The Complainant is Land Rover of Warwick, United Kingdom of Great Britain and Northern Island, represented by Rouse Legal.
The Respondent is Liumei of Chengdu, China, appearing pro se. 2. The Domain Name and Registrar
The disputed domain name is registered with Jiangsu Bangning Science & Technology Co. Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 18, 2011. On August 19, 2011, the Center transmitted by email to Jiangsu Bangning Science & Technology Co. Ltd. a request for registrar verification in connection with the disputed domain name. On August 21, 2011, Jiangsu Bangning Science & Technology Co. Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details. On August 25, 2011, the Center transmitted an email to the parties in Chinese and English concerning the language of the proceeding. On August 26, 2011, the Complainant submitted a request that English be the language of the proceeding. On August 30, 2011, the Respondent submitted a request that Chinese be the language of the proceeding. The Center has verified that the Complaint satisfies 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 proceeding commenced on August 31, 2011. In accordance with the Rules, paragraph 5(a), the due date for the Response was September 20, 2011. The Response was filed with the Center on September 20, 2011.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on September 29, 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 A. Complainant
The Complainant is a company incorporated in the United Kingdom and the owner of several registrations for the trade mark ROVER (the “Trade Mark”) worldwide, including a registration in the United Kingdom registered since 1906, and a Community Trademark registration registered in respect of, inter alia, clothing, footwear, headgear and bags. The Complainant is also the owner of numerous registrations worldwide for the trade mark LAND ROVER, including a registration in the United Kingdom dating from 1947, and a registration in China dating from 1957. The Complainant is also the owner of the domain name . B. Respondent
The Respondent is an individual based in China.
The disputed domain name was registered on March 27, 2010. 5. Parties’ Contentions A. Complainant
The Complainant made the following submissions in the Complaint.
The Complainant is a British car manufacturer which specializes in four wheel drive vehicles. The Complainant, its predecessors and associated companies have been producing vehicles under the Trade Mark since 1904 and under the LAND ROVER trade mark since 1948.
In 2009 the Complainant sold 194,000 vehicles worldwide. The Complainant has also seen huge success in China in recent years. In 2010 the Complainant’s sales in China doubled to 23,500 and China now represents the second largest market for the Complainant’s vehicles.
The Complainant has invested significantly in the advertising and promotion of its products. The Complainant is well-known for its corporate sponsorship of British events and sports teams. The Complainant supports English equestrian events including the Burghley Horse Trials and the Royal Windsor Horse Show and provides sponsorship to the British Eventing Team. The Complainant also lends support to alpine events and is the Official Vehicle Partner to the British Alpine Ski Team and the British Snowboard Team.
The Complainant is also well-known for its involvement with the game of rugby. The Complainant sponsors competitions at all levels of the game, from under-11/12s national tournament, through to premiership rugby, and international rugby. The Complainant was partner to the British rugby team throughout their 2001, 2005 and 2009 tours and is the Official Vehicle Provider for the Rugby World Cup 2011 in New Zealand.
The Complainant offers a range of branded clothing and merchandise under the LAND ROVER trade mark for sale through its authorized licensees.
The disputed domain name is confusingly similar to the Trade Mark as it contains the Trade Mark in its entirety. The suffix “England” is a generic term which is indicative of the Complainant as an iconic British brand.
The disputed domain name is resolved to a website promoting a menswear store based in Chengdu, China and operated by Chengdu Land Rover Trading Co. Ltd. (the “Website”). The Complainant contends that this company name registration infringes the Complainant’s trade mark rights in China.
The Respondent is not commonly known under the disputed domain name and does not have any legitimate trade mark rights in respect of the disputed domain name.
The Respondent has not been licensed or authorised by the Complainant to use the Trade Mark or to register the disputed domain name. The Respondent is not making a bona fide offering of goods or services under the disputed domain name.
The Respondent has registered and is using the disputed domain name in bad faith. The Respondent is using the disputed domain name primarily for the purpose of intentionally attracting, for commercial gain, Internet users to the Website.
