WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Ford Motor Company and Land Rover Ltd. v. Kevin Knuhtsen

Case No. DBIZ2002-00183

 

1. The Parties

The Complainants are Ford Motor Company, a corporation with a principal place of business at Suite 600, Parklane Towers East, One Parklane Boulevard, Dearborn, Michigan, 48126-2490, United States of America, and its wholly-owned subsidiary, Land Rover Ltd., a UK Limited Liability Company, with its principal place of business located at 4390 Parliament Road, Lanham, Maryland 20706, United States of America (collectively, "Complainant"). Complainant is represented in this proceeding by Gregory D. Phillips and Cody W. Zumwalt, Howard, Phillips & Andersen, 560 East 200 South, Suite 300, Salt Lake City, Utah 84013, United States of America.

The Respondent in this proceeding is Kevin Knuhtsen, an individual whose address is 1825 Sierra Oaks Lane, Las Vegas, Nevada 89134, United States of America.

 

2. The Domain Name and Registrar

The domain name in dispute is <landrover.biz>.

The registrar for the disputed domain name is Namescout.com, White Park House, White Park Road, Bridgetown, Barbados.

 

3. Procedural History

The resolution of this Complaint shall be governed by the guidelines found in the Start-up Trademark Opposition Policy for .BIZ (STOP) adopted by NeuLevel, Inc. and approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on May 11, 2001, the Rules for Start-up Trademark Opposition Policy for .BIZ adopted by NeuLevel, Inc. (the STOP Rules), and the WIPO Arbitration and Mediation Centerís Supplemental Rules for Start-up Trademark Opposition Policy for .BIZ (the Center, the Supplemental STOP Rules).

The Complaint was filed on May 2, 2002, in hard copy and on May 8, 2002, by e-mail. On May 23, 2002, the Center forwarded a copy of the Complaint to Respondent by registered mail and by e-mail and this proceeding officially began. On June 11, 2002, after not receiving a response from Respondent, the Center sent Respondent a Notification of Respondent Default by e-mail.

The Administrative Panel submitted a Declaration of Impartiality and Independence on June 27, 2002, and the Center proceeded to appoint the Panel on July 1, 2002. The Panel finds the Center has adhered to STOP, the STOP Rules and the Supplemental STOP Rules in administering this Case.

The due date of this Decision is July 15, 2002.

 

4. Factual Background

Having manufactured and sold automobiles for nearly a century, Complainant currently sells automobiles and related products on an international basis. Complainantís brand name "Land Rover" is known throughout the world. Among the largest corporations in the world, Complainant has spent a substantial amount of money in advertising and promoting its products.

Complainant owns three registered United States trademarks in "Land Rover" as well as numerous trademarks in the same name in other countries (collectively referred to hereinafter as the "Complainant Trademark").

Respondent is listed as the Registrant of the disputed domain name. The record of registration was created on March 27, 2002.

 

5. The Partiesí Contentions (Summarized)

Complainantís Contentions

-- Complainant has used the "Land Rover" mark in the business of producing and selling automobile products for a long time. The Complainant Trademark is well known worldwide and has taken on a secondary meaning with respect to automobiles and related products affixed with that mark.

-- Complainant owns three registered United States trademarks for "Land Rover", and registered trade or service marks for "Land Rover" in many other countries. The distinctiveness of Complainantís "Land Rover" mark is demonstrated by the fact that no other person or entity, including Respondent, either filed an IP Claim or has a U.S. Trademark registration for the mark.

-- Respondentís domain name is identical or confusingly similar to the Complainant Trademark and to Complainant's registered domain name. The Complainant Trademark was registered before Respondent registered the disputed domain name.

-- Respondent has no rights or legitimate interests in the disputed domain name. The Complainant Trademark is so world famous that Respondent could not acquire any rights to use it.

-- Respondent registered the <landrover.biz> domain name in bad faith. Respondent chose the domain name, <landrover.biz>, with full knowledge of Complainantís rights. Respondent had notice and actual knowledge of the Complainant Trademark and its use on automobiles and related products.

Respondentís Contentions

-- Respondent did not file a response.

Due Process

-- Since the Center forwarded a copy of this Complaint to Respondent by hard copy and e-mail and sent Respondent a Notification of Respondent Default by e-mail, the Panel is convinced that Respondent is aware of these proceedings and that due process has been satisfied.

 

6. Discussion and Findings

In order for Complainant to prevail and have the disputed domain name <landrover.biz> transferred to it, Complainant must prove the following (STOP, para 4(a)(i-iii):

-- the domain name is identical to a trademark or service mark in which the Complainant has rights; and

-- the Respondent has no rights or legitimate interests in respect of the domain name; and

-- the domain name was registered or is being used in bad faith.

Identical

The Panel finds that Complainant owns two registrations of the trademark "Land Rover" in the United States (U.S. Registration No. 0541722, dated May 1, 1951, for motor vehicles, and No. 2092438, dated September 2, 1997, for motor vehicle insurance and financial services (see Annex 2 to the Complaint). The Complainant also owns similar trademarks in many other countries.

Complainant's rights in those trademarks arose significantly prior to Respondent's registration of the disputed domain name. The disputed domain name <landrover.biz> contains the full Complainant Trademark minus the space between the words and with the addition of the gTLD ".biz". Panels in other cases decided under STOP have disregarded the elimination of spaces between words and impermissible domain name characters (e.g., hyphens and apostrophes) in the determination of identity between a trademark and a domain name (see Commercial Investors Realty v. Bank of New York, Nat. Arb. Forum FA 103040 (February 18, 2002). Furthermore, the inclusion of the gTLD ".biz" is without legal significance because all proceedings under STOP are predicated on a dispute over a domain name containing that gTLD.

In accordance with the STOP at para 4(a)(i), the Panel finds that the disputed domain name is identical to a trademark or service mark in which the Complainant has rights.

No Rights or Legitimate Interests

Respondent has not shown to the Panel that Respondent received a license, permission or consent from Complainant to use the Complainant Trademark. Also, there is nothing in the record to suggest that Respondent has shown that he is commonly known by the disputed domain name (STOP at 4(c)(iii)) or that he is the owner of a trade or service mark identical to the disputed domain name (STOP at 4(c)(i)).

Respondent has failed to provide evidence to the Panel that Respondent has made use of the disputed domain name or that Respondent has demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods and services (STOP, para 4(c)(ii)).

In accordance with the foregoing, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Bad Faith

Although Complainant presents no tangible evidence to the Panel that Respondent has engaged in the bad faith registration of the disputed domain name based on the criteria cited in STOP para 4(b)(i-iv), those criteria were not planned to be exhaustive of the conditions that give rise to bad faith.

Complainant contends that the international recognition of Complainant Trademark is so great that Respondentís mere registration of the domain name without authorization is indicative of bad faith. Previous panels under STOP and the Uniform Policy for Domain Name Dispute Resolution (the "Policy") have been willing to grant this status to a select group of internationally famous marks. (for example the mark "Lancia" in Fiat Auto S.p.A. v. Search Hound, Case No. DBIZ2001-00023 (February 11, 20002); the mark "Yahoo" in Yahoo! Inc. v. M & A Enterprises, WIPO Case No. D2000-0748 (October 23, 2000); and the mark "Chanel" in Chanel, Inc. v. BuyBeauty.com, WIPO Case No. D2000-1126 (November 22, 2000). The panel in Chanel reasoned that "Chanel is an immediately recognized and famous mark that exclusively identifies ComplainantÖGiven that Respondent has no connection with Complainant and has never been authorized by Complainant to use the Chanel mark, the very fact that Respondent has registered buychