after the establishment of the Complainant’s well-known “Range Rover” business and by the use of the disputed domain names for the stated purposes, Respondent is intentionally attracting Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship and affiliation or endorsement of the Respondent’s website.
In the Panel’s view, Internet users seeking information about the Complainant’s vehicles are liable to be diverted by confusion between the disputed domain names and the Complainant’s trademark, to the Respondent’s website, where they are falsely lured into making purchases of counterfeit goods. This allows the Respondent unjustly to profit from and exploit the goodwill associated with the Complainant’s trademark. See also Advanced Magazine, supra.
In accordance with Paragraph 4(b)(iv) of the Policy, the Panel is satisfied that there is evidence of registration and use of the disputed domain names in bad faith. There is no evidence displacing this presumption.
The third requirement of Paragraph 4(a) of the Policy has been met. 7. Decision
For the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names and be transferred to the Complainant.
Charné Le Roux
Sole Panelist
Dated: September 8, 2011
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