The Complainant engaged investigators to investigate the operator of the Website and the clothing store referred to in the Website. The investigators visited the clothing store and purchased L ROVER branded clothing from the store. The store’s carrier bags and promotional material are marked with the company name British Land Rover Co. Ltd. The Complainant further alleges its investigators were told by the store’s staff that L ROVER is a famous British brand and that the clothing in the store was designed by British designers.
The Complainant further contends that the store promoted on the Website is selling counterfeit clothing under the LII ROVER and LAND ROVER trade marks. B. Respondent
The Respondent made the following submissions in the Response.
The Respondent contends the disputed domain name is not confusingly similar to the Trade Mark. The Respondent further argues that it has obtained various company name and trade mark registrations which give it rights and legitimate interests in the disputed domain name, namely a Hong Kong company registration for “England Land Rover Co Limited”, Chinese trade mark registrations for the L.ROVER mark (registered on December 21, 2010) and the LII ROVER mark (registered on November 7, 2011), and its Chinese business registration certificate for Chengdu Land Rover Trading Co. Ltd.
The Respondent also contends that the Complainant does not have any registrations for its ROVER and LAND ROVER trade marks in China in respect of clothing, and that well-known trade mark status in relation to the Complainant’s trade mark registrations in China in respect of automobiles cannot extend to categories of products in respect of which the marks have not been registered in China.
The Respondent further contends that it has not registered and used the disputed domain name in bad faith, and that the disputed domain name is being used in respect of the promotion of a legitimate business in respect of the sale of menswear. Also, the Respondent alleges that after receiving the Complaint it has modified the Website so as to display prominently its registered LII ROVER trade mark, and that is has also changed the trade marks used at its clothing store in order to prevent consumer confusion. 6. Discussion and Findings 6.1 Language of the Proceeding
The language of the registration agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. No agreement has been entered into between the Complainant and the Respondent to the effect that the language of the proceeding should be English.
Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) Electrical Appliance Co. Ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593).
The Complainant has requested that English be the language of the proceeding for the following reasons:
(1) the Complainant is a company registered and located in the United Kingdom where English is the native language and Chinese is not widely spoken; and
(2) there is an English language version of the Website, which indicates that the Respondent has a very good understanding of English.
The Complainant has also offered to file a Chinese translation of the Complaint, if necessary.
The Respondent has requested that Chinese be the language of the proceeding for the following reasons:
(1) Paragraph 11 of the Rules prescribes that the language of the proceeding should be the language of the Registration Agreement;
(2) There were no communications between the parties prior to the filing of the Complaint. The Respondent is Chinese and is not proficient in English, and therefore asks to be able to file the Response in Chinese;
(3) The Respondent does not have an English speaking lawyer familiar with UDRP procedure.
On August 21, 2011, Jiangsu Bangning Science & Technology Co. Ltd. transmitted to the Center its verification response confirming that the language of the registration agreement is Chinese.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).
The Panel notes, given the Website contains both Chinese and English language versions, it appears the Respondent (or at the very least the operator of the Website) is in fact proficient in the English language (Expoconsult B.V. trading as CMP Information v. Roc Guan, WIPO Case No. D2008-1600; Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).
The Panel would further note that the Respondent has been able to file its Response (in Chinese) notwithstanding the filing of the Complaint in English.
Having considered all the matters above, the Panel determines under paragraph 11(a) that:
(1) It will accept the filing of the Complaint in English;
(2) It will accept the filing of the Response in Chinese; and
(3) The Decision shall be rendered in English. 6.2 Decision A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate the date of registration of the disputed domain name by over a century.
UDRP panels have consistently held that domain names are generally identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).
The disputed domain name contains the Trade Mark in its entirety. The Panel finds that the addition of the non-distinctive word “England” does not serve to distinguish the disputed domain name from the Trade Mark, particularly given the Complainant and the Trade Mark have always been strongly associated with England.
