The Complainant is Jaguar Land Rover Limited of Whitley, Coventry, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Phillips Ormonde & Fitzpatrick, Australia.
The Respondent is Techno International Pty Ltd. of Brisbane, Queensland, Australia. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 21, 2015. On July 21, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 24, 2015 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 .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 27, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 16, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 17, 2015.
The Center appointed Philip N. Argy as the sole panelist in this matter on August 21, 2015. 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.
On Sunday, August 23, 2015, the Center received a communication from Mr. McGrath (listed as “Registrant Contact Name” for the Disputed Domain Name) to the effect that he was “away until 2nd September” and intimating that he would respond to the Center’s communication thereafter. The Panel requested that the Center indicate to Mr. McGrath that if the Respondent wished to request an extension of time within which to file a Response it should do so in a formal way with substantive reasons indicating why no Response had been filed on time and why there had been no response to the Center’s earlier communications.
As at September 3, 2015, Sydney time, no further communication had been received from the Respondent.
All other administrative requirements appear to have been met. 4. Factual Background
The following facts, taken mostly from the Complaint, remain uncontested.
The Complainant is a globally renowned manufacturer of premium motor vehicles including the famous Jaguar, Rover and Land Rover brands. It is the largest automotive manufacturing employer in the United Kingdom.
The Land Rover brand is particularly well known in relation to four-wheel-drive and off-road vehicles. It was first registered as a trade mark in the United Kingdom on October 11, 1947, and the following year in Australia. The brand has been in use continuously in Australia and other countries of the world since about 1948 and is very well known. By reason of that extensive use the Complainant also claims common law trade mark rights in LAND ROVER. In addition to its trade mark registrations in respect of motor vehicles, the Complainant has a registered trade mark for LAND ROVER in Australia in class 35 for “advertising services”.
Through its authorised dealers the Complainant sells and advertises both new and used Land Rover vehicles, and it and its predecessors in business have done so in Australia and other countries of the world for more than six decades.
In Australia the total advertising spend by the Complainant alone (that is, excluding dealer spend) between 2009 and February 2014 amounted to in excess of GBP four million. In the United States of America the total advertising spend just for the Land Rover Discovery between 2009 and February 2014 amounted to in excess of GBP 15 million.
The Complainant and its affiliates have an online presence in 142 countries showing details of Land Rover vehicles. This includes country specific websites for a number of countries including the United Kingdom, the United States of America and Australia. From January 2011 to December 2013 alone there were in excess of 25 million hits to the Complainant’s “.uk” website and five million hits to the “.au” website.
The Disputed Domain Name was first registered on November 12, 2012 (by the Respondent). 5. Parties’ Contentions A. Complainant
The Complainant alleges that the Disputed Domain Name is confusingly similar to its LAND ROVER trade mark, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and that the Disputed Domain Name was registered and is subsequently being used in bad faith.
In relation to the first limb the Complainant argues that the addition of “classifieds” to its LAND ROVER trade mark does not prevent the Disputed Domain Name from being confusingly similar to its trade mark but rather it cements the confusion by suggesting that it resolves to a site at which will be found classified advertising for the Complainant’s brand of motor vehicles. In fact, the Disputed Domain Name resolves to a website which displays classified advertising for many brands of motor vehicle, not confined to brands owned by the Complainant.
In relation to the second limb the Complainant notes that the Respondent has not been licensed or otherwise permitted by the Complainant to use either the LAND ROVER trade mark or to apply for or use any domain name incorporating that mark or name. In light of the Complainant’s numerous trade mark registrations and worldwide reputation, it submits that it is inconceivable that the Respondent did not know of the Complainant’s rights and interests in the trade mark LAND ROVER prior to applying to register the Disputed Domain Name. Furthermore, the Disputed Domain Name is not one that the Respondent would choose unless seeking to take advantage of an association with the Complainant.
The Complainant also says that the Respondent has no legitimate interest in using the Disputed Domain Name for classified advertising because, by virtue of s.120 of the Australian Trade Marks Act 1995, its trade mark registration in class 35 covering “advertising services” is directly infringed by the Respondent’s use.
As opposed to cases where a domain name holder uses a domain name for the bona fide purpose of selling goods made by the owner of the trade mark (See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903), in this case the Respondent uses the Disputed Domain Name in relation to advertising services for third parties not connected in any way with the Complainant. Indeed the Respondent appears to accept any advertisement on its website whether it relates to Land Rover brand products or not. The Complainant refers to Broan-Nutone, LLC v. Ready Set Sales,WIPO Case No. D2010-0920. In any event, the Complainant submits, even if the cases dealing with an authorised distributors of genuine products were relevant, the current use of the Disputed Domain Name by the Respondent would not meet the criteria set out in Oki Data Americas, Inc. v. ASD, Inc. supra as the website is not only for the sale of genuine goods and, further, does not disclose that the Registrant has no relationship with the trade mark owner. There therefore exists at least a prima facie case that the Respondent lacks rights or legitimate interests in respect of the Disputed Domain Name. As a result, the burden of production shifts to the Respondent to adduce evidence demonstrating rights or legitimate interests, see Croatia Airlines d.d. v. Modern Empire Internet Ltd,WIPO Case No. D2003-0455.
