The Complainant is Bentley Motors Limited of Cheshire, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Demys Limited, United Kingdom.
The Respondent is Adeeb Khaleel of Chicago, Illinois, United States of America (“US”). 2. The Domain Names and Registrar
The disputed domain names and are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2012. On November 23, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 27, 2012, the Registrar 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 December 3, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 23, 2012. The Respondent sent an e-mail communication on December 23, 2012 asking for an extension to file a Response. As no exceptional circumstances, as required by paragraph 5(d) of the Rules, had been shown, the request was denied. No further communications from the Respondent were received by the Center.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on January 14, 2013. 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 disputed domain names were each registered on April 12, 2012.
The Complainant and its predecessors have been manufacturers of prestige motor cars under the name “Bentley” since 1919. The Bentley marque has been associated with motor racing throughout its history. Bentley won the Le Mans 24 Hour Race in 1924 and has won it a further five times between that date and 2003. The Complainant currently employs approximately 4,000 staff and operates through 212 facilities worldwide. The Bentley is one of the world’s most famous and most expensive luxury cars and its reputation has been recognized by UDRP panelists in three prior successful complaints under the Policy by the Complainant and its predecessor.
The Complainant has a portfolio of registrations of the trade mark BENTLEY throughout the world including a United States of America registration dating from 1956.
The disputed domain name resolves to a parking page provided by the Registrar and which displays links to third party sites including the sites of the Complainant’s competitors and sites promoting motorsports.
On October 4, 2012 the Complainant forwarded a letter of demand to the Respondent seeking transfer of the disputed domain names. No reply to this letter was received.
No information is available regarding the Respondent. 5. Parties’ Contentions A. Complainant
The Complainant contends that:
- The disputed domain names are identical or confusingly similar to its well-known and registered trademark BENTLEY; the US registration of which predates the registration of the disputed domain names by 56 years. The disputed domain names wholly incorporate the Complainant’s mark and the addition of the generic words “motorsport” or “motorsports” do not serve to distinguish the disputed domain names from the trademark BENTLEY, citing prior UDPR decisions under the Policy in Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409; and Rolls Royce and Bentley Motors Limited v. Suood AL-Mansoori,WIPO Case No. D2000-0383;
- The Respondent has no rights or legitimate interests in the disputed domain names. He is not licensed by the Complainant and has not received any permission or consent to the use of its marks. There is no evidence that the disputed domain names have been used otherwise than to display pay-per-click advertising and there is no other basis upon which the Respondent could claim rights or legitimate interests pursuant to paragraph 4(c) of the Policy. The use of the disputed domain names to lead to pay-per-click advertising does not constitute a bona fide offering of goods or services in terms of paragraph 4(c)(i) of the Policy. Whether or not the Respondent directly benefits from such pay-per-click advertising, it is the Respondent who is ultimately responsible for the use of the disputed domain names, citing Hewlett-Packard Company v. Alvaro Collazo, NAF Claim No. FA0302000144628. The Complainant further contends that it should be inferred from the Respondent’s failure to answer the letter of demand that the Respondent has no basis upon which he could rely to establish rights or legitimate interests.
- The Respondent’s holding of the disputed domain names constitutes and demonstrates registration and use in bad faith. The Complainant contends that the registrations were made primarily for the purpose of disrupting its business as a competitor and to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion. The Complainant relies upon the decision in Tuyap Tum Fuarcilik Yapim Anonim Sirketi (Tuyap Fairs and Exhibitions Organization Inc.) v. Tuyap /K/Koznet Kurumsal Internet Hizmetleri, WIPO Case No. D2003-0442 to support an expanded definition of the word “competitor”. B. Respondent
No Response was filed to the Complaint. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has demonstrated long established rights in the trademark BENTLEY including a US registration dating back to 1956. The disputed domain name wholly incorporates the Complainant’s mark and differs from it only by the addition of the descriptive words “motorsport” and “motorsports”, words which are totally applicable to the field in which the Complainant through itself and its predecessors has played such a prominent role. As noted, the learned panel in Dr. Ing. h.c. F. Porsche AG v. Kudos Trust/Domains by Proxy, Inc. and Standard Tactics LLC,WIPO Case No. D2006-0164: “The addition of descriptive words, ….. does not reduce the likelihood of confusion between the PORSCHE trademarks and the domain name”. Indeed, in the opinion of this Panel those words are calculated to increase that likelihood.
The Panel therefore finds that the disputed domain names, and each of them, are confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
At the time the disputed domain names were registered, the Complainant’s name and trademarks had been established for more than 90 years. It was and is, among the most prominent names in motoring and motorsports. The Respondent’s registration of the disputed domain names incorporating that mark in conjunction with words referring to the sport of motoring raises the almost irrebutable presumption that the Respondent registered the disputed domain names in full knowledge of the Complainant’s rights and interests in the trademark BENTLEY and with the intention of capitalizing on the attractive power of such a well-known mark. In those circumstances the use of the disputed domain names to direct to pay-per-click advertising cannot be considered to be a use of the disputed domain names in connection with the bona fide offering of goods or services – see for example Paris Hilton v. Deepak Kumar,WIPO Case No. D2010-1364. The Respondent has not sought to rebut the Complainant’s contentions and there is no evident basis upon which the Respondent could claim any right or legitimate interest in the disputed domain names. C. Registered and Used in Bad Faith
As noted in paragraph 6B above, at the time of registration of the disputed domain names, the Complainant’s mark and the reputation in it was well-known and long established. As noted by the learned panel in an earlier decision under the Policy in relation to the Complainant, Bentley Motors Limited v. Sergey Nikolenko,WIPO Case No. D2011-0102:
“The fame of the BENTLEY mark in the luxury car market for close on a century, makes it clear that any registration of a domain name incorporating that mark in conjunction with a genteel generic sales term, shows that no registrant of a domain name such as the Respondent would have registered it without cognisance of the Complainant’s mark.”
and
“There will be a real risk of confusion by [I]nternet users who may think that the Respondent’s website has some affiliation with or endorsement from the Complainant, should the Bentley website be developed on similar lines.”
Although, as the Complainant concedes, there is no positive evidence that the Respondent himself receives pay-per-click remuneration from the posting of the links on the parking page provided by the Registrar, there is a strong presumption that he does so and he has not sought to rebut that presumption – see Owens Corning v. NA,WIPO Case No. D2007-1143. The Respondent is, in any event as the Complainant submits, ultimately responsible for the use of the disputed domain names. The Panel therefore accepts the Complainant’s submission that the Respondent is using the disputed domain names in bad faith in terms of paragraph 4(iv) of the Policy. In the light of that finding it is unnecessary to decide whether, as the Complainant submits the Respondent is acting as a “competitor” to the Complainant by promoting the products of competing businesses.
The Panel therefore finds that the disputed domain names, and each of them, have been registered and are being used in bad faith. 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.
Desmond J. Ryan AM
Sole Panelist
Date: January 23, 2013
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