The Panel finds that the disputed domain name is confusingly similar to the Trade Mark.
The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organisation) have been commonly known by the domain name even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Complainant has stated categorically that it has given no such authorization to the Respondent. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain name by over 100 years. There is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden of production is thus on the Respondent to rebut this presumption (Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Website promotes menswear and features photographs of a European man modeling the clothing. Four wheel drive vehicles are shown in the background of some of the photographs, although it is not clear whether the vehicles are those manufactured by the Complainant. The Website does however prominently display a logo trade mark LII ROVER which is clearly confusingly similar to both the Trade Mark and the Complainant’s LAND ROVER trade mark. Furthermore, the color scheme for the LII ROVER logo mark is the same as for the Complainant’s LAND ROVER logo mark (white lettering on a green background).
Even more telling is the “Introduction” page of the Website, which contains repeated references to “land rover” and to “British land rover company”. In view also of the Panel’s findings below in respect of bad faith, the Panel finds the use of the Trade Mark in this manner without the authorization of the Complainant does not give rise to any rights or legitimate interests in the disputed domain name on the part of the Respondent.
The Respondent’s business registration certificate for Chengdu Land Rover Trading Co. Ltd (which the Panel notes is, of course, in Chinese) does not confer on the Respondent any trade mark rights under Chinese law in respect of the disputed domain name, and in particular in respect of the English language word “Rover” comprised in the disputed domain name.
The Respondent’s Hong Kong company registration certificate for England Land Rover Co Limited does not confer on the Respondent any trade mark rights in China (or indeed in Hong Kong) in respect of the disputed domain name, and in particular in respect of the English language words “Rover” and “England” comprised in the disputed domain name. If anything, in light of the Panel’s observations below and considering the totality of circumstances of this particular case, the registration of this Hong Kong company by the Respondent may be considered as evidence of a lack of bona fide rights or legitimate interests in respect of the disputed domain name.
Paragraph 2.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) suggests that a respondent’s registration of a trade mark which corresponds to a disputed domain name normally will, but does not necessarily, establish rights or legitimate interests in respect of the disputed domain name.
The Panel would make the following observations in respect of the Respondent’s trade mark registrations in China for the L.ROVER device trade mark:
1. the registration is for a stylized L.ROVER device trade mark;
2. the mark is not being used by the Respondent on the Website and there is no evidence on the record of any other use by the Respondent of the mark;
3. the device mark used by the Respondent on the website is the LII ROVER device mark featuring white wording on a green background which is quite different to the Respondent’s registered mark L. ROVER, is confusingly similar to the Complainant’s LAND ROVER device mark, and uses the same corporate livery as the Complainant;
4. the disputed domain name does not contain the wording component of the Respondent’s registered trade mark L.ROVER in its entirety and it is therefore questionable as to whether the Respondent’s registered trade mark gives rise to rights on the part of the Respondent in respect of the disputed domain name . In particular, the Panel would query whether the Respondent’s mark corresponds to the disputed domain name given the differences between the two;
5. the mark was applied for on May 12, 2009 and did not proceed to registration until December 21, 2010.
The Panel would make the following observations in respect of the Respondent’s trade mark registration in China for the LII ROVER word trade mark:
1. the registration is for a word mark with the second and third characters “II” in a distinctive font;
2. the mark is not being used as registered by the Respondent on the Website and there is no evidence on the record of any other use by the Respondent of the mark;
3. the device mark used by the Respondent on the Website differs from the Respondent’s LII ROVER word mark;
4. the disputed domain name does not contain the Respondent’s registered trade mark LII ROVER in its entirety and it is therefore questionable as to whether the Respondent’s registered trade mark gives rise to rights on the part of the Respondent in respect of the disputed domain name . In particular, the Panel would query whether the Respondent’s mark corresponds to the disputed domain name given the differences between the two;
5. the mark was applied for on July 14, 2009 and did not proceed to registration until November 7, 2010.
