The Complainant is Aston Martin Lagonda Limited, United Kingdom, represented by J A Kemp LLP, United Kingdom.
The Respondent is Craig Green, Australia. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2020, with regards to three disputed domain names. On February 27, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 27, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 11, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On March 12, 2020, the Complainant contacted the Center regarding settlement negotiations for two of the disputed domain names. On March 13, 2020, the proceeding was suspended until April 13, 2020, pursuant to paragraph 17 of the Rules. On April 28, 2020, the Center informed the Parties of the partial dismissal of the proceeding regarding two of the disputed domain names. On the same day, the proceeding was further suspended until May 13, 2020, for purposes of settlement negotiations regarding the one remaining disputed domain name. On April 30, 2020, the Center received an email communication from the Respondent. On May 13, 2020, the Complainant requested that the Center reinstitute the proceeding with regards to the remaining disputed domain name and filed an amendment to the Complaint. On May 13, 2020, the Center reinstituted the administrative proceeding. On May 20, 2020, the Respondent emailed the Center. The Center verified that the Complaint, together with the amendment to 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 May 25, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 14, 2020. No formal response was received from the Respondent and the Center informed the Parties on June 20, 2020, that it would proceed with panel appointment, pursuant to paragraph 6 of the Rules. On June 21, 2020, the Respondent emailed the Center. On July 6, 2020, the Complainant submitted a supplemental filing regarding the Respondent’s earlier email communications. On July 8, 15, 18, and 29 2020, the Center received four email communications from the Respondent. The Center appointed Marilena Comanescu as the sole panelist in this matter on July 22, 2020. 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, incorporated in the United Kingdom in 1913, is an automotive and luxury manufacturer which has over 150 licensed or owned dealerships in 51 countries worldwide. The Complainant’s trademark is one of the most iconic automobile brands in the world and enjoys celebrity since at least 1965 when it started to be promoted in the James Bond series of films. Previous UDRP panels have found that the Complainant’s ASTON MARTIN trademark is well-known worldwide in its industry. See for example Aston Martin Lagonda Ltd v. Perfect Privacy, LLC/ Christian Karam, forexacademy,WIPO Case No. D2017-2270; or Aston Martin Lagonda Ltd v. Shinichi Wanikawa, Wanikawa Shinichi,WIPO Case No. D2017-2017. The Complainant holds nearly 1800 filed trademarks around the world, out of which over 800 are for or contain the term ASTON MARTIN, such as the following: - the United States of America trademark registration No. 4024407 filed on June 24, 2009 and registered on September 13, 2011, for goods and services in International Classes 3, 6, 7, 9, 11, 12, 14, 16, 18, 20, 24, 25, 26, 27, 28, 35, 36, 37, 39, 41 and 43; and - the European Union trademark registration No. 8367815 filed on June 16, 2009 and registered on March 16, 2010 for goods and services in International Classes 3, 6, 7, 8, 9, 11, 12, 14, 16, 18, 20, 21, 24, 25, 26, 27, 28, 29, 30, 32, 33, 34, 35, 36, 37, 38, 39, 41 and 43. The Complainant’s main website is available at “www.astonmartin.com”. On September 25, 2017 the Complainant and the Red Bull Racing announced that they entered into an agreement for the Complainant to be a title sponsor for the Red Bull Racing Formula 1 team from the start of 2018. Annex AN3d to Complaint provides media covering for such announcement. The disputed domain name was registered on September 29, 2017 by a physical person, a marketing professional according to its LinkedIn account. At the time of filing the Complaint, it was used in connection with pay-per-click pages (“PPC”) with sponsored links related to, inter alia, goods and services competing to those offered by the Complainant. The Respondent submitted several email communications to the Center stating particularly the following: - on April 30, 2020 the Respondent claims that he has aquired the disputed domain name in order to create a fan site for the Complainant, in relation to Formula 1, a field where the Complainat was not directly involved at that time; Further, he Respondent claims that since 2017 he invested time, money and resources in a media project related to the disputed domain name and, for all these, he requests the Complainant to pay the amount of “UK $ 150,000” for the transfer of the disputed domain name to it. However, no evidence was provided whatsoever regarding the purported investment and project. - on May 20, 2020, following the evidence submitted by the Complainant as Annex AN3d to Complaint, the Respondent admits he read the news in September 2017 and that such announcement created a great opportunity; The Respondent further claims that the disputed domain name