The Complainant is Jaguar Land Rover Limited of Coventry, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Phillips Ormonde Fitzpatrick, Australia.
The Respondent is Bauer Media Pty Ltd. of Sydney, New South Wales, Australia, represented by Media Legal, Australia. 2. The Domain Names and Registrar
The disputed domain names , , and are registered with Corporation Service Company (Australia) Pty Ltd (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 12, 2017. On October 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 18, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's contact details.
The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the "Policy"), 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 October 20, 2017. In accordance with the Rules, paragraph 5(a), the due date for Response was November 9, 2017. The Response was filed with the Center on November 9, 2017.
The Center appointed Andrew F. Christie as the sole panelist in this matter on November 24, 2017. 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 globally renowned manufacturer of premium saloons, sports cars and utility vehicles, based in the Midlands region of England, United Kingdom. It is one of the top automotive manufacturing employers in the United Kingdom, employing over 20,000 people.
The Complainant produces a number of vehicle models under the "Jaguar", "Land Rover" and "Range Rover" brands. The Complainant is the owner in Australia of registrations for the following trademarks: JAGUAR (registration no. 83411, registered on April 5, 1945); LAND ROVER (registration no. 96332, registered on September 9, 1948); and RANGE ROVER (registration no. 230454, registered on July 10, 1969). It is also the owner of registrations for those trademarks in the United Kingdom and the United States of America ("United States"). The Complainant's trademarks have been used in Australia: in the case of JAGUAR, since at least the 1950s; in the case of LAND ROVER, since 1948; and in the case of RANGE ROVER, since 1970.
The Complainant has an online presence in 142 countries showing details of its Jaguar, Land Rover, and Range Rover brand vehicles, with country-specific websites for customers in a number of countries, including the United Kingdom, the United States and Australia. Its websites have been operating since at least 1998, and receive millions of visitors across these countries each year. The Complainant and its affiliates own a number of domain names relevant to its trademarks, including: , , , , , , and .
The Respondent is a part of a large international media group, and is one of Australia's leading multi‑platform publishers, with investments spanning magazines, digital properties, and live experiences. It also has significant interests in the publication of automotive magazines, and in related digital and online assets, which carry reviews of motor vehicles, including the Jaguar, Land Rover, and Range Rover brand vehicles. The Respondent and the United Kingdom company Bauer Consumer Media Limited ("BCML") are sister companies within the international Bauer Media group. BCML owns Australian registrations for the trademark WHICH CAR (registration no. 722189, registered on November 19, 1996), and for the trademark WHICH CAR? (registration no. 1631784, registered on July 2, 2014).
In mid-2014, the Respondent began planning to launch a car comparison website which would contain comprehensive information on new cars available in Australia, as well as reviews from the Respondent's magazines, at "" (the "WhichCar website"), using the WHICH CAR trademark under exclusive licence from BCML. The WhichCar website was soft-launched on June 15, 2015. The disputed domain names were registered on July 21, 2016. On that date the Respondent also registered more than 35 other domain names in the format "which[carbrand]." – including , , and .
The disputed domain names and , along with many other of the domain names registered by the Respondent on July 21, 2016, redirect to pages at the Respondent's WhichCar website that are specific to the particular car brand referenced in the domain name. It was the intention of the Respondent to also redirect the disputed domain name to such a page but, due to an oversight, this has not occurred. The brand-specific pages at the WhichCar website contain a listing of available models for the respective brand, and reviews and news of the brand. These pages also contain dynamically-generated advertising materials, some of which are for related products, such as car tyres and lubricants, and others of which are for unrelated products, such as shoes and aged care facilities.
