The Complainant is Jaguar Land Rover Limited of Coventry, United Kingdom of Great Britain and Northern Ireland (the “United Kingdom”), represented by Novagraaf Nederland B.V., the Netherlands.
The Respondent is Range Rover Classic of Nederhorst den Berg, the Netherlands, internally represented. 2. The Domain Name and Registrar
The disputed domain name is registered with SIDN through Byte B.V. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2015. On December 10, 2015, the Center transmitted by email to SIDN a request for registrar verification in connection with the disputed domain name. On December 11, 2015, SIDN 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 Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).
In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 15, 2015. In accordance with the Regulations, article 7.1, the due date for Response was January 4, 2016. On December 31, 2015, the Respondent requested an extension of time to file the Response. The Center extended the due date until January 8, 2016. The Response was filed with the Center on January 6, 2016.
On January 11, 2016, SIDN commenced the mediation process. On February 8, 2016, SIDN informed parties that the dispute had not been solved in the mediation process.
The Center appointed Alfred Meijboom as the panelist in this matter on February 11, 2016. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2. 4. Factual Background
The Complainant is a manufacturer of motor vehicles and the largest automotive manufacturer employer in the United Kingdom. The Complainant is also the owner of a number of trademark registrations, including the following registrations which are valid in the Netherlands:
- Benelux trademark with registration number 48915 for RANGE ROVER, registered on August 12, 1971 for motorized vehicles and parts thereof in class 12;
- Community trademark with registration number 143792 for RANGE ROVER, registered on February 3, 1999 for, inter alia, land vehicles and parts, bags and articles made of leather and imitation leather in classes 12 and 18;
- Community trademark with registration number 4071874 for RANGE ROVER, registered on January 18, 2006 for, inter alia, clothing, carpets and repair and maintenance in classes 25, 27 and 37; and
- Community trademark with registration number 5709522 of February 5, 2008 for, inter alia, financial insurance services, repair and maintenance, leasing rental and higher services for motor vehicles and entertainment services in classes 36, 37, 39 and 41.
The disputed domain name was registered by Respondent on March 17, 2010. 5. Parties’ Contentions A. Complainant
The Complainant first registered its trademark RANGE ROVER as a trademark in the Netherlands on September 29, 1969. The brand has been in use continuously in the Netherlands and other countries worldwide and is very well known. The Complainant advertises both new and used Range Rover vehicles in the Netherlands and other countries of the world for more than forty years. The Complainant has invested heavily over the years in advertising its vehicles in media throughout the European Union. The Complainant and its affiliates have an online presence in 142 countries showing details of RANGE ROVER vehicles. According to the Complainant, the disputed domain name is confusingly similar to the RANGE ROVER trademarks that are mentioned in Section 4 (the “Trademarks”), as the disputed domain name consist of the Trademarks plus the non-distinctive term “classic”, which is not enough to escape a finding of confusing similarity.
The Complainant has neither licensed nor otherwise permitted the Respondent to use and register the disputed domain name, or seek registration of any domain name incorporating the Trademarks. The Respondent is not an official registered Land Rover or Range Rover dealer and has no other apparent rights in the disputed domain name. The Respondent’s website under the disputed domain name shows that it also sells cars of competitors of the Complainant. According to the Complainant it appears that the Respondent uses the disputed domain name in an attempt to pass itself as the Complainant or an official dealer of the Complainant, including by using the Complainant’s copyrighted images of Range Rover cars, and is there for taking advantage of the reputation of the Trademark.
The Respondent registered the disputed domain name in bad faith because, at the time of the registration of the disputed domain name, the Respondent undoubtedly knew or must have know of the existent of the Trademarks as the Respondent’s website under the disputed domain name sells, inter alia, second hand and/or occasion RANGE ROVER cars, with many references to the well-known Trademarks. In absence of the Respondent’s right or legitimate interest in the disputed domain name it is clear that the Respondent registered the disputed domain name with the intention of deriving a commercial benefit and/or to capitalize on the Trademarks. Furthermore, the Respondent’s website under on the disputed domain name is set up as if it was an authorized website of the Complainant, so that Internet users will be confused as to the identity of the registrant of the disputed domain name and the operator of the website to which it resolved. Finally, the Complainant sent the Respondent a cease and desist letter to which the Respondent replied by telephone to offer the transfer of the disputed domain name for EUR 10,000 which is an amount significantly in excess of the costs of registration, which also constitutes the bad faith registration in use. B. Respondent
The Respondent has been trading as “Range Rover Classics” since June 24, 2006, and claims to have registered the disputed domain name on August 8, 2006. The Respondent claims to have a good relationship with the Complainant’s organization in the Netherlands. The disputed domain name resolves to a website which contains a page “RRC History” as a tribute to the Range Rover Classic, which clearly describes the actual history of the Range Rover Classic. Therefore an Internet user could expect to find information about classic Range Rover vehicles on the Respondent’s website under the disputed domain name.
The Respondent denies that the website under the disputed domain name suggests that the Respondent is part of the Complainant or is registered as Land Rover or Range Rover dealer, as the Respondent does not use any of the registered Land Rover logos. Further, the Respondent has removed the car sale items from the website so that basically the only content on the website concerns the “Range Rover Classic”.