was available to registration and that there are many other domain names comprising the Complainant’s trademark available. Also, the Respondent affirms he could register another domain name containing the trademark ASTON MARTIN under different generic Top-Level Domains (“gTLDs”). - on June 21, 2020 the Respondent writes that the Center should “feel free to transfer the domain to Aston Martin” suggesting that he may be intimidated by the Complainant’s comments; - on July 6, 8 10 and 29, 2020 the Respondent sent communications confirming he agrees with the transfer of the disputed domain name to the Complainant but he will not sign an undertaking refraining from using the “Aston Martin” wording in the future, as the Complainant “does not control the IP and trademarks for every Aston Martin related names and business in the world”, as the Respondent may potentially wish to use this name, for example in his capacity as a talent manager ,for an individual singer and songwritter which has the name “Aston Martin”. The Registrar informed the parties that the disputed domain name is locked during the administrative UDRP procedure. According to the evidence provided in the Annex 5 to Complaint and unrebutted by the Respondent, the Respondent was or continues to be the registrant of several domain names comprising third parties names, such celebrity or full names of executives of the Respondent’s previous employer. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is confusingly similar to its well-known and distinctive trademark ASTON MARTIN as it incorporates it together with the term “f1”; that the Respondent has no rights or legitimate interests in the disputed domain name; and, that the Respondent registered and is using the disputed domain name in bad faith. The Complainant requests the transfer of the disputed domain name to it. B. Respondent The Respondent reacted as above, but did not formally reply to the Complainant’s contentions. 6. Discussion and Findings In view of the abscence of a Response on merits, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met: (i) the disputed 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 the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. The Panel will further analyze the concurrence of the above circumstances. A. Procedural Issue 1: Supplemental Filings The Complainant submitted supplemental filings on July 6, 2020 addressing particularly the Respondent’s defenses and also providing information regarding the email and telephone communications held between parties in relation to the disputed domain name. Whereas unsolicited supplemental filings are generally discouraged particularly due to the UDRP procedure’s expeditious character, pursuant to its powers under paragraph 10 of the UDRP Rules which vests the Panel with the authority to determine the admissibility, relevance, materiality and weight of the evidence, this Panel finds relevant the supplemental submission and therefore it accepts such filings. B. Procedural Issue 2: Transfer of The Disputed Domain Name Containing a Third Party’s Trademark The Complainant affirms that the disputed domain name contains, in addition to its trademark, a trademark owned by a third party, F1. This fact raises the important procedural issue of whether, in the event the Complaint is successful, there is any impediment to ordering the remedy sought in the Complaint – being, transfer of the disputed domain name to the Complainant. The majority of the previous UDRP panels dealing with this issue have granted the requested remedy of transfer. See section 4.13 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). As stated in WhatsApp Inc. v. Private Whois whatsappandroid.com, Private Whois whatsappipad.com and Private Whois whatsappiphone.com,WIPO Case No. D2012-0674 “Neither the Policy nor the Rules contains a provision that precludes the grant of the transfer remedy in this situation. Furthermore, neither the Policy nor the Rules contains a provision that precludes the third party from bringing an action under the Policy, or under any other applicable law, against the complainant in whose favor an order of transfer is made, in the event that the third party considers the complainant’s holding of the domain name to be in violation of the Policy”. For all the above, this Panel sees no reason not to make the requested order of transfer of the disputed domain name to the Complainant in the event that the present case meets all the three requirements of the Policy. C. Substantive Matter: Identical or Confusingly Similar The Complainant holds rights in the ASTON MARTIN trademark. The disputed domain name Irrespective if the added term refer to a third party mark or is a generic term, such addition does not prevent a finding of confusing similarity as the Complainant’s trademark is clearly recognizable within the disputed domain name. Numerous UDRP panels have considered that the addition of other terms (whether descriptive or geographic term, pejorative, meaningless or otherwise) to trademarks in a domain name is not sufficient to escape a finding of confusing similarity. See section 1.8 of theWIPO Overview 3.0. Also, section 1.12 of theWIPO Overview 