The Complainant says that it sent the Respondent a letter about the disputed domain names on October 25, 2016, which the Respondent claims it did not receive. The Respondent claims that, had it received that letter, it would have made immediate contact with the Complainant to resolve the issues raised in the letter. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain names are confusingly similar to trademarks in which the Complainant has rights because: (i) the dominant and distinctive element of the disputed domain name is the trademark JAGUAR, the dominant and distinctive element of the disputed domain name is the trademark LAND ROVER, and the dominant and distinctive element of the disputed domain name is the trademark RANGE ROVER; (ii) each of the disputed domain names incorporates the word "which" prefixing the Complainant's trademarks, and this word is wholly descriptive and connotes a selection between different ones of the Complainant's vehicles; and (iii) in the context of a consumer choosing which Jaguar, Land Rover, or Range Rover brand of vehicle to purchase, this would typically be a question to be addressed by the Complainant or its representatives.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of any of the disputed domain names because: (i) they were each registered on July 21, 2016, many decades after the Complainant first used and obtained trademark registrations for the JAGUAR, LAND ROVER, and RANGE ROVER trademarks; (ii) the Respondent has never been licensed or otherwise permitted by the Complainant to use any one of the JAGUAR, LAND ROVER, or RANGE ROVER trademarks, nor has it ever been an authorized representative of the Complainant for the supply of Jaguar, Land Rover, or Range Rover brand vehicles; (iii) the disputed domain names are not ones that the Respondent would choose unless seeking to take advantage of an association with the Complainant; (iv) the Respondent utilizes the disputed domain names to draw Internet users away from websites of authorized representatives of the Complainant; and (v) the Respondent has not acquired any trademark rights in any of the disputed domain names.
The Complainant contends that the disputed domain names were registered or are subsequently being used in bad faith because: (i) in light of the Complainant's numerous trademark registrations and worldwide reputation, it is inconceivable that the Respondent did not know of the Complainant's rights and interests in the JAGUAR, LAND ROVER, and RANGE ROVER trademarks prior to applying to register the disputed domain names; (ii) the Respondent operates a website which incorporates vehicle reviews and comparisons, and generates income through advertising, and to which two of the disputed domain names, and , resolve; (iii) the Respondent does not use the disputed domain names for the purpose of a bona fide comparison between the Complainant's vehicles, unlike the Complainant, which has an online tool for prospective purchasers to identify which Jaguar, Land Rover, or Range Rover vehicle is best for them; (iv) the Respondent's use of the disputed domain names directs prospective purchasers to a website that features, compares and advertises other brands of vehicles; (vi) the Respondent uses the Complainant's logo trademark for "Land Rover" at the top of the relevant website page, suggestive of an authorization from the Complainant when no such authorization has been granted; (vi) the Respondent is using the Complainant's trademarks in the disputed domain names to increase traffic to its own commercial website, in a way that is contrary to the Complainant's interests and is misleading, and is designed to disrupt the business of the Complainant in Australia; (vii) the Respondent uses, and intends to use, the disputed domain names to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of its website, as evidenced by the use of the Complainant's logo trademark for "Land Rover" as a header on the Respondent's website; (viii) the Respondent is not making a legitimate non-commercial or fair use of the disputed domain names, but is, instead, using them as conduits to its website at ""; and (ix) the Respondent has created a likelihood of confusion with the Complainant's name and trademarks, given that those trademarks are central components of each of the disputed domain names. B. Respondent
The Respondent accepts that the Complainant is the registrant of the trademarks set out in the Complaint.
The Respondent disputes the claim that it is not making a legitimate fair use of the disputed domain names because: (i) it registered them and a number of other domain names in the same format (containing other car brands), with a view to using them in connection with its pre-existing car comparison website at "", by redirecting them to that website; (ii) it has made a bona fide use of two of the disputed domain names, and , in the Respondent's legitimate business, and it intended to use the third disputed domain name, , in the same manner, but due to an oversight that has not occurred