The Respondent assured that it did not register and use the disputed domain name in bad faith and is not a competitor of the Complainant. The Respondent tried to resolve the matter amicably as it considers it unreasonable to cease its business operations after nearly ten years of use of the disputed domain name.
Moreover, the Respondent identified a number of domain names which contain the Trademarks, while none of such domain names are owned by the Complainant. In this respect, the Respondent does not understand why the Complainant requires it to stop using the disputed domain name. 6. Discussion and Findings
Based on article 2.1 of the Regulations, a request to transfer a domain name must meet three cumulative conditions:
a. the disputed domain name is identical or confusingly similar to:
I. a trademark, or trade name, protected under Dutch law in which the Complainant has rights; or
II. a personal name registered in the General Municipal Register (“gemeentelijke basisadministratie”) of a municipality in the Netherlands, or the name of a Dutch public legal entity or the name of an association or foundation registered in the Netherlands under which the Complainant undertakes public activities on a permanent basis; and
b. the Respondent has no rights to or legitimate interests in the disputed domain name; and
c. the disputed domain name has been registered or is being used in bad faith. A. Identical or Confusingly Similar
It is established case law that the Top-Llevel Domain “.nl” may be disregarded in assessing the similarity between the Trademarks on the one hand, and the disputed domain names on the other hand (see, e.g., Roompot Recreatie Beheer B.V. v. Edoco LTD,WIPO Case No. DNL2008-0008).
The Panel finds that the disputed domain name is confusingly similar to the Trademarks. The Respondent has taken the Trademarks in their entirety and merely added the descriptive word “classic”. The added word is insufficient to differentiate the disputed domain name and the Trademarks, and actually even add to the confusion between the disputed domain name and the Trademarks as the word “classic” is commonly used by enthusiasts for vintage vehicles.
Consequently, the Panel finds that the Complainant has satisfied the requirement of article 2.1(a) of the Regulations. B. Rights or Legitimate Interests
Article 2.1(b) of the Regulations requires that the Complainant demonstrates that the Respondent has no rights to or legitimate interests in the disputed domain name. This condition is met if the Complainant makes a prima facie case that the Respondent has no such rights or interests, and the Respondent fails to rebut this (see, e.g., Technische Unie B.V. and Otra Information Services v. Technology Services Ltd.,WIPO Case No. DNL2008-0002).
Considering that the Complainant alleged that it never authorized the Respondent to register and use the disputed domain name, while the Respondent actually uses the disputed domain name to resolve to a website on which the Respondent offered second hand cars, including those which compete with the vehicles of the Complainant, for sale, so that the Respondent allegedly lacks rights to or legitimate interests in the disputed domain name. In contrast, the Respondent asserts that it has such rights and legitimate interests as it operates its business under the trade name “Range Rover Classic” since 2006 and has a good working relationship with the Dutch organization of the Complainant. The Respondent further pointed out that it removed the sale of cars from its website under the disputed domain name.
The Panel first wishes to clarify that the fact that the Respondent disabled the sales part of the website under the disputed domain name or, as the Panel discovered when it looked at the website to which the disputed domain name resolves, that the website is offline, is irrelevant for the finding of the Respondent’s rights or legitimate interests in the disputed domain name as the Panel considers the situation at the moment of the filing of the Complaint as a starting point for deciding this case. In this respect, panelists deciding cases under the Regulations consider the criteria of Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 relevant (see, e.g., Seiko EPSON Corporation v. ANEM Computers / ANEM,WIPO Case No. DNL2010-0024; Maison Louis Latour v. Jos Beeres Wijnkoperij,WIPO Case No. DNL2011-0074; Xtralis Technologies Ltd. v. Secusense BV,WIPO Case No. DNL2014-0055; Dr. lng. h.c. F. Porsche AG v. H b.v.,WIPO Case No. DNL2015-0051). Under these criteria, in order for the Respondent’s offerings on its website under the disputed domain name to qualify as bona fide, the following requirements need to be met:
a. the Respondent must actually be offering the good services at issue;
b. the 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;
c. the site must accurately disclose the Respondent’s relationship with the trademark owner; and
d. 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.
When applying these criteria, the homepage of the Respondent’s website under the disputed domain name, as submitted as Annex 4 to the Complaint, shows two brands of second hand vehicles for sale, one of which competes with the Complainant’s vehicles. Also, the Respondent did not seem to have disclosed its relationship with the Complainant. This means that the Panel finds that the website under the disputed domain names does not meet the criteria as set forth above so that the Panel is satisfied that the Complainant made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Panel finds that the Complainant has satisfied the requirement of article 2.1(b) of the Regulations. C. Registered or Used in Bad Faith
The Complainant alleged that the Respondent must have known the Trademarks when it registered the disputed domain name, which allegation has not been challenged by the Respondent. Further, the Respondent used the disputed domain name without rights or legitimate interests as explained above in Section 6.B, which in itself generally constitutes use of the disputed domain name in bad faith. Such use in bad faith is further given by the fact that the Respondent claimed that the Respondent was willing to transfer the disputed domain name for a significant amount, which allegation was also not denied by the Respondent.
Consequently, the Panel is satisfied that it has been sufficiently established that the disputed domain name was registered and used in bad faith and that the requirement of article 2.1(c) of the Regulations has also been met. 7. Decision
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the disputed domain name be transferred to the Complainant.
Alfred Meijboom
Panelist
Date: February 24, 2016
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