3.0 provides that, where the Compainant’s trademark is recognizable within the disputed domain name, the addition of other third-party trademark is insufficient in itself to avoid a finding of confusing similarity to the Complainant’s mark under the first element of the Policy. Further, it is well established in decisions under the UDRP that the gTLD (e.g., “.com”, “.info”, “.org”) may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name. See section 1.11 of the WIPO Overview 3.0. Given the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark ASTON MARTIN, pursuant to the Policy, paragraph 4(a)(i). D. Rights or Legitimate Interests The Complainant asserts that the Respondent does not hold any trademark rights, license, or authorization whatsoever to use the mark ASTON MARTIN, that the Respondent is not commonly known by the disputed domain name, and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods and services. Under the Policy, “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”. See section 2.1 of theWIPO Overview 3.0. The Respondent has not come forward with relevant evidence to rebut the Complainant’s prima facie case. To the contrary, the Respondent’s statements are contradictory and unsupported by relevant evidence. Although the Respondent claimed it invested in the disputed domain name in order to create a fan site for the Complainant, there was no evidence provided in such regard. In fact, at the time of filing the Complaint, the Respondent was using the disputed domain name in connection with a parking page displaying PPC links, promoting goods and services similar to those offered by the Complainant. UDRP panels have constantly found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s marks or otherwise mislead Internet users. See section 2.9 of theWIPO Overview 3.0. For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii). E. Registered and Used in Bad Faith The Complainant holds trademark rights for ASTON MARTIN for more than five decades. Due to its extensive use, including in the James Bond blockbuster movies, the ASTON MARTIN trademark has become well-known and enjoys significant reputation worldwide as an automotive and luxury brand. The disputed domain name was registered in 2017 and incorporates the Complainant’s mark in its entirety. Furthermore, according to its own statements, at the time of registering the disputed domain name, the Respondent was well aware of the Complainant and its partnership with the Red Bull Racing Formula 1 team. For the above, the Panel finds that the disputed domain name was registered in bad faith, knowing the Complainant and targeting its trademark. Further, according to the evidence in the file, the Respondent has used the disputed domain name in relation to PPC pages featuring advertisements for automotive brands that compete with the Complainant. Paragraph 4(b)(iv) of the Policy provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location” is evidence of registration and use in bad faith. The Panel finds that the Respondent was using without permission the Complainant’s well-known trademark in order to get traffic on its web portal and to misleadingly divert Internet users to third parties websites, and thus to obtain commercial gain from the false impression created with regard to a potential affiliation or connection with the Complainant. Also, the Respondent requested the amount of GBP 150,000, as a compensation for its purported investments in the disputed domain name, in order to transfer of the disputed domain name to the Complainant. Paragraph 4(b)(i) of the Policy provides another evidence of bad faith behaviour the circumstances where the respondent registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant or a competitor of it, for valuable consideration in excess of the out-of-pocket costs directly related to that domain name. Here, the Respondent requested the amount of GBP 150,000 and did not provide any evidence documenting the expenditure or anyhting relating to the claimed project; to the contrary, the disputed domain name was used, as above mentioned, for PPC pages. For the above, the Panel finds applicable the provisions of the paragraph 4(b)(i) of the Policy as well. During the procedures, the Respondent’s statements were contradictory and unsupported by documents. According to the evidence provided by the Complainant as Annex 5 to Complaint and unrebutted by the Respondent, the Respondent has a history of registering domain names for questionable purposes. It has been found that the mere registration of a domain name that is identical or confusingly similar to a third party’s well-known trademark constitutes, by itself, bad faith presumption of registration for the purpose of Policy. See section 3.1.4 of the WIPO Overview 3.0. These further facts, together with all the other elements in this case, constitute, in the eyes of this Panel, further evidence of bad faith behaviour. For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, pursuant to the 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 disputed domain name Marilena Comanescu
Sole Panelist
Date: July 27, 2020
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