The Complainant is Jaguar Land Rover Limited of Whitley Coventry, United Kingdom of Great Britain and Northern Ireland, represented by Phillips Ormonde & Fitzpatrick, Australia.
The Respondent is The Trustee for the Trivett Family Trust of Queensland, Australia represented by Woods Prince Lawyers, Australia. 2. The Domain Name and Registrar
The disputed domain names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and are registered with Web Address Registration Pty Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 19, 2016. On August 19, 2016, the Center transmitted by email to Web Address Registration Pty Ltd a request for registrar verification in connection with the disputed domain names. On August 23, 2016, Web Address Registration Pty Ltd 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 August 24, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was September 13, 2016. The Response was filed with the Center on September 13, 2016.
The Center appointed Alistair Payne as the sole panelist in this matter on September 26, 2016. 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, Jaguar Land Rover Limited ("JLR"), is a globally renowned manufacturer of premium saloons and sports cars and sports utility vehicles, based in the Midlands region of England and is the successor in business of a car manufacturing business that has operated from the UK since 1922.
The Complainant has produced motor vehicles under the brand and trade mark JAGUAR since approximately 1935, under the LAND ROVER trade mark since about 1948 and under the RANGE ROVER mark since 1970. The Complainant owns numerous trade mark registrations worldwide for each of these marks including Australian trade mark 83411 for the word mark JAGUAR registered since 1945, Australian trade mark number 96332 for LAND ROVER registered since 1948 and Australian trade mark 230454 for RANGE ROVER registered since 1969.
The disputed domain names were registered between 2014 and 2015 by the Respondent who holds the disputed domain names on behalf of the Trivett family beneficiaries. Mr. J. Trivett by statutory declaration has stated that the disputed domain names were acquired by the Respondent for the purposes of developing the proposed "Maintain My" web platform which would connect consumers to a range of service providers, including manufacturers of both genuine and non-genuine automotive spare parts. 5. Parties' Contentions A. Complainant
The Complainant submits that it owns numerous trade mark registrations for its JAGUAR, LANDROVER and RANGE ROVER marks including the Australian registrations noted above. It says that as a result of the Complainant's very substantial business and advertising and promotional efforts worldwide, including print media and television advertising, presence at motor shows and motor vehicle award competitions and a substantial on-line presence in 142 countries that it has developed a very substantial presence and renown attaching to each of these marks and as a result its marks are very well known. The Complainant notes that it operates websites for its products under each mark respectively at a number of domain names including , , , , , , , , and .
The Complainant further submits that each of the disputed domain names is confusingly similar to the names and trade marks in which it has rights. In each case, the disputed domain name incorporates as the distinctive and dominant component one of the trade marks JAGUAR, LAND ROVER or RANGE ROVER. It says that in broad terms, the disputed domain names fall into categories where the respective trade marks of the Complainant have been combined with geographical words such as "Australia", "Melbourne" and "Sydney", with words indicating vehicle type, e.g., "hybrid" or "electric", or combined with a descriptive term such as "capped price service", "fixed price service", "finance" or the surname of the registrant contact for each of the disputed domain names, namely "Trivett".