The Respondent disputes the Complainant's contention that the disputed domain names were registered and are being used in bad faith because they were intended to be, and are being, used to redirect and display the relevant page on its WhichCar website associated with the automotive brand referenced in each disputed domain name. In particular, the Respondent contends: (i) any advertising on the webpage resolving from the disputed domain names is appropriate, as are comparisons made with other cars; (ii) its comparisons website is in the public interest and, rather than disadvantaging the Complainant, its independence assists the Complainant; (iii) the terms "Jaguar", "Land Rover", and "Range Rover" can be used by third parties, such as the Respondent, in good faith, as part of a URL, where that does not lead to confusion; (iv) its use of the disputed domain names is to provide information as to which Jaguar, Land Rover, or Range Rover model is best suited for a particular purpose, and how each model stacks up against competitors; (v) its registration of the disputed domain names has not deprived the Complainant of the ability to reflect its brands in a domain name, as the Complainant controls the domain names , , and ; (vi) the Complainant and the Respondent are not competitors, and have had a long commercial association with each other, with the Complainant advertising its vehicles in the Respondent's publications and on its automotive websites for many decades; (vii) central to what is offered on the WhichCar website is the notion that what appears on the website is not the same as what would appear on websites operated by manufacturers and dealers, such as the Complainant; (viii) Internet users know and understand that the information published on the WhichCar website is different from that on the Complainant's website, in that the WhichCar website material is independent and unbiased, and they would continue to visit the Complainant's websites to find out additional information about any vehicle they were interested in; (ix) the Complainant has not provided any evidence of a drop in traffic to its websites resulting from the Respondent's use of the disputed domain names; (x) car brand owners and motoring publishers are in a symbiotic relationship, where both benefit from their association and connection, such that the Respondent's staff are regularly granted access to technical data, photographs and other information about the Complainant's vehicles; (xi) the Respondent provides redirects from its WhichCar website back to the Complainant's websites; (xii) the Complainant and the Respondent are not competitors as they do not sell the same products, and the Respondent is a motoring publisher, whilst the Complainant is a car manufacturer and dealer; and (xiii) there is no mechanism by which the Respondent could use the disputed domain names to take or divert for its own benefit a sale belonging to the Complainant, or to derive any benefit from any purchase choice made by any visitor to the WhichCar website. 6. Discussion and Findings A. Identical or Confusingly Similar
When the top-level domain country-code identifier ".au" and the second-level domain identifier ".com" are ignored (as is appropriate in this case), the disputed domain names , , and consist of the Complainant's registered trademarks JAGUAR, LAND ROVER, and RANGE ROVER, respectively, with the addition of the word "which". The distinctive element of each of the disputed domain names is the Complainant's trademark. The word "which" in the disputed domain names acts as an interrogative, asking for selection from a limited number of alternatives. The addition of the word "which" therefore has the effect of focusing the Internet user's attention on the succeeding word, which is the Complainant's trademark. As a consequence, the addition of the word "which" does not lessen the inevitable confusion of each of the disputed domain names with the Complainant's respective trademark. Accordingly, the Panel finds that each of the disputed domain names is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
According to paragraph 4(c)(iii) of the Policy, "making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the name, trademark or service mark at issue", demonstrates that the respondent has rights or legitimate interests in a domain name. The Respondent acknowledges that its use of the disputed domain names and , and its intended use of the disputed domain name , is commercial. Therefore, for the Respondent to succeed in its claim to rights or legitimate interests in the disputed domain names by virtue of its (actual or intended) use of them, that use must be "fair" and it must also not have the effect of misleadingly diverting consumers or tarnishing the Complainant's trademark.
As explained in section 2.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, when considering when a use of a domain name is "fair" for the purposes of the Uniform Domain Name Dispute Resolution Policy ("UDRP"), close consideration is required of both the actual domain name and the actual use to which it has been put. Since the wording of the UDRP and the Policy on this issue is the same, the Panel finds it appropriate in considering the issue under the Policy to adopt the approach adopted by panels considering the issue under the UDRP.
The Complainant asserts that the Respondent is using the Complainant's trademarks in the disputed domain names "to increase traffic to its own commercial web site" and that this "is done in a way which is contrary to the interests of the Complainant and which is misleading". The first part of this assertion is clearly correct – the Respondent is using the Complainant's trademarks in the disputed domain names to increase traffic to its own commercial website. The Panel is willing to assume (without deciding the issue) that the second part of this assertion is also correct – that this use is contrary to the interests of the Complainant. However, that outcome of itself is not sufficient to mean that the Respondent's use is not a fair use. A use of another's trademark is not unfair merely because it is contrary to the interests of the trademark owner. Something more is required. An example of such something more is the third part of the Complainant's assertion – that the Respondent's use of the Complainant's trademarks in the disputed domain names is misleading.
