The Complainant is Rolls-Royce Motor Cars Limited of Farnborough, Hampshire, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Kelly IP, LLP, United States of America (“US”).
The Respondents are Zhao Zhong Xian of Shenyang, Liaoning, China; ZhangXin of Shenyang, Liaoning, China. 2. The Domain Names and Registrar
The disputed domain names , , and are registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March 14, 2017. On March 15, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 17, 2017, 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. On March 20, 2017, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. On the same day, the Complainant requested that English be the language of the proceeding and submitted an amended Complainant upon the Center’s request. The Respondent did not comment on the language of the proceeding by the specified due date.
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 and 4, the Center formally notified the Respondent of the Complaint in English and Chinese, and the proceeding commenced on March 30, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 19, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 20, 2017.
The Center appointed Francine Tan as the sole panelist in this matter on April 25, 2017. 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.
A Panel Order was issued on May 3, 2017. The Panel noted that the Complainant asserted that its parent company received notices from the Trademark Clearinghouse (“TMCH”) regarding the Respondent’s registrations of the disputed domain names , and . It appeared from the Complainant’s evidence that two claim notification emails were received on October 20 and 26, 2016 (regarding only and ). There did not appear to be evidence of any notice received in relation to the domain name. ICANN’s website showed the Trademark Claims periods as follows:
- for the Top-Level Domain (“TLD”) – from August 26, 2014 to November 24, 2014;
- for the TLD – from January 19, 2015 to April 19, 2015;
- for the TLD – from July 29, 2015 to October 27, 2015.
The disputed domain names and were registered on October 18, 2016; the disputed domain names and were registered on October 25, 2016.
The Panel requested, with reference to the disputed domain names , and “further clarification regarding its statements that the Respondent received notice of Complainant’s rights from the Trademark Clearinghouse, given that the disputed domain names appears to have been registered outside of the ICANN Trademark Claims period (i.e. notification to a would-be registrant for the first 90 days of a New gTLD’s launch) for each respective domain name (which appears to be different from the registrar’s ongoing ‘Claim Notification’ service to trademark owners)”. The Complainant was given until May 9, 2017 to file submissions in response to the Panel Order and the Respondent was given till May 12, 2017 to file any submission in response. The Complainant filed its submissions on May 9, 2017.
The Complainant stated in its response to the Panel Order that its parent company, BMW, received notices from Key-Systems GmbH that were sent in accordance with the rules of the TMCH, and that the said three disputed domain names , and were registered during the Claims Periods. Copies of email notifications issued by Key-Systems on October 26, 2016 confirming that the said three disputed domain names , and were registered with the TMCH were submitted by the Complainant. The Complainant said it understood from Key-Systems’ statements to mean that because the disputed domain names were registered during the Claims Periods, the Respondent had received notices of the Complainant’s trademark rights from the TMCH. Key-Systems was asked about this issue after the Panel Order was received by the Complainant. Key-Systems responded by email to the Complainant on May 8, 2017, confirming that the “ongoing notification service from the Trademark Clearinghouse was ACTIVE during the registration of the mentioned domains” which provided benefits as detailed at “/content/ongoing-notifications” and that “a claim notification was displayed [to] the registrants”.
The Respondent did not file any submission in response. 4. Factual Background
The Complainant states that it is a very well-known manufacturer of luxury automobiles in the world. The Complainant owns numerous trademark registrations for ROLLS-ROYCE (e.g., US. Registration Nos. 0,325,195, registered on on June 11, 1935 and 3,148,743, registered on September 26, 2006) and ROLLS-ROYCE MOTOR CARS (European Union Registration No. 010206233, registered on January 24, 2012) (collectively, “ROLLS-ROYCE marks”) and its rights in the said mark date back more than a century.
ROLLS-ROYCE automobiles are marketed and distributed through a network of 130 authorized dealers worldwide.
ROLLS-ROYCE automobiles are commissioned by owners and hand-built in Goodwood, United Kingdom. ROLLS-ROYCE cars are renowned for their quality and craftsmanship. Significant amounts of money are spent each year by the Complainant to advertise, market and promote its ROLLS-ROYCE marks and names.
The Complainant advertises and promotes its ROLLS-ROYCE marks and products and services through its main website at the domain name . Its authorized dealers are permitted to use domain names and trade names comprised in part of the ROLLS-ROYCE marks for their authorized businesses (e.g., and ).