The Complainant lists the disputed domain names as set out below:
Disputed domain name
Creation Date
1
27/10/2014
2
27/10/2014
3
27/10/2014
4
27/10/2014
5
27/10/2014
6
20/11/2014
7
20/11/2014
8
26/11/2014
9
26/11/2014
10
26/11/2014
11
26/11/2014
12
26/11/2014
13
10/09/2014
14
26/11/2014
15
20/11/2014
16
20/11/2014
17
26/11/2014
18
20/11/2014
19
10/09/2014
20
10/09/2014
21
10/09/2014
22
26/11/2014
23
20/11/2014
24
26/11/2014
25
26/11/2014
26
25/11/2014
27
26/11/2014
28
20/11/2014
29
20/11/2014
30
26/11/2014
31
26/11/2014
32
26/11/2014
33
10/09/2014
34
10/09/2014
35
26/11/2014
36
26/11/2014
37
26/11/2014
38
19/08/2014
39
21/02/2015
40
28/08/2014
41
service
30/08/2014
42
27/11/2014
43
21/08/2014
44
05/09/2014
45
03/11/2014
46
29/10/2014
47
25/10/2014
48
23/10/2014
49
26/11/2014
50
25/10/2014
51
25/10/2014
52
25/10/2014
53
23/10/2014
54
25/10/2014
55
25/10/2014
56
25/10/2014
57
25/10/2014
58
25/10/2014
59
25/10/2014
60
25/10/2014
61
25/10/2014
62
25/10/2014
63
25/10/2014
64
26/11/2014
65
26/11/2014
66
26/11/2014
67
26/11/2014
68
25/11/2014
69
20/11/2014
70
20/11/2014
71
26/11/2014
72
20/11/2014
73
26/11/2014
74
26/11/2014
75
20/11/2014
76
26/11/2014
77
26/11/2014
78
26/11/2014
79
26/11/2014
80
10/09/2014
81
10/09/2014
82
10/09/2014
83
10/09/2014
84
10/09/2014
85
26/11/2014
86
26/11/2014
87
20/11/2014
88
26/11/2014
89
26/11/2014
90
26/11/2014
91
10/09/2014
92
20/11/2014
93
26/11/2014
94
26/11/2014
95
26/11/2014
96
20/11/2014
97
26/11/2014
98
20/11/2014
99
20/11/2014
100
26/11/2014
101
26/11/2014
102
25/11/2014
103
26/11/2014
104
20/11/2014
105
26/11/2014
106
20/11/2014
107
26/11/2014
108
26/11/2014
109
26/11/2014
110
26/11/2014
111
26/11/2014
112
26/11/2014
113
26/11/2014
114
10/09/2014
115
29/10/2014
116
06/11/2014
117
21/02/2015
118
29/10/2014
119
30/10/2014
120
05/09/2014
121
21/08/2014
122
21/08/2014
123
29/10/2014
124
service
30/08/2014
125
30/08/2014
126
26/11/2014
127
27/11/2014
128
27/11/2014
129
26/11/2014
130
26/11/2014
131
26/11/2014
132
23/10/2014
133
03/11/2014
134
03/11/2014
135
03/11/2014
136
29/10/2014
137
27/10/2014
138
27/10/2014
139
27/10/2014
140
27/10/2014
141
27/10/2014
142
27/10/2014
143
26/11/2014
144
26/11/2014
145
26/11/2014
146
20/11/2014
147
10/09/2014
148
10/09/2014
149
25/11/2014
150
26/11/2014
151
26/11/2014
152
20/11/2014
153
20/11/2014
154
26/11/2014
155
26/11/2014
156
26/11/2014
157
26/11/2014
158
26/11/2014
159
26/11/2014
160
26/11/2014
161
10/09/2014
162
26/11/2014
163
26/11/2014
164
26/11/2014
165
05/12/2014
166
28/08/2014
167
service
30/08/2014
168
21/02/2015
169
27/11/2014
170
27/11/2014
171
26/11/2014
172
26/11/2014
173
23/12/2014
174
03/11/2014
175
03/11/2014
It then goes on to categorise them in the manner further described below:
- Disputed domain names 1 to 5 each incorporate the LAND ROVER trade mark in combination with the name of a capital city in Australia – variously "Canberra", "Darwin", "Hobart", "Perth" and "Melbourne".
- Disputed domain names 6 to 34 incorporate the LAND ROVER trade mark with geographical terms being the names of towns, regions or suburbs in Australia, i.e., "Bennetts Green", "Brookvale", "Cairns", "Doncaster", "Geelong", "Gold Coast", "Hawthorn", "Indooroopilly", "Alice Springs", "Artarmon", "Blakehurst", "Cannington", "Coffs Harbour", "Taringa", "Toowong", "Albany", "Brighton", "Bundaberg", "Morwell", "Mosman", "Narellan", "Orange", "Osborne Park" and "Port Lincoln".
- Disputed domain names 35 to 37 incorporate the LAND ROVER trade mark in combination with the geographical indicators "north", "east" and "city".
- Disputed domain name 38 comprises the LAND ROVER trade mark alone with the designation ".".
- Disputed domain names 39 to 44 combine the LAND ROVER trade mark with various descriptive words, being respectively, "my", "maintain my", "service my", "capped price service", "leasing" and "capped price servicing". In each case, these descriptions add nothing to the distinctive character of the LAND ROVER trade mark in these combinations.
- Disputed domain names 45 and 46 combine the LAND ROVER trade mark with the descriptive words "electric" and "hybrid". The word "electric" is a descriptive word used in relation to vehicles powered with an electric engine and the word "hybrid" is a descriptive word used in connection with vehicles which incorporate both a fuel engine and an electric engine.
