The Complainant is Rolls-Royce Motor Cars Limited, United Kingdom, represented by Kelly IP, LLP, United States of America (“United States”).
The Respondent is Perfect Privacy, LLC, United States / B, Phil, Imports Of Indy, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2021. On September 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 24, 2021, 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 28, 2021 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 September 29, 2021. The Center received an email communication from the Respondent on September 29, 2021.
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, and the proceedings commenced on October 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 25, 2021. The Respondent did not submit any response. The Center notified the commencement of Panel appointment process on October 26, 2021. The Center received another email communication from the Respondent on October 26, 2021.
The Center appointed Peter Burgstaller as the sole panelist in this matter on November 10, 2021. 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 BackgroundThe Complainant is a leading manufacturer of ultra-luxury automobiles in the world and owns the trademark and service mark ROLLS-ROYCE for automobiles and automotive services since decades.
The Complainant holds registrations for the trademark ROLLS-ROYCE in a number of countries around the world, including in the United States, as exhibited by Registration No. 0325195, registered since December 6, 1934 and Registration No. 3148743, registered since September 26, 2006 (Annex 6 to the Complaint).
The Complainant is also the owner of the domain name
The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register a domain name incorporating its ROLLS-ROYCE trademarks.
The Respondent used the disputed domain name for addressing a commercial website advertising its business Toccata Automotive Group and offering cars manufactured by competing automotive companies. The Respondent’s website also advertises and offers ROLLS-ROYCE cars, which directly competes with the Complainant’s offering of the same products through its authorized dealers (Annex 7 and 9 to the Complaint).
The disputed domain name was registered on April 2, 2018 (Annex 1 to the Complaint). On October 26, 2021, the Respondent put forward an email communication to the Center asking how much the Complainant is going to pay for the disputed domain name.
5. Parties’ Contentions A. ComplainantThe Complainant is one of the most successful and best-known manufacturers of ultra-luxury automobiles in the world; it owns the trademark and service mark ROLLS-ROYCE for automobiles and automotive services, and its rights in the ROLLS-ROYCE mark date back more than a century.
The ROLLS-ROYCE mark has long been one of the most recognized brands in the world based on its storied history and substantial public recognition worldwide. The brand traces its origins to 1904.
Over the following decades, ROLLS-ROYCE automobiles continued to establish a high bar for technological innovations and new developments in premium craftsmanship and design.
Under its ROLLS-ROYCE mark and name, the Complainant enjoys and has enjoyed for years a high level of commercial success at the pinnacle of the luxury car market. Each year, the Complainant manufactures, markets, and sells thousands of its ROLLS-ROYCE premium automobiles generating hundreds of millions of dollars. In 2020, the Complainant manufactured more than 3,770 ROLLS-ROYCE automobiles, and sold more than 3,750 ROLLS-ROYCE automobiles; in 2019, it manufactured more than 5,450 ROLLS-ROYCE automobiles, and sold 5,100 ROLLS-ROYCE automobiles and in 2018, it manufactured more than 4,350 ROLLS-ROYCE automobiles, and sold more than 4,190 ROLLS-ROYCE automobiles.
Each year, the Complainant spends significant amounts of money to advertise, market, and promote its ROLLS-ROYCE mark and name. Moreover, the ROLLS-ROYCE brand for automobiles has long received considerable third-party publicity, media attention, and recognition.
The Complainant advertises and promotes its ROLLS-ROYCE mark and products and services through its main website located at the domain name
The disputed domain name contains the Complainant’s ROLLS-ROYCE mark in its virtual entirety, omitting only the non-distinguishing hyphen. As such, the disputed domain name on its face immediately and misleadingly communicates a connection to, affiliation with, or sponsorship by the Complainant. Moreover, the additional geographic term “Indianapolis” does not distinguish the disputed domain name from the Complainant’s mark. Hence, the disputed domain name is confusingly similar to the Complainant’s famous and federally registered ROLLS-ROYCE mark.
The Respondent registered the disputed domain name in bad faith in April 2018 and without the Complainant’s authorization long after the Complainant began using its ROLLS-ROYCE mark, long after the ROLLS-ROYCE mark became internationally famous, and long after the Complainant’s ROLLS-ROYCE mark was registered in the United States and elsewhere.
Therefore, the Respondent has no rights or legitimate interests in the disputed domain name, and the disputed domain name was registered in bad faith.
The Respondent also uses the disputed domain name for a commercial website advertising the Respondent’s business Toccata Automotive Group that advertises and offers cars manufactured by competing automotive companies including KARMA, RIMAC, BENTLEY, MERCEDES-BENZ, LAND ROVER, and CADILLAC, among others. The Respondent’s website also advertises and offers
ROLLS-ROYCE cars, which directly competes with the Complainant’s offering of the same products through its authorized dealers.
The Respondent commercially benefits from its unauthorized use of the Complainant’s ROLLS-ROYCE mark in the disputed domain name to attract Internet users and drive traffic to its competing website – this constitutes bad faith use.
Finally, in October 2019, the Complainant, through its legal counsel, sent a cease-and-desist letter to the owner of the website associated with the disputed domain name demanding the deletion of the disputed domain name. The owner of the website agreed to delete the disputed domain name and remove its website; however, the disputed domain name has not been deleted, instead the website was renewed, and the same infringing automotive website was reposted.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsAccording to paragraph 4(a) of the Policy, the Complainant must prove that
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant submitted evidence, which incontestably and conclusively establishes rights in the trademark ROLLS-ROYCE.
The disputed domain name is confusingly similar to the Complainant’s registered trademark ROLLS-ROYCE since it entirely contains this distinctive mark and only omits the hyphen and adds the geographic term “Indianapolis”.
It has long been established under UDRP decisions that where the relevant trademark is recognizable within the disputed domain name the mere addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) or the omission of a hyphen will not prevent a finding of confusing similarity under the first element of the Policy (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
Finally, it has also long been held that generic Top-Level Domains are generally disregarded when evaluating the confusing similarity of a disputed domain name.
The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsWhile the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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 the WIPO Overview 3.0).
Moreover, the evidence put forward by the Complainant in the Complaint (especially with regard to the Annexes presented by the Complainant), as well as the Complainant’s contentions that the Respondent has no rights or legitimate interests in the disputed domain name, that the Respondent has no connection or affiliation with the Complainant, and the Respondent has not received any license or consent, express or implied, to use the Complainant’s trademark ROLLS-ROYCE in a domain name or in any other manner, supports the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
Furthermore, the nature of the disputed domain name, comprising the Complainant’s widely‑known mark and a geographic term, and the use of the disputed domain name, taking advantage of the Complainant’s mark to attract Internet users to the Respondent’s competing website for profit, can not be considered fair as these falsely suggest an affiliation with the Complainant that does not exist (see section 2.5 of the WIPO Overview 3.0).
Accordingly, the conditions set out in paragraph 4(a)(ii) of the Policy have been met by the Complainant.
C. Registered and Used in Bad FaithAs stated in many decisions rendered under the Policy (e.g. Robert Ellenbogen v. Mike Pearson,
WIPO Case No. D2000-0001) both conditions, registration and use in bad faith, must be demonstrated; consequently, the Complainants must show that:
- the disputed domain name was registered by the Respondent in bad faith, and
- the disputed domain name is being used by the Respondent in bad faith.
The Complainant is the owner of the distinctive and famous registered trademark ROLLS-ROYCE, and has registered and used such trademark in many jurisdictions, long before the registration of the disputed domain name. The Respondent not only offers cars manufactured by competing automotive companies but also ROLLS-ROYCE automobiles through its website addressed by the disputed domain name; it is therefore inconceivable that the Respondent has registered the disputed domain name without knowledge of the Complainant’s rights in the trademark ROLLS-ROYCE. This impression is supported by the fact that the disputed domain name was supplemented by the geographical term “Indianapolis”, which even strengthens the impression of an association between the disputed domain name, the Complainant and its trademarks as it can be perceived a s website connected to the Complainant for Indianapolis(see section 3.2.1 of the WIPO Overview 3.0). Registration of the confusingly similar disputed domain name with knowledge of the Complainant’s trademark supports a finding of bad faith in these circumstances.
Therefore, the Panel is convinced that the disputed domain name was registered in bad faith by the Respondent.
The Respondent moreover actively used the disputed domain by addressing a commercial website advertising its business and offering cars manufactured by competing automotive companies. The Respondent’s website also advertises and offers ROLLS-ROYCE cars, which directly compete with the Complainant’s offering of the same products through its authorized dealers.
Therefore, the Panel is convinced that the Respondent registered the disputed domain name to take unfair advantage of the reputation of the Complainant’s well‑known trademark ROLLS-ROYCE, and in so doing to disrupt the Complainant’s business and to attract, for commercial gain, Internet users to another website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement.
Finally, although the Respondent failed to submit a formal Response, it put forward an email communication on October 26, 2021 to the Center asking how much the Complainant is going to pay for the disputed domain name. This statement by the Respondent together with the above mentioned facts and findings makes it for the Panel incontestable that the disputed domain name was registered and is being used in bad faith according to paragraph 4(a)(iii) of the Policy.
7. DecisionFor 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
Peter Burgstaller
Sole Panelist
Date: November 20, 2021