The disputed domain names were registered in October 2016 but do not resolve to any active website. 5. Parties’ Contentions A. Complainant
(i) The disputed domain names are identical and/or confusingly similar to the Complainant’s famous ROLLS-ROYCE marks. The disputed domain names , and comprise the Complainant’s famous and registered ROLLS-ROYCE MOTORS CARS mark in its entirety. The disputed domain name is composed of the Complainant’s ROLLS-ROYCE MOTOR CARS mark in its virtual entirety, omitting only the non-distinguishing hyphen. The disputed domain names are also confusingly similar to the Complainant’s ROLLS-ROYCE mark as each contains the said mark in its entirety and the term “motor cars” directly relates to the Complainant’s products. Such an additional term heightens the confusing similarity to the ROLLS-ROYCE mark.
(ii) The Respondent does not have any rights or legitimate interests in the disputed domain names. The Respondent was not authorized by the Complainant to use the ROLLS-ROYCE marks and the Respondent is not a licensee of the Complainant. The registration of the disputed domain names (incorporating a very well-known brand) for the purpose of selling them does not constitute a bona fide offering of goods or services or a legitimate noncommercial use. The Respondent is not commonly known the disputed domain names.
(iii) The Respondent’s registration and use of the disputed domain names are in bad faith. The registration of the four disputed domain names constitutes a bad-faith pattern of registering domain names containing the Complainant’s ROLLS-ROYCE marks. Further, the Respondent has a well-established history of cybersquatting. Notices were received by the Complainant’s parent company, BMW, regarding the Respondent’s registrations of the disputed domain names , and .
The Respondent’s offer to sell the disputed domain names and on the English language marketplace website, Sedo, shows that it seeks to profit from selling the disputed domain names.
The Respondent’s has a record of offering to sell trademark-related domain names. Eight adverse UDRP decisions were issued against the Respondent based on its bad-faith offers to sell and/or passive holding of the disputed domain names. The decisions involved, inter alia, the MORGAN STANLEY, REMY MARTIN, and SANOFI trade marks.
The Complainant’s proprietary rights in the ROLLS-ROYCE marks long predate the date of registration of the disputed domain names. The disputed domain names were opportunistically registered shortly after the “.website”, “.space” and “.tech” generic Top-Level Domains (“gTLDs”) became available for registration. There is no doubt that the Respondent knew of the Complainant’s rights in the ROLLS-ROYCE marks, in view of the fame of the Complainant and its mark. The ROLLS-ROYCE MOTOR CARS mark was registered with the TMCH, which meant that the Respondent would have received notice of the Complainant’s rights in the ROLLS-ROYCE MOTOR CARS mark prior to its registration of the disputed domain names , and . The Respondent was clearly seeking to take advantage of the goodwill in the Complainant’s ROLLS-ROYCE marks.
The Respondent’s passive holding of the disputed domain names constitute bad faith because it is associated with another party’s well-known trademark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Preliminary Procedural Issue: Language of the Proceeding
The Complainant requested that English be adopted as the language of the proceeding although the Registration Agreement is in Chinese, since the Respondent has knowledge of or proficiency in English, as shown by its selection and registration of the disputed domain names in Latin characters under English-language gTLDs – “.website”, “.space”, and “.tech”. Further, the Respondent offers to sell the disputed domain names and on the English language marketplace website, Sedo. In addition, several prior UDRP proceedings involving complaints brought by other parties against the Respondent were conducted in English. The use of a language other than English would impose a burden on the Complainant.
Paragraph 11(a) of the Rules stipulates that: “[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
Paragraph 10(c) of the Rules stipulates that “The Panel shall ensure that the administrative proceeding takes place with due expedition”.
The Panel determines in this case that it would be appropriate for English to be applied as the language of the proceeding. The Respondent appears to have a sufficient level of understanding of the English language, and this is reflected in its choice of the disputed domain names and of the gTLDs, and the overall seeming ease in operating in the English-language domain name space.
The Panel does not see that the Respondent would be prejudiced if English were adopted as the language of the proceeding. The Respondent was given a fair and ample opportunity to be heard in the proceeding, having received communications from the Center in both Chinese and English. It would indeed significantly delay the proceeding if the Complaint and supporting documents had to be translated into Chinese. The Respondent was given the opportunity to put forward its position on the issue of the language of the proceeding, but did not. On an overall assessment of the respective interests and Policy considerations, the Panel finds that it would be appropriate for English to be the language of the proceeding. Preliminary Procedural Issue: Consolidation
This Panel notes that the Complaint has been brought in respect of the disputed domain names which are registered in the names of two different parties. This Panel is satisfied that the Complainant has demonstrated that the disputed domain names are essentially controlled or managed by a single party (through demonstration of commonalities in physical addresses, email addresses, registration patterns, and from evidence considered in prior UDRP proceedings, see E. Remy Martin & C° v. Liu Hong Bao, nashan, Na Shan, Yuqing, Naziyu, ZhangXin,WIPO Case No. D2016-1948).