- Disputed domain names 47 and 48 combine the trade mark RANGE ROVER with the geographic name of the country "Australia".
- Disputed domain names 49 to 63 each incorporate the trade mark RANGE ROVER with the name of a territory or capital city in Australia, i.e., "ACT" (Australian Capital Territory), "Canberra", "Darwin", "Hobart", "Brisbane", "Melbourne", "Perth", "Adelaide" and "Sydney".
- Disputed domain names 64 to 109 combine the trade mark RANGE ROVER with geographical terms being the names of towns, regions or suburbs in Australia, i.e., "Port Lincoln", "Albany", "Alexandria", "Alice Springs", "Artarmon", "Bennetts Green", "Blakehurst", "Brighton", "Brookvale", "Cairns", "Cannington", "Coffs Harbour", "Doncaster", "Geelong", "Gold Coast", "Hawthorn", "Indooroopilly", "Taringa", "Toowong", "Malvern", "Launceston", "Lavington", "Mackay", "Maroochydore", "Millicent", "Narellan", "Osborne Park", "Parramatta", "Morwell", "Mosman", "Orange", "Port Macquarie", "Bundaberg", "Dubbo", "Southport", "Tamworth", "Toowoomba", "Townsville" and "Wollongong".
- Disputed domain names 110 to 113 combine the trade mark RANGE ROVER with the geographical indications "north", "south", "west" and "city".
- Disputed domain names 114 to 116 combine the trade marks RANGE ROVER with the Respondent's name Trivett, the non-distinctive term "hse" and the non-distinctive designation ".".
- Disputed domain names 117 to 132 combine the trade mark RANGE ROVER with various descriptive words, being respectively, "my", "finance", "new", "capped price servicing", "leasing", "service centre", "sport", "service my", "service", "preowned", "capped price service", "fixed price service", "parts", "review", "spare parts" and "warranty".
- Disputed domain names 133 to 136 combine the trade mark RANGE ROVER with the words "electric" and "hybrid" respectively. In the combination "Range Rover Electric", the word "electric" makes reference to a vehicle powered by an electric engine. In the combination "Range Rover Hybrid", the word "hybrid" makes reference to a vehicle powered by a hybrid engine.
- Disputed domain name 137 combines the trade mark JAGUAR with the geographic name of the country "Australia".
- Disputed domain names 138 to 142 combine the trade mark JAGUAR with the name of a capital city in Australia, namely "Darwin", "Canberra", "Adelaide", "Brisbane" and "Hobart".
- Disputed domain names 143 to 161 combine the trade mark JAGUAR with geographical terms being the names of towns, regions or suburbs in Australia, namely, "Wollongong", "Townsville", "Osborne Park", "Mosman", "Taringa", "Toowong", "Coffs Harbour", "Malvern", "Launceston", "Lavington", "Narellan", "Maroochydore", "Southport", "Millicent", "Morwell", "Orange", "Albany" and "Alexandria".
- Disputed domain names 162 to 164 combine the trade mark JAGUAR with the geographical indications "west", "north" and "south".
- Disputed domain names 165 to 173 combine the trade mark JAGUAR with the descriptive words "service", "maintain my", "service my", "my", "capped price service", "fixed price service", "review", "spare parts" and "warranty".
- Disputed domain names 174 and 175 combine the trade mark JAGUAR with the descriptive words "hybrid" and "electric".
The Complainant submits that it is well settled that the use of a well-known mark in its entirety, together with a geographic term or a descriptive term in a domain name, creates a domain name that is confusingly similar to the well-known mark. Accordingly the Complainant submits that each of the disputed domain names is confusingly similar either to its JAGUAR, LAND ROVER or RANGE ROVER marks.
As far as the second element of the Policy is concerned the Complainant submits that the Respondent has not been licensed or otherwise permitted by the Complainant to use any of the JAGUAR, LAND ROVER or RANGE ROVER trade marks, or to apply for or use any domain name incorporating any of those marks or names. It further says that in light of the Complainant's numerous trade mark registrations and worldwide reputation, it is inconceivable that the Respondent did not know of the Complainant's rights and interests in the trade marks upon registration in 2014/2015.