Each of the disputed domain names has been, or is intended to be, used to redirect Internet users to a specific page of the Respondent's WhichCar website, being a page that relates to the vehicle brand referenced in the domain name and provides information about the various models sold under that brand. For such a use, a domain name in the format is not on its face misleading. Although the disputed domain names contain the Complainant's trademarks, those trademarks are being used in the disputed domain names to describe the brand of vehicles in relation to which the Respondent is providing information; they are not being used to indicate that the information comes from the trademark owner (the Complainant). That this is so is confirmed by consideration of the content of the webpage that resolves from the two disputed domain names that are in actual use, and . In addition to providing information about the various vehicle models offered by the Complainant under its LAND ROVER and RANGE ROVER trademarks, that webpage provides reviews comparing the Complainant's vehicles with some vehicles produced by other vehicle manufacturers, and contains some advertising. A visitor to this webpage would more than likely understand that the Complainant's trademarks are merely being used to describe the Complainant's vehicles, not necessarily to suggest that the Complainant is the source of the webpage.
So, is there anything else about the Respondent's use of the Complainant's trademarks in the disputed domain names that could be said to be unfair? As noted above, each of the disputed domain names is (or is intended to be) used to resolve to a webpage that provides information inter alia on the different models sold by the Complainant under those trademarks. There is nothing inherently unfair in providing, independently of a trademark owner, information on different models of product sold under the trademark. This is not the end of the story here, though. The webpage also provides reviews of the Complainant's vehicles, including reviews in which the vehicles are compared with competitors' vehicles. Providing reviews, even ones that are comparative, of a trademark owner's product is not inherently unfair so long as the reviews are accurate and done in good faith. Whether this is fair when the path by which consumers arrive at this information relies on the trademark owner's mark is a more nuanced question. The Complainant has not here asserted that the Respondent's reviews are inaccurate or done in bad faith. The Complainant provided screenshots which show that, at some unspecified point in time, the webpage also contained an advertisement for another manufacturer's vehicle. The Panel is of the view that, in the particular circumstances of this case, the presence of an advertisement for a vehicle of another manufacturer does not make the Respondent's use of the disputed domain names unfair. The primary content of the webpage appears to the Panel to be a bona fide offering of substantive, independent, information about the Complainant's vehicles. The advertising is a minor part of the webpage and, in the Panel's opinion, would have limited impact on visitors to the site. The Respondent is not engaging in a mere "bait and switch" activity. On balance, the Panel concludes that the actual use being made of the disputed domain names, while a commercial use, is a fair use.
The final question is, therefore, whether this fair, albeit commercial, use of the disputed domain names nevertheless has the effect of misleadingly diverting consumers or tarnishing the Complainant's trademarks. The Panel is of the view that the Respondent's use of the disputed domain names does not have this effect. Neither the disputed domain names themselves nor the webpages to which they do (or would) resolve are misleading. The Panel considers that an Internet user seeing a domain name in the form likely would think that any webpage to which it resolves would offer information about the different models sold under that brand to assist in making a choice about "which" of those models is best for them, but not that such information must necessarily come from the brand owner. The webpages to which the disputed domain names do (or would) resolve do provide this information. Thus, the Respondent's (actual and intended) use of the disputed domain names does not misleadingly divert consumers.
Finally, neither the disputed domain names themselves nor the webpages to which they do (or would) resolve tarnish the Complainant's relevant trademark. A domain name in the form is not by itself tarnishing of the brand's trademark – the word preceding the trademark, "which", acts interrogatively, not derogatively. Furthermore, based on the evidence in the case record currently before it, the Panel sees nothing in the actual content of the webpages that has the effect of tarnishing the relevant trademarks.
For all these reasons, the Panel is of the view that the Respondent's actual use of the disputed domain names and , and the Respondent's intended use of the disputed domain name , is such under the Policy that, on balance, the Complainant has not demonstrated that the Respondent has no rights or legitimate interests in each of the disputed domain names. C. Registered or Subsequently Used in Bad Faith
Since the Complainant has failed to establish that the Respondent lacks rights or legitimate interests in the disputed domain names, it is not strictly necessary for the Panel to determine if the disputed domain names were registered or are being used in bad faith. For completeness, however, the Panel expresses the view that there is no evidence in the case record currently before it to indicate that the Respondent registered or is using any of the disputed domain names in bad faith. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Andrew F. Christie
Sole Panelist
Date: December 11, 2017
Full & Egal Universal Law Academy