ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Rolls-Royce Motor Cars Limited v. manuel keesee, ROLLS RR CULLINAN PRIVATE JETS CORP. Case No. D2024-3463 1. The Parties The Complainant is Rolls-Royce Motor Cars Limited, United Kingdom, represented by Kelly IP, LLP, United States of America (“United States”). The Respondent is manuel keesee, ROLLS RR CULLINAN PRIVATE JETS CORP., United States. 2. The Domain Name and Registrar The disputed domain name (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 25, 2024. On August 26, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 26, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent (Privacy Protected / Registration Private, Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on August 30, 2024, 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 3, 2024. 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 September 4, 2024. In accordance with the Rules, paragraph 5, the due date for Response was September 24, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 26, 2024.
page 2 The Center appointed Nicholas Smith as the sole panelist in this matter on October 3, 2024. 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 corporation specializing in the manufacture and sale of luxury automobiles. The Complainant and its predecessors in title have produced luxury automobiles under the trade mark ROLLS-ROYCE (the “ROLLS-ROYCE Mark”) since 1906. The Complainant has also used a logo comprising the letters RR in stylized form (the “RR Mark”) since 1936, and since 2018 has used a trade mark consisting of the word CULLINAN (the “CULLINAN Mark”). The Complainant offers a range of ancillary services (such as chauffer services) and has developed a considerable reputation in the ROLLS-ROYCE, RR and CULLINAN Marks, both through third party recognition and through marketing and promotion. The Complainant has registered the ROLLS-ROYCE Mark, generally for goods in Class 12, in various jurisdictions including the United Kingdom where the Complainant is the owner of trade mark registration number UK00000291969 for the ROLLS-ROYCE Mark, registered on April 9, 1907. The Complainant and its parent company also own United Kingdom trade marks for the RR Mark (registration number UK00903381605, registered on April 21, 2005) and the CULLINAN Mark (registration number UK00801212768, registered June 19, 2015). The Domain Name was registered on September 21, 2023. The Domain Name resolves to a website (“Respondent’s Website”) that purports to offer private jet services (including chauffer services) under the ROLLS-ROYCE, RR and CULLINAN Marks and reproduces a variety of images of the Complainant’s products and devices used by the Complainant. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Domain Name. Notably, the Complainant contends that: a) It is the owner of the ROLLS-ROYCE, RR and CULLINAN Marks, having registered the ROLLS-ROYCE, RR and CULLINAN Marks in various jurisdictions. The Domain Name is confusingly similar to the RR and CULLINAN Marks as it reproduces the RR and CULLIAN Marks and adds the descriptive term “jets” and a generic Top-Level Domain (“gTLD”) “.com.”. b) There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Complainant has not granted any license or authorization for the Respondent to use the ROLLS-ROYCE, RR and CULLINAN Marks. The Respondent has registered the Domain Name to pass itself off as connected with the Complainant which does not amount to bona fide use or a legitimate noncommercial or fair use. The Respondent’s use of the Domain Name for a website purporting to be the Complainant offering private jet services does not grant the Respondent rights or legitimate interests in the Domain Name. c) The Domain Name was registered and is being used in bad faith. The Respondent’s Website operates to expressly create a false impression of an association with the Complainant in order for the Respondent to receive a financial benefit.
page 3 B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the CULLINAN Mark is reproduced within the Domain Name. Accordingly, the Domain Name is confusingly similar to the CULLINAN Mark for the purposes of the Policy. In addition, the Panel finds the RR Mark is recognizable within the Domain Name. Accordingly, the Domain Name is also confusingly similar to the RR mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms here, “jets” may bear on assessment of the second and third elements, the Panel finds the addition of such a term does not prevent a finding of confusing similarity between the Domain Name and the CULLINAN and RR Marks for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. While 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. WIPO Overview 3.0, section 2.1. Having reviewed the record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the Domain Name. The Panel considers that the record of this case reflects that: - before any notice to the Respondent of the dispute, the Respondent did not use, nor has it made 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. Paragraph 4(c)(i) of the Policy, and WIPO Overview 3.0, section 2.2.
page 4 - the Respondent (as an individual, business, or other organization) has not been commonly known by the Domain Name. Paragraph 4(c)(ii) of the Policy, and WIPO Overview 3.0, section 2.3. - the Respondent is not 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. Paragraph 4(c)(iii) of the Policy, and WIPO Overview 3.0, section 2.4. - the record contains no other factors demonstrating rights or legitimate interests of the Respondent in the Domain Name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. Rather the evidence before the Panel indicates that the Respondent has sought to use the Domain Name to expressly and misleadingly associate the Respondent with the Complainant for financial gain. The Respondent’s Website reproduces the ROLLS-ROYCE, RR and CULLINAN Marks and makes multiple references to the Complainant for the purpose of falsely asserting a connection between the Complainant and the services the Respondent purports to offer. The use of the Domain Name for the sole purpose of benefiting from the confusion between the Domain Name and the ROLLS-ROYCE, RR and CULLINAN Marks is not, on its face, a bona fide offering of goods or services or for a legitimate noncommercial or fair use The Panel notes that the registrant organization identified in the registration details of the disputed domain name is “ROLLS RR CULLINAN PRIVATE JETS CORP.”. However, the Panel is not satisfied that the Respondent is actually commonly known under this name as opposed to simply registering the Domain Name under a pseudonym to falsely suggest an affiliation with the Complainant for the purpose of asserting rights or legitimate interests. The Respondent has provided no evidence that an entity known as “ROLLS RR CULLINAN PRIVATE JETS CORP.” has ever been registered as a company and is operating a legitimate business. The mere fact that the name of a respondent appears from the WhoIs record to match the domain name, without additional affirmative evidence, does not lead to the conclusion that such a respondent is commonly known by the disputed domain name under Policy 4(c)(ii). The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, the Panel finds that the Respondent registered the Domain Name in awareness of the Complainant and uses the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the ROLLS-ROYCE, RR and CULLINAN Marks as to the source, sponsorship, affiliation or endorsement of its website. The Respondent’s Website purports to offer private jet services (there being no evidence before the Panel that these services actually exist) associated with the Complainant and its luxury brand of automobiles, notwithstanding that there is no connection or association between the Respondent and the Complainant. It is therefore highly likely that the Respondent received or intended to receive revenue from Internet users who happen to come across the Respondent’s Website by means of confusion with the ROLLS-ROYCE, RR and CULLINAN Marks and/or seek to purchase the services advertised by the Respondent on the understanding that they are associated with the Complainant in some way. The Panel finds that such use amounts to use in bad faith pursuant to paragraph 4(b)(iv) of the Policy. The Panel finds that the Complainant has established the third element of the Policy.
page 5 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 Name be transferred to the Complainant. /Nicholas Smith/ Nicholas Smith Sole Panelist Date: October 10, 2024
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