The Complainant notes the cease and desist letter sent by its lawyers to the Respondent in late 2015 and the response from the Respondent's lawyers that the Respondent acquired the disputed domain names for the purpose of developing a web-based application to promote genuine parts and services and was aiming for a 2018 test release. The Complainant says that the Respondent has provided no evidence of preparations to use any of the disputed domain names in connection with a bona fide offering of goods or services. Even if there were preparations to develop a web-based application to promote genuine parts and services (as claimed), such use cannot be characterised as bona fide in accordance with the principles of Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903.
The Complainant says in this regard that the Respondent is not, and has never been, known by any of the disputed domain names. Further it says that the words in each of the disputed domain names are associated exclusively with the Complainant. Finally it says that the Respondent has not acquired any trade mark or service mark rights in any of the disputed domain names.
As far as bad faith is concerned the Complainant says that the Respondent registered the disputed domain names in order to prevent the Complainant from reflecting its trade marks in corresponding domain names and that the number of similar domain names subject of this Complaint shows that the Respondent has engaged in a pattern of such conduct. Further says the Complainant, the Respondent has registered the disputed domain names to disrupt the business of the Complainant in Australia.
Although the Complainant notes that the Respondent is not actively using any of the disputed domain names and has taken no active steps to sell any of the disputed domain names, the Complainant submits that this does not preclude a finding of bad faith use arising from inaction and passive holding based on the decision in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
The Complainant notes that the only use to which the Respondent claims that it intends to put the disputed domain names is for a web-based application to promote genuine parts and services which is aimed to be tested in 2018.
The Complainant relies on the four pronged test from the Oki Data case for determining whether a third party can use a domain name for promoting the genuine parts and services of another's trade mark in good faith and says that in the instant case while it is far from clear how the Respondent intends to use the disputed domain names, it is plain that the Respondent has tried to corner the market in all relevant domain names. For example, says the Complainant, for the geographical city names the Respondent has registered not only a geographical name followed by the relevant trade mark, but in many cases the reverse combination with the relevant trade mark followed by the geographical name. As a result, says the Complainant, the Respondent's registration of the disputed domain names and its potential use of the disputed domain names could not be in good faith. B. Respondent
The Respondent does not challenge the Complainant's demonstrated trade mark rights but submits that there is no use of each disputed domain name such as would constitute trade mark infringement and that there is also no misleading or deceptive conduct. It says that a reasonable and fair-minded member of the public would exercise independent thought and apply common sense when considering whether a particular disputed domain name or page is affiliated or endorsed by a trademark owner or a particular brand. It says that as far as the disputed domain names are concerned, either in their current form or linked in some way to the Respondent's "MaintainMy" project, a reasonable person would not be misled into believing there was a particular relationship or affiliation between the Complainant and the Respondent and neither does the inclusion of geographical terms impugn the disputed domain names in any way. The Respondent submits that if the Complaint is to succeed under the first element of the Policy then there would need to be a finding of use made in relation to each of the disputed domain names.
The Respondent says that there was a legitimate commercial purpose for its registration of each of the disputed domain names being for the purpose of its potential "MaintainMy" web platform which will connect consumers to a range of service providers, including manufacturers of both genuine and non-genuine automotive spare parts. Mr. Trivett gives evidence by declaration on behalf of the Respondent as to the steps he has taken to secure finance and the engagement of a consultant for business development advice. However the "MaintainMy" project is envisaged by the Respondent to be a substantial undertaking that has already taken up substantial time and is expected to take considerable further time to develop to market. It says that the work undertaken to date in this project goes well beyond merely perfunctory steps.
The Respondent notes that its "MaintainMy" project does not contemplate going "behind" any existing businesses, unfairly competing with existing businesses or seeking to pass itself off as having an affiliation to any businesses that it does not in fact possess. In fact it submits that a component of the project development is to liaise with suppliers of parts, which would include the Complainant, before offering services in relation to vehicles manufactured by the Complainant.
Importantly it says that the disputed domain names do not, on the evidence, match any current dealership names or business descriptions which the Complainant uses in its marketing – for example, there is no evidence of the Complainant marketing products by reference to the geographic descriptions which form part of some of the disputed domain names. Further, according to the Respondent, the "MaintainMy" project will not be domiciled at the disputed domain names but rather the disputed domain names will be used (in due course) as a way of advertising the existence of the "MaintainMy" service to consumers who (in the present case) drive vehicles manufactured by the Complainant.