In all the circumstances, the Panel concludes this is not a case where the Respondent’s registration of a trade mark gives rise to rights or legitimate interests in respect of a corresponding domain name. Furthermore, in light of the findings below in respect of bad faith, and so far as this Panel’s assessment under the Policy is concerned, the Panel finds the facts of this case suggest the Respondent registered its trade mark (as well as both companies in Chengdu and in Hong Kong) in order to facilitate taking unfair advantage of the Complainant’s longstanding pre-existing trade mark rights in respect of the Trade Mark and in respect of the LAND ROVER mark (Chemical Works of Gedeon Richter Plc v. Covex Farma S.L.,WIPO Case No. D2008-1379).
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
“By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
According to the Panel, in registering and using the disputed domain name the Respondent has clearly used the Trade Mark (as well as the Complainant’s LAND ROVER mark) in order to attract Internet users to the Websites, by creating a likelihood of confusion with the Trade Mark. This has been done without the authorization of the Complainant. The mere fact of the incorporation of Chengdu Land Rover Trading Co. Ltd. does not of itself provide the Respondent (or the operator of the business/Website) with the right to register the disputed domain name and if anything suggests bad faith on the part of the Respondent1. Similarly, in light of the circumstances of this case, the Panel concludes that the Respondent’s recently registered L.ROVER and LII ROVER marks in China, if anything, provide further evidence in support of the conclusion that the Respondent’s conduct in respect of the disputed domain name, the Website and the business promoted on the Website amounts to a deliberate attempt to trade off the goodwill of the Complainant in the Trade Mark and in the LAND ROVER name.
There is no evidence that the Respondent or the operator of the business featured in the Website has any operations in Hong Kong, which the Panel notes, notwithstanding the resumption of sovereignty by China in 1997, has retained a separate legal (and company registration) system to the system elsewhere in China. Considering the totality of the circumstances of this particular case, the Panel finds the registration of the Hong Kong company England Land Rover Co Limited provides further evidence of bad faith on the part of the Respondent, since this company comprising a well-known trade mark can be seen as an attempt to legitimize infringing conduct elsewhere in China2. In all the circumstances, the inference is clearly there to be drawn that the Respondent has engaged in such conduct in respect of the incorporation of England Land Rover Co Limited, a further indication of bad faith.
The Respondent contends it has, following receipt of the Complaint, modified the Website in order to prevent consumer confusion and, in particular, so that the Website features its LII ROVER mark. As at the date of this Decision, however, the Panel notes the Website continues to feature prominently direct references to, inter alia, “Land Rover” and “British Land Rover”. Furthermore, as noted above in respect of the Panel’s findings under the second limb of the Policy, the Respondent is not using the LII ROVER mark as registered on the Website.
The Complainant has alleged that the clothing featured on the Website is counterfeit LAND ROVER clothing. The Panel would suggest that great care needs to be taken by complainants and their legal advisers before making counterfeiting allegations in UDRP proceedings. Whilst it may be the case that the clothing in question infringes the Complainant’s trade mark registrations in China3, the Panel can find no evidence that the clothing is in fact counterfeit LAND ROVER or ROVER clothing. The Panel would caution complainants against interchanging the word “counterfeiting” with “infringing”, particularly given the serious civil and criminal penalties associated with counterfeiting in many jurisdictions, including China.
The Panel in all the circumstances finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy. For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled. 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 disputed domain name be transferred to the Complainant.
Sebastian M.W. Hughes
Sole Panelist
Dated: November 1, 2011
1 The Panel notes that a Panel’s determination regarding the Complainant’s claim that the incorporation of this company under a name containing the words “Land Rover” amounts to trade mark infringement under Chinese law, whatever the merits, or otherwise, of such claims may be, goes beyond the scope of the present dispute under the Policy.
2 It is however trite that incorporation of a company name in Hong Kong does not confer any trade mark rights whatsoever (whether in Hong Kong, China or elsewhere).
3 Such issues would in any event be beyond the scope of the present dispute under the Policy.
Full & Egal Universal Law Academy