The Complainant is Jaguar Land Rover Limited of Coventry, United Kingdom of Great Britain and Northern Ireland (the “UK”), represented by Arochi & Lindner, Mexico.
The Respondent is GKG.NET Domain Proxy Service Administrator of Bryan, Texas, United States of America (the “USA”) / Grupo Sanchez Estrada, S.A. de C.V., Alejandra Ruiz of Guadalajara, Jalisco, Mexico. 2. The Domain Name and Registrar
The disputed domain name is registered with GKG.NET, INC (formerly GK Group LLC) (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 20, 2014. On September 22, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 26, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 29, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 5, 2014. On October 3, 2014, the Center received an informal communication from the Respondent.
The Center verified that the Complaint together with the amended 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 October 9, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 29, 2014. The Center did not receive any formal Response and on October 30, 2014, the Center informed the parties that it will commence with the Panel appointment process.
The Center appointed Sir Ian Barker as the sole panelist in this matter on November 4, 2014. 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 largest automotive manufacturer in the UK. It manufactures the well-known Jaguar and Land Rover motor vehicles. It sells its products world-wide including in Mexico. It has an online presence in 142 countries. It has produced Land Rover vehicles since 1948.
The Complainant owns numerous trademark registrations in various countries for the words LAND ROVER. The first UK trademark was granted on September 29, 1948; the first United States trademark was granted on May 1, 1951; and the first Mexican trademark was granted on September 30, 1992. The Complainant has marketed motor vehicles under the Land Rover name in many countries, including Mexico. The brand is well known worldwide, including in Mexico.
The Complainant gave the Respondent no right to reflect its trademark in a domain name.
The Complainant sent a “cease and desist” letter to the Respondent on October 2, 2014. There was no reply. 5. Parties’ Contentions A. Complainant
The disputed domain name is confusingly similar to the Complainant’s world-wide trademarks. The addition of a country name to the trademark does not eliminate the confusion. It does not add a distinctive element to the disputed domain name and does not render it dissimilar to the trademark. See Osram A.G v Execom,WIPO Case No. D2012-0948.
The Respondent has no legitimate rights or interests in the disputed domain name. The Complainant gave him none. None of the situations in Paragraph 4(c) of the Policy applies.
The Respondent registered and is using the disputed domain name in bad faith. He must have known of the world-wide fame of the Complainant’s Land Rover vehicles. He has supplied no plausible explanation for the registration.
The disputed domain name was registered on August 17, 2006 and has been passively held ever since. At the date of registration of the disputed domain name, the Complainant’s mark was internationally famous.
The disputed domain name implies that the Respondent has some sort of connection with or sponsorship from the Complainant. There is no plausible explanation for the Respondent’s use of the famous name of the Complainant’s motor vehicle. The inference is that, given the fame of the trademark, the Respondent registered the disputed domain name for the purposes of resale.
Bad faith can also be inferred from the Respondent’s use of a Privacy Shield. B. Respondent
The Respondent did not file a formal Response in order to reply to the Complainant’s contentions.
On October 3, 2014, the Center received an informal communication from the email address of the Respondent. He sought to know the grounds upon which the registrant information was to be changed. He quoted the Latin maxim “prior in tempore, potior injure.” 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) The respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
There is no doubt that the disputed domain name is confusingly similar to the Complainant’s trademarks. The addition of the geographical term “Mexico” in the disputed domain name does nothing to eliminate or dilute the confusion. See the Osram case (cit. supra). Rather it exacerbates the confusion, particularly for Mexican users of the Internet.
Accordingly, Paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
The Complainant gave the Respondent no authority to reflect its trademark in the disputed domain name.
In the absence of a Response from the Respondent alleging that one of the situations in paragraph 4(c) of the Policy applies, this lack of authority from the Complainant is sufficient to satisfy paragraph 4(a)(ii) of the Policy.
The Respondent’s informal communication with the Center cannot and should not be considered a proper response. The Respondent could have set up one of the defenses under Paragraph 4(c) yet chose not to do so. The informal communication strikes the Panel as disingenuous in the circumstances.
Accordingly, paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
Despite the interval of eight years between the registration of the disputed domain name and the commencement of these proceedings (for which delay no explanation was forthcoming from the Complainant), the worldwide fame of the Complainant’s mark is such that one can only infer that the Respondent knew of the Complainant’s rights at the date of registration of the disputed domain name.
The tactic of registering a domain name similar or identical to an internationally-famous mark has been well-criticized many times in decisions under the Policy. E.g. F. Hoffmann La Roche AG v. Transure Enterprise Ltd,WIPO Case No. D2008-0422 and Dr. Ing h.c. F Porsche A.G. v. Simon PostlesWIPO Case No. D2001-1360.
The inference is clearly available that the Respondent registered and is using the disputed domain name in the hope that he can sell it at a profit. The disputed domain name is clearly confusing Internet users who will obviously think from the name, that the Respondent is a dealer/distributor of Land Rover vehicles for Mexico, where in fact the disputed domain name is being passively hold. The Complainant’s business is thus affected adversely.
The use of a privacy shield compounds the suspicion of bad faith. See Dr. Martens International Trading GmbH v. Private Whois Service,WIPO Case No. D2011-1753.
Accordingly, Paragraph 4(a)(iii) of the Policy is satisfied. 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 name be transferred to the Complainant.
Sir Ian Barker
Sole Panelist
Date: November 12, 2014
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