The Respondent notes that the content of the existing websites makes it obvious that the disputed domain names are not associated with such a large, long-established car manufacturer as the Complainant. It observes that the pages currently present only standard "Crazy Domains" default setting pages and that an Internet user might have interpreted a "parking" page some years ago as potentially belonging to a recognised brand, but no longer. It says therefore that the use of parking pages which it says are not "pay per click" advertising pages, does not negate the Respondent's argument that it has a legitimate interest in the disputed domain names. It notes as set out in Mr. Trivett's declaration that the Respondent intends for future content on the disputed websites to prominently disclose the true relationship (or lack of relationship) between the sites and the Complainant and is not trying to improperly associate itself with the Complainant or its trade marks. Finally under the second element, the Respondent says that it has not attempted to "corner the market" by registering a series of domain names that reflect the Complainant's trademarks.
As far as bad faith is concerned the Respondent says that there is no evidence for the assertion that the Respondent has registered the disputed domain names to prevent the Complainant from reflecting its trade marks in corresponding domain names and that the Complainant had ample opportunity to register any of the disputed domain names in the decades prior to the Respondent's registration. Neither says the Respondent is there any evidence that the Respondent has either intended to disrupt, or has actually disrupted, any part of the Complainant's business by the registration of any or all of the disputed domain names and in fact this would be very unlikely, says the Respondent, in view of its requirement for the Complainant's approval of its project. Further, the Respondent notes that it is not actively using any of the disputed domain names and has taken no active steps to sell any of the disputed domain names. It says that there is no particular significance in the fact that the Respondent has taken time in developing the "MaintainMy" project. The Telstra decision also indicates that passive holding alone does not establish bad faith – rather, all of the circumstances of the case must be taken into account and that these circumstances are not present in the current case as the Respondent has not failed to correspond with the Complainant, has not made extortionate transfer claims against it and has not sought to profit from the parked disputed domain names.
The Respondent says that the matters set out above indicate that the considerations set out in the Oki Data caseare satisfied in favour of the Respondent in the present case. The goods and services to be offered by the Respondent under the currently-in-progress project are of genuine interest to consumers. There is no suggestion of a "bait and switch" or entrapment process being used. The "MaintainMy" project explicitly distinguishes between genuine and non-genuine parts and Mr. Trivett confirms that the relationship (if any) between the Complainant and the Respondent will be accurately described in the website that is yet to be developed so that there can be no suggestion of passing off. The Respondent also submits that it has not sought to corner the market in domain names because no domain name that the Complainant might wish to register for itself has been registered by the Complainant. The Respondent notes that if the Complainant genuinely wished to register any of the disputed domain names it could be inferred that the Complainant with (1) decades of market presence (2) competent legal representation and (3) a suite of trade marks could have done so long ago had it considered it prudent to do so. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns registered trade mark rights in Australia for its marks, including Australian trade mark 83411 for the word mark JAGUAR registered since 1945, Australian trade mark number 96332 for LAND ROVER registered since 1948 and Australian trade mark 230454 for RANGE ROVER registered since 1969. The Panel also notes that such a high degree of recognition attaches to each of these marks in Australia and elsewhere in the world that these marks fall into the category that could truly be said to be "well known" marks.
Each of the disputed domain names wholly incorporates one of these trade marks and has no other distinguishing term, or as in the large majority of cases, contains additional terms that are either geographical or ordinary English descriptive words, such as "capped price service", "fixed price service", "finance", "service", "review", "electric", "warranty", "spare parts", "pre-owned", "hybrid", "sport" or pro-nominal expressions such as "my" and "maintain my". The only exceptions to this are the disputed domain names and .
The Panel notes that, contrary to the Respondent's submissions, the assessment of confusing similarity under the first element of the Policy should not be confused with a test for trade mark infringement. The test under the first element is essentially a test of standing and the relevant assessment as undertaken by the majority of panels in .auDRP cases (and as also noted at paragraph 1.2 of the WIPO Overview of Panel Views on Selected UDRP Questions, Second Edition and paragraph 1.2 of the auDA Overview of Panel Views on Selected auDRP Questions First Edition) in circumstances that the Complainant's trade mark has been wholly incorporated into the disputed domain name is a simple side by side comparison of the disputed domain names and the Complainant's mark in order to assess whether the additional term distinguishes the disputed domain name adequately from the Complainant's mark.
