The Complainant is Aston Martin Lagonda Ltd of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Lewis Silkin LLP, United Kingdom.
The Respondent is Ronald Goldberg, Alliance Capital Corp. of New York, New York, United States of America (“United States”). 2. The Domain Names and Registrar
The disputed domain names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and (the “Domain Names”) are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2018. On June 13, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On June 14, 2018, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 12, 2018. On July 3, 2018 and July 4, 2018, the Complainant submitted two informal emails. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 13, 2018.
The Center appointed Nicholas Smith as the sole panelist in this matter on July 18, 2018. 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 a United Kingdom-based luxury car company that has traded under the name “Aston Martin” since 1914. The Complainant maintains a dealer network of over 150 dealerships across 51 countries, including the United States, the location of the Respondent, where the Complainant has 35 official dealerships across 21 states. The Complainant operates its website from the domain name , which it registered in 1995.
The Complainant has held trade marks for the word mark ASTON MARTIN (the “ASTON MARTIN Mark”) throughout the world, including the United States, where the ASTON MARTIN Mark was registered as a trade mark on September 13, 2011 (trade mark no. 4024407).
The Domain Names , , , and were registered on October 15, 2016. The remaining 41 Domain Names were registered on December 19, 2016. Each of the Domain Names is presently inactive, however prior to the commencement of the proceeding the Domain Names redirected to a website (the “Respondent’s Website”) which purported to offer wines under the well-known car brand (and logo) Lamborghini. The Respondent appears to have no connection with the owner of the trade mark Lamborghini, indeed Automobili Lamborghini SpA has brought proceedings against the Respondent for trade mark infringement. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
(i) that the Domain Names are identical or confusingly similar to the Complainant’s ASTON MARTIN Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Names; and
(iii) that the Domain Names have been registered and are being used in bad faith.
The Complainant is the owner of the ASTON MARTIN Mark having registered over 230 trade marks in various jurisdictions around the world (including the United States) that consist of the ASTON MARTIN Mark.
Each of the Domain Names incorporates the whole of the Complainant’s ASTON MARTIN Mark and a descriptive term. These additional terms are not sufficient to distinguish the Domain Names from the ASTON MARTIN Mark.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Names. The Respondent is not commonly known as any of the Domain Names, nor does the Respondent have any authorization or license from the Complainant to use the ASTON MARTIN Mark. The Domain Names are being used to capitalise on the goodwill and reputation of the ASTON MARTIN Mark by diverting visitors to the Respondent’s Website, which has no connection with the Complainant or the ASTON MARTIN Mark.
The Respondent has registered and used the Domain Names in bad faith. The inherent nature of the Domain Names and the manner of their commercial use shows that the Respondent intended to take advantage of the reputation associated with the ASTON MARTIN Mark. The Respondent has registered and used the Domain Names in bad faith by registering the Domain Names while being aware of the Complainant’s rights and using them for a commercial website. There is no plausible circumstance under which the Respondent could legitimately use the Domain Names other than in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
To prove this element the Complainant must have trade mark or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade mark or service mark.
The Complainant is the owner of the ASTON MARTIN Mark, having registrations for the ASTON MARTIN Mark as a trade mark throughout the world.
Other UDRP panels “have repeatedly held that the addition of a generic word to a recognized mark creates a confusing similarity between the domain name and the mark of the [c]omplainant”. The Bank of Nova Scotia v. Whois Protection,WIPO Case No. D2007-0884. See also Valero Energy Corporation, Valero Marketing and Supply Company v. Domain Name Proxy, LLC, Navigation Catalyst Systems, Inc.,WIPO Case No. D2011-1227.
The Domain Names consist of the ASTON MARTIN Mark and various descriptive terms. None of the additional words operate to distinguish the Domain Names from the ASTON MARTIN Mark in any significant way. The Panel finds that the each of the Domain Names is confusingly similar to the Complainant’s ASTON MARTIN Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
To succeed on this element, a complainant may make out a prima facie case that the respondent lacks rights or interests in the disputed domain name. If such a prima facie case is made out, the respondent then has the burden of demonstrating rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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 trade mark or service mark rights; or
(iii) you are making 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.”
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Names or to seek the registration of any domain name incorporating the ASTON MARTIN Mark or a mark similar to the ASTON MARTIN Mark. There is no evidence that the Respondent is commonly known by the Domain Names or any similar name.
There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Names in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. The Respondent has used domain names containing the ASTON MARTIN Mark to redirect to a website that offers Lamborghini-branded wine (in a manner that may constitute infringement of marks registered to Automobili Lamborghini SpA). Such use does not amount to a bona fide offering of goods or services.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or interests in the Domain Names. The Respondent has chosen not to respond to the Complaint and thus has failed to provide any evidence of rights and legitimate interests in the Domain Names. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), 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 has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Names registrations to the Complainant who is the owners of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Names; or
(ii) The Respondent has registered the Domain Names in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain names, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location. (Policy, paragraph 4(b)).
The Panel finds that it is likely that the Respondent was aware of the Complainant and its reputation in the ASTON MARTIN Mark at the time each of the Domain Names was registered. It is improbable that a person would register 45 domain names in a three-month period that all incorporate the ASTON MARTIN Mark (and operate a website that displays marks owned by Automobili Lamborghini SpA, a competitor of the Complainant) of without having some awareness of the Complainant’s mark rights. In the circumstances, the registration of the Domain Names in awareness of the ASTON MARTIN Mark and in the absence of rights or legitimate interests amounts to registration in bad faith.
The Respondent may also have registered the Domain Names in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name. The registration of 45 Domain Names incorporating the ASTON MARTIN Mark is sufficient to show a pattern of conduct in registering domain names in order to prevent the Complainant from reflecting its mark in a corresponding domain name.
The Respondent has used the Domain Names to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Complainant’s ASTON MARTIN Mark as to the source, sponsorship, affiliation or endorsement of its website. The Respondent’s Website purports to offer wine for sale. The Respondent therefore is likely to receive revenue from Internet users who happen to come across the Respondent’s Website by means of confusion with the ASTON MARTIN Mark and then purchase wine from the Respondent’s Website.
Accordingly, the Panel finds that the Respondent has registered and is using the each of the Domain Names in bad faith under paragraph 4(a)(iii) of the Policy. 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 the Complainant.
Nicholas Smith
Sole Panelist
Date: July 20, 2018
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