In relation to the third limb of the Policy, the Complainant alleges that the Respondent has registered the Disputed Domain Name for the purpose of disrupting the business of the Complainant and for the purpose of diverting its customers from the websites of authorised distributors to themselves, particularly with respect to the purchase of used Land Rover vehicles. The Complainant says that it can be concluded that the Respondent registered the Disputed Domain Name with the intention of deriving a commercial benefit of some kind, thus meeting the bad faith requirements in paragraph 4(b) of the Policy.
The Complainant also relies upon paragraph 4(a)(iii) of the Policy, submitting that members of the public would be confused as to the identity of the proprietor of the Disputed Domain Name and the operator of the website to which it resolves, which is set up to appear as if it were an authorised website of the Complainant. The top banner of the website incorporates images of the Complainant’s Land Rover vehicles. Furthermore, one of the links at the top of the homepage is entitled “Land Rover Safety Recalls” which reinforces the suggestion that the website is an authorised website of the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Complainant bears the onus of proof and therefore cannot succeed unless it proves all three elements of the Policy on the balance of probabilities. That requires it to persuade the Panel in the present case that the Disputed Domain Name is confusingly similar to its LAND ROVER trade mark, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and that the Disputed Domain Name was registered or has been subsequently used in bad faith. A. Identical or Confusingly Similar
The Disputed Domain Name comprises the Complainant’s LAND ROVER trademark followed by the dictionary English word “classifieds” which signifies small advertisements generally of a private nature which are frequently used for the private sale of motor vehicles and other personal belongings. There is little doubt that the Disputed Domain Name was selected because it connotes that the website to which it resolves will contain classified advertisements for Land Rover brand motor vehicles. However, the fact that it does not do so is not relevant under this first limb of the Policy. The Panel is required to compare the Disputed Domain Name with the trade mark in which the Complainant has rights – that exercise is typically conducted without reference to the website to which the Disputed Domain Name resolves. When one remembers that the role of a trade mark is to be a badge of origin of the goods or services of its owner it is immediately apparent that the suffixing of the word “classifieds” is incapable of affecting the impression conveyed to a reader by the brand-name which precedes it. Accordingly, the Panel concludes that the Disputed Domain Name is confusingly similar to the Complainant’s trademark LAND ROVER.
The Panel finds the first limb of the Policy made out. B. Rights or Legitimate Interests
The Complainant has not licensed or authorized the Respondent to use its trademark, nor to register any domain names containing the trademark. In this case the Disputed Domain Name resolves to a website with links to the Complainant’s competitors. Therefore, this case does not meet the Oki Data criteria. Further, in the absence of a Response, the Panel cannot give the Respondent the benefit of any doubt in the matter. Had the Respondent been able to demonstrate that it was a dealer in used cars manufactured by the Complainant, the Panel might have taken a different view. Here, however, all of the evidence points in the other direction. It shows very conspicuous usage of the Complainant’s trade marks, motor vehicles and general look and feel. It bears no resemblance to a conventional used car dealer website.
Without more the Panel would comfortably conclude in favour of the Complainant on this limb. However, the Complainant’s trade mark registration of LAND ROVER in class 35 for advertising services also appears to make the Respondent’s use of the Disputed Domain Name a contravention of the Trademarks Act in Australia, thus cementing the Complainant’s success under this limb of the Policy. C. Registered or Subsequently Used in Bad Faith
In relation to the third limb of the Policy, the Panel is confident that the Respondent registered the Disputed Domain Name for the purpose of capturing customers intending to visit the websites of authorised Land Rover motor vehicle distributors. That enables the Panel to conclude that the Respondent registered the Disputed Domain Name with the intention of deriving a commercial benefit of some kind, thus meeting the bad faith requirements in paragraph 4(b) of the Policy.
The Disputed Domain Name was first registered on November 12, 2012 by the Respondent. That is to say, 64 years after the Complainant’s trade mark was registered in Australia for both motor vehicles and advertising services. As the Complainant submits, it is inconceivable that the Respondent did not know of the Complainant’s rights and interests in the trade mark LAND ROVER prior to applying to register the Disputed Domain Name.
The Complainant also relies upon paragraph 4(a)(iii) of the Policy, submitting that Internet users would be confused as to the identity of the registrant of the Disputed Domain Name and the operator of the website to which it resolves, which is set up to appear as if it were an authorised website of the Complainant. As the Complainant notes, the top banner of the website incorporates images of the Complainant’s Land Rover vehicles which can have no role other than to create the impression that the website relates to such motor vehicles. With one of the links at the top of the homepage being “Land Rover Safety Recalls” the Panel agrees with the Complainant’s submission that this reinforces the suggestion that the website is an authorised website of the Complainant.
Whilst either is sufficient for the purposes of the Policy, the Panel is in fact satisfied that the Disputed Domain Name was both registered and has subsequently been used in bad faith. 7. Eligibility
Under paragraph 4(i) of the Policy, a panel cannot order a domain name to be transferred to a successful complainant unless the complainant is eligible to be registrant of that domain name under the applicable auDA policy for the “.au” country-code Top-Level Domain (“ccTLD”). The Panel is satisfied that the Complainant, as registered proprietor of the LAND ROVER trade marks in Australia, is eligible to hold a domain name registration under the “.” ccTLD. 8. Decision
For all 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 be transferred to the Complainant.
Philip N. Argy
Sole Panelist
Date: September 3, 2015
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