The Panel has reviewed each of the disputed domain names, not including in this category the disputed domain names and and finds that neither the inclusion of the geographical terms nor of any the ordinary English words noted above has the effect of distinguishing any of the disputed domain names from the relevant Complainant's highly distinctive and well known trade marks. Accordingly, the Panel finds that each of these disputed domain names is either identical or confusingly similar to either the JAGUAR, LANDROVER or RANGEROVER trade marks as are incorporated into each example in this category of disputed domain names.
The disputed domain names and in the list above do not fit into this category. While each of these disputed domain names wholly incorporates the Complainant's well known RANGEROVER mark, one incorporates the letters "hse" and the other includes the surname "Trivett". The Panel finds that the addition of the letters "hse" does not distinguish the disputed domain name from the Complainant's highly distinctive and well known RANGEROVER mark. Further, the addition of the surname "Trivett" is in the Panel's view not sufficient to escape a finding of confusing similarity under the first element of the Policy with the Complainant's RANGEROVER mark.
As a result the Panel finds that the Complaint succeeds under the first element of the Policy in relation to each and every one of disputed domain names. B. Rights or Legitimate Interests
The Complainant has submitted that the Respondent has not been licensed or otherwise permitted by the Complainant to use any of the JAGUAR, LAND ROVER or RANGE ROVER trade marks, or to apply for or use any domain name incorporating any of those marks or names. The Panel notes the acknowledgement in the Respondent's submissions that it was well aware of these three trade marks at the time that it registered the disputed domain names.
The Complainant alleges that there is no evidence of preparations to use the disputed domain names in connection with a bona fide offering of goods and services.
In considering this issue it is appropriate to consider the Oki Data criteria which, as acknowledged by both parties, previous panels have used to assess whether a respondent's use of a complainant's mark in a disputed domain name amounts to bona fide use or not using the analysis from Oki Data Americas, Inc. v. ASD, Inc., supra.
In the Oki Data case the panel set out four minimum factor requirements as follows in helping to decide whether a respondent was possibly making a bone fide use of the disputed domain name, or not:
Respondent must actually be offering the goods or services at issue. See World Wrestling Federation Entertainment, Inc. v.Ringside Collectibles,WIPO Case No. D2000-1306 (respondent failed to show demonstrable preparations to use the domain name in connection with a bona fide offering);
- Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods. Nikon, Inc. v. Technilab,WIPO Case No. D2000-1774 (use of Nikon-related domain names to sell Nikon and competitive cameras not a legitimate use); M.F.H. Fejlesztõ Korlátolt Felelõsségû Tvrsaság v. Dany Daniele, D2015-0639;
- The site must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents. See Houghton Mifflin Co. v. Weatherman, Inc.,WIPO Case No. D2001-0211 (no bona fide offering where website's use of Complainant's logo, and lack of any disclaimer, suggested that website was the official Curious George website); R.T. Quaife Engineering v. Luton,WIPO Case No. D2000-1201 (no bona fide offering because domain name improperly suggested that the reflected site was the official U.S. website for Quaife, an English company; moreover, respondent's deceptive communications with inquiring consumers supported a finding of no legitimate interest); Easy Heat, Inc. v. Shelter Prods.,WIPO Case No. D2001-0344 (no bona fide use when respondent suggested that it was the manufacturer of complainant's products); Grundfos Holding A/S v. Ahmed Alshahri,WIPO Case No. D2015-1112;
- The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. Magnum Piering, Inc. v. Mudjackers,WIPO Case No. D2000-1525 ("a single distributor is extremely unlikely to have a legitimate interest in precluding others from using numerous variants on a mark"); Johnson & Johnson v. Ebubekir Ozdogan,WIPO Case No. D2015-1031.
The application of these factors to a case such as the current one in which the re-seller is unauthorized was confirmed by the panel in National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin' Connection, Inc.,WIPO Case No. D2007-1524and the approach was adopted quite recently by this panel under the .auDRP in BlueScope Steel Limited v. Jye Fulton, WIPOCase No. DAU2016-0029.
As noted above, the Respondent submits that it has registered the disputed domain names for the purposes of developing its proposed "Maintain My" web platform which will connect consumers to a range of service providers, including manufacturers of both genuine and non-genuine automotive spare parts.
Although this business is not yet up and running it is clear based on the statutory declaration of Mr. Trivett that it is under development albeit that it is a substantial project and will take some time to get to launch point. As part of this platform it is apparent that the Respondent intends to offer services in relation to JAGUAR, LANDROVER and RANGEROVER spare parts. It seems that a key part of preparations for the business to date has been registration of the disputed domain names. However, the Respondent acknowledges that the disputed domain names are to be used to drive traffic to the Respondent's website and have been registered for this purpose; in this regard and as further discussed below in relation to the fourth Oki Data factor, the Respondent's registration of the disputed domain names for such purpose cannot be considered as being demonstrable preparations for a bona fide purpose.
Regarding the second requirement of Oki Data, the Respondent maintains that there is no suggestion of a "bait and switch" or entrapment process being used here. It says that the "MaintainMy" project will explicitly distinguish between genuine and non-genuine parts and that Mr. Trivett confirms in his declaration that the relationship (if any) between the Complainant and the Respondent will be accurately described in the website that is yet to be developed so that there can be no suggestion of passing off. The Panel also notes Mr. Trivett's acknowledgement that the Respondent intends to seek the Complainant's approval for its website use of the Complainant's trade marks and therefore infers that this will not be a "bait and switch" case and that the Complainant will in any event have the opportunity to check the manner of use and mechanism of the website to ensure prior to launch that this is not a case of "bait and switch" and that no infringing use is made of the Complainant's trade marks.
As to the third Oki Data factor, Mr. Trivett has expressly confirmed in his declaration that the proposed "MaintainMy" website will accurately disclose the registrant's relationship with the trade mark owner; and will not suggest that it is the trademark owner, or that the website is the Complainant's official site. Therefore at this point the Panel is satisfied as to the Respondent's future intentions in this regard.
The application of the fourth Oki Data factor presents a further difficulty for the Respondent. In registering 175 domain names containing the Complainant's trade marks, the Panel must determine whether the Respondent has tried to corner the market in all domain names, thus depriving the Complainant of reflecting its own mark in a domain name.
The Panel notes that the Respondent says that the web platform will not be domiciled at the disputed domain names but rather will be used as a way of advertising the existence of the "MaintainMy" service to consumers who drive vehicles manufactured by the Complainant.
The Respondent expressly asserts that it is not trying to corner the market in this way. It says that the disputed domain names do not, on the evidence, match any current dealership names or business descriptions which the Complainant uses in its marketing – for example, there is no evidence of the Complainant marketing products by reference to the geographic descriptions which form part of some of the disputed domain names. In other words it seems to the Panel that the disputed domain names will be used in on-line advertising programmes to trigger advertisements or possibly links to the parts of the Respondent's web platform that are relevant to consumers who drive the Complainant's vehicles.
The fact remains that the Respondent has registered 175 domain names that each contain the Complainant's trade marks together with geographical or common English terms except in two cases (namely disputed domain names and ) which the Panel will discuss further below. As noted under the first element there are no distinguishing elements in these disputed domain names and the Respondent has as noted by the Complainant registered not only a geographical name followed by the relevant trade mark, but in many cases the reverse combination with the relevant trade mark followed by the geographical name. The Panel also notes that in every case and as confirmed by the Respondent, these are for its own commercial purposes and not for a legitimate non-commercial purpose. While the Respondent may not have sought to register domain names that are directly apposite to the Complainant's local Australian dealers, in the Panel's view Internet users seeing the disputed domain names would at first glance expect them to relate to websites affiliated with or authorised by the Complainant and the Complainant will be potentially deprived in the future from seeking to register these domain names. In these circumstances the Panel fails to see how registering 173 domain names containing a trade mark owner's well known marks without distinguishing elements does not amount to an attempt to corner the market in relevant domain names.
The two domain names that do not merely contain geographical terms or common English words, namely domain names and all feature the Complainant's well known marks and in the Panel's view on first glance Internet users would also reasonably assume that the Respondent's use of the particular disputed domain name was authorised by, or that the Respondent was an affiliate or re-seller of the Complainant's products.
Had the Respondent been able to point to evidence that it had developed trade mark rights in its proposed "MaintainMy" mark, and had it been able to suggest that its Trivett family members sold Range Rover vehicles then, all other things being equal and supposing that there was no evidence to support the allegation that it had attempted to corner the market in relevant domain names, the result might have been different under this element of the Policy. However no such evidence has been put forward and in the circumstances the Panel finds that the Respondent has failed to rebut the case made out by the Complainant that the Respondent has attempted to corner the market in relevant domain names.
The Panel notes that the Respondent has registered other domain names for its "MaintainMy" project that do not contain the Complainant's or any other party's trade marks and it was perfectly entitled to do so. However in relation to the disputed domain names the Panel finds that the Respondent's case has not met the criteria set out in the Oki Data case
The Respondent might have been able to succeed under this element if it had only sought to register disputed domain names that contained an adequate distinguisher in circumstances that the other criteria of the Oki Data guidelines were fulfilled. It is not legitimate for a party to seek to register 175 domain names for commercial purposes where those domain names wholly incorporate a third party's well known trade marks without any proper distinguisher and without the trade mark owner's authority. For these reasons the Complaint succeeds under the second element of the Policy. C. Registered or Subsequently Used in Bad Faith
It is clear that the Respondent and its "moving spirit" Mr. Trivett, who has many years' experience as a car dealer across Australia for a whole range of brands of motor vehicle (although not for the brands at issue in this Complaint), were well aware of the Complainant's trade marks at the date of registration of each of the disputed domain names. Mr. Trivett has in fact confirmed in his declaration that he is very cognizant of the intellectual property rights of vehicle manufacturers and that he will need the involvement and support of every manufacturer of any vehicle brand involved in his "MaintainMy" project concerning in particular parts, compliance and up to date servicing information. He notes that obtaining this support has to date proved to be one of the major challenges of the project.
In this light it is extremely surprising that the Respondent, at Mr. Trivett's direction, sought to register 175 domain names that wholly incorporate the Complainant's very well-known trade marks without first seeking the Complainant's authority. The rationale according to Mr. Trivett was to register all of the key domain names that would be necessary in order to maximize the effectiveness of a strategy to build on-line traffic around the particular brands for the benefit of the "Maintain My" project. He submits that he expressly instructed the consultant not to register domain names that might include business names of the Complainant's dealers or businesses. However it seems that at this early stage of the project neither he nor his Internet consultant considered the likely attitude of the Complainant to the Respondent's wide ranging domain name registration scheme, or to the need to obtain the future support and co-operation of brand owners, such as the Complainant.
The overwhelming inference is that the Respondent, for its own commercial purposes and as directed by Mr. Trivett, effectively sought to corner the market in relevant domain names incorporating the well-known JAGUAR, LANDROVER and RANGEROVER marks in the ".au" domain name space. The argument, as raised by the Respondent, that the Complainant had the opportunity to register these domain names for many years but has chosen not to do so, misses the point. The owner of a well-known trade mark cannot be expected to register every variation of any relevant domain name that may incorporate its well-known trade mark as a defensive measure.
The Respondent's domain name registration scheme was undertaken knowingly but without proper consideration of the Complainant's trade mark rights. The result might have been different had the Respondent registered a single domain name that incorporated a distinguisher in which it owned trade mark rights as well as the Complainant's brand name, provided always that the surrounding circumstances otherwise fulfilled the Oki Data requirements, particularly the actual use to which such domain name would be put. However that is certainly not the case in respect of any of the disputed domain names.
The Panel also notes that the Respondent alleges that the disputed domain names have been registered to drive traffic to the "MaintainMy" project main website. The Panel finds that the Respondent has registered the disputed domain names to attract, for commercial gain, Internet users to its "MaintainMy" project website, by creating a likelihood of confusion with the Complainant's trade marks.
The Panel does not need to consider passive use as in its view and for the reasons set out above the Respondent's registration of the disputed domain names amounts to registration in bad faith. Under paragraph 4(b)(ii) of the Policy the registration of a domain name in order to prevent the owner of a name, trademark or service mark from reflecting that name or mark in a corresponding domain name is considered to be evidence of registration or use in bad faith. The Respondent's registration of the disputed domain names has effectively precluded the Complainant from registering geographical domain names in Australia that incorporate the JAGUAR, LANDROVER and RANGEROVER marks and therefore the Panel also finds that the requirements of this section of the Policy are fulfilled and that this amounts to further evidence of registration or use in bad faith.
As a result the Panel finds that the Complaint succeeds under this element of the policy in relation to each of the disputed domain names. 7. 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 domain names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and be transferred to the Complainant. The Panel orders that the disputed domain name which contains the family name of a beneficiary of the Respondent, be cancelled.
Alistair Payne
Sole Panelist
Date: October 10, 2016
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