The Panel therefore finds that it would be equitable and procedurally efficient to permit the consolidation. Substantive Issues A. Identical or Confusingly Similar
The Complainant has established it has trademark rights in ROLLS-ROYCE and in ROLLS-ROYCE MOTOR CARS.
The ROLLS-ROYCE trademark has been incorporated in its entirety in the disputed domain names , , and and identifiable therein. The disputed domain names differ from the ROLLS-ROYCE mark only by the addition of the word “motorcars” and the gTLDs “.website”, “.tech” and “.space”, and the absence of a hyphen in the disputed domain name . The differences are insignificant in nature and do not serve to remove the confusing similarity with the ROLL-ROYCE trademark. The addition of the term “motor cars” in the disputed domain names in fact adds to the confusion with the Complainant’s ROLLS-ROYCE mark as it is consistent with the Complainant’s products.
The ROLLS-ROYCE MOTOR CARS trade mark has been incorporated in its entirety in the disputed domain names , , and and identifiable therein. The disputed domain names differ from the ROLLS-ROYCE MOTOR CARS trade mark only by the addition of the gTLDs “.website”, “.tech” and “.space”, and the absence of a hyphen in the disputed domain name . The differences are insignificant in nature and do not serve to remove the identity with the ROLL-ROYCE MOTOR CAR trademark.
It is a well-established principle that gTLDs are to be disregarded when considering the issue of identity or confusing similarity under paragraph 4(a)(i) of the Policy, as they constitute an intrinsic technical requirement of domain names.
The Panel therefore finds that paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy indicates how a respondent can demonstrate its rights or legitimate interests to a domain name in dispute, namely by establishing any of the following (non-exhaustive) circumstances:
“(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 organization) have been commonly known by the domain name, even if you have acquired no trademark 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 trademark or service mark at issue.”
Although a complainant is required, per the Policy, to establish all three elements of paragraph 4(a) of the Policy, the general consensus view of UDRP panelists is that a complainant is only required, in relation to paragraph 4(a)(ii) of the Policy, to establish a prima facie case. The burden thereafter shifts to the respondent to establish, with evidence, showing that it has rights or legitimate interests in the domain name in dispute. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition)
The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. There is no evidence of a relationship between the Complainant and the Respondent or that the Respondent has been commonly known by the disputed domain names. Neither is there evidence of the Respondent’s fair use of the disputed domain names or use for a legitimate noncommercial use, without intent for commercial gain to misleadingly divert consumers or to tarnish the ROLLS-ROYCE marks.
The Respondent failed to file a response or to demonstrate its rights or legitimate interests in the disputed domain names.
In the circumstances and in the absence of contrary evidence, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that “the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith”:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location.
The evidence submitted by the Complainant supports a finding of bad faith registration and use. The Respondent clearly knew of the Complainant and its well-known ROLLS ROYCE marks when it registered the disputed domain names. The ROLLS-ROYCE brand name and marks had, by the time the disputed domain names were registered, achieved a high level of reputation and recognition. It is obvious that the Respondent deliberately targeted the Complainant’s famous trade mark for profit.
The Complainant contends that the Respondent would have been notified by the TMCH of the Complainant’s registered rights in the ROLLS ROYCE MOTOR CARS. As a result of the Panel Order, the Complainant indicated that it was informed by its partner, Key Systems (who is not the Registrar in this case), that the “ongoing notification service from the Trademark-Clearinghouse was ACTIVE during the registration of the mentioned domains” and that Key Systems “can confirm that a claim notification was displayed [to] the registrants.”
The Panel has reviewed the information at the link provided by Key Systems in the Complainant’s submission (“www.trademark /content/ongoing notifications”), and notes that while “ongoing notifications” provide for continuing notifications to the trademark holder beyond the 90-day Trademark Claims Period, there is no mention of any service providing an ongoing claim notification to the registrant by the Registrar or (as here) a third-party service provider.
In any event, the Panel ultimately finds that in the current circumstances, the outcome of the case does not turn on whether the Respondent received such notice as the Panel is satisfied that the Respondent was aware of the Complainant’s ROLLS-ROYCE marks and reputation at the time it registered the disputed domain names.
In light of the above, the Panel finds that the disputed domain names were evidently registered in an attempt to create confusion and to attract Internet users to a website for commercial gain (paragraph 4(b)(iv) of the Policy). Many earlier panel decisions under the Policy have held that the wholesale incorporation of a well-known trade mark into a domain name tends to support a finding of bad faith registration and use. The totality of the circumstances during the passive holding of the disputed domain names and the intention to sell the disputed domain names and are further evidence of bad faith registration and use.
The Panel therefore concludes that paragraph 4(a)(iii) of the Policy has been established. 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.
Francine Tan
Sole Panelist
Date: May 14, 2017
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