Complainant is Jaguar Land Rover Limited of Coventry, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) represented by Greg Chambers, Australia.
Respondent is Justin Trivett, Jus Tin Pty Ltd of Indooroopilly, Australia represented by Woods Prince Lawyers, Australia. 2. The Domain Names and Registrar
The disputed domain names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and (the “Domain Names”) are registered with Crazy Domains FZ-LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2016. On August 4, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On August 5, 2016, the Registrar 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 10, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 30, 2016. On August 29, 2016, Respondent requested the extension of the Response due date. In accordance with paragraph 5(b) of the Rules, the Response due date was extended until September 3, 2016. The Response was filed with the Center on September 2, 2016.
The Center appointed Robert A. Badgley as the sole panelist in this matter on September 6, 2016. 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 a manufacturer of sports cars and sports utility vehicles (“SUV”). Complainant has made the sports car named “Jaguar” for many decades, and the SUVs “Range Rover” and “Land Rover” for several decades. Complainant holds trademark registrations for JAGUAR, first registered on October 13, 1944, RANGE ROVER, first registered on July 19, 1969 and LAND ROVER, first registered on Sept 9, 1948 in many jurisdictions around the world, including in Australia, Respondent’s country.
All of the Domain Names were registered in 2014. Each of the Domain Names resolves to a parking page hosted by the Registrar.
Respondent is an Australian company whose sole director is Justin Wayne Trivett. In a declaration annexed to the Response, Respondent states that he is “a second-generation car dealer” with “extensive experience in the car industry.” Respondent operated a business called “Trivett Prestige Services” from 1999 to February 2016. This automotive service company used both genuine and non-genuine parts. The business served “all brands of motor vehicle including Jaguar and Land Rover.” Through this business, Respondent “currently [has] an interest in various car dealerships.”
According to the Respondent declaration, roughly three years ago he “conceived a business idea to establish a web based application for servicing and the promotion of both genuine and non-genuine motor vehicle parts.” Respondent dubbed this concept “MaintainMy.”
Over time, Respondent states, the “MaintainMy” concept evolved to a website/app where a car owner seeking repair services would put his motor vehicle “out for tender on the site by motor vehicle type, motor vehicle age, type of service, price requirements, genuine part requirement, non-genuine part requirement, extra requirements (loan car, pick up and so on)”. Service dealers would then respond with a bid to provide the required service, and the consumer would select among the bids.
Respondent states that it, through a consultant, registered the Domain Names as part of a collection of “signposts to the MaintainMy website.” These “signposts,” otherwise described as “directional terms,” are “intended to build traffic” to the “MaintainMy” site. According to Respondent, development of the “MaintainMy” site is not yet underway, as he is still in discussion with prospective website developers.
On October 26, 2015, Complainant’s counsel sent Respondent a cease-and-desist letter concerning the 101 Domain Names now at issue in this proceeding. Through its own counsel, Respondent replied to the cease-and-desist letter on November 3, 2015. In that letter, Respondent described its business plan and stated that a launch date in 2018 was anticipated. Respondent also invited Complainant to discuss “the commercial opportunities of the proposed application”. 5. Parties’ Contentions A. Complainant
Complainant contends that it has satisfied the three elements required for a transfer of each of the Domain Names under the Policy. B. Respondent
Respondent asserts that it has registered the Domain Names for a legitimate business purpose and not in bad faith. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant holds rights in the registered trademarks JAGUAR, RANGE ROVER, and LAND ROVER. Respondent does not dispute this. Except for a handful of the Domain Names at issue, each Domain Name fully incorporates one of Complainant’s three well-known trademarks and adds a geographically descriptive term, such as “Australia,” or “west,” or a town or region in Australia. The Panel finds that each of these Domain Names is confusingly similar to the mark which it incorporates. For instance, the Domain Name gives the false impression that it is the web address for an authorized “Land Rover” dealership located in Sydney.
With respect to several other Domain Names, each one incorporates one of Complainant’s marks plus a descriptive term such as “electric,” “hybrid,” “finance,” “fixed price service,” or “capped price service.” Because each of these terms may be associated with automobiles, the addition of such terms to one of Complainant’s well-known marks does not diminish the confusing similarity between the Domain Name and the mark which it incorporates.
Accordingly, the Panel finds that all of the Domain Names are confusingly similar to a trademark in which Complainant holds rights. B. Rights or Legitimate Interests
For each Domain Name, pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] 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 trademark or service mark at issue.
It is undisputed that Respondent has not been authorized by Complainant to use Complainant’s trademarks in a domain name or otherwise. It is also clear that Respondent is not commonly known by any of the Domain Names.
Respondent’s asserted plans to launch a website and/or mobile app under the name “MaintainMy” may be perfectly legitimate in and of themselves, but the Panel concludes that Respondent has no legitimate basis for using Complainant’s famous trademarks in a wide array of domain names order to increase traffic – Respondent’s stated motive – to Respondent’s eventual (and commercial) website. Such anticipated use of the Domain Names amounts to trading on the fame of Complainant’s marks, for commercial gain.
The Panel concludes that Complainant has established Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith
For each Domain Name, paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel finds Respondent in bad faith under Policy paragraph 4(b)(ii), quoted above. Registering more than 100 domain names incorporating Complainant’s three famous marks, and snapping up many of Australia’s most desirable geographic indicators in the coveted “.com” space, clearly amounts to a pattern of preclusive registrations. Complainant would be seriously hampered if it were to decide to launch a geographically-targeted web campaign in Australia, and do so with the world’s premier generic Top-Level Domain (“gTLD”).
The Panel concludes that Complainant has established Policy paragraph 4(a)(iii). 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 Domain Names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and be transferred to Complainant.
Robert A. Badgley
Sole Panelist
Date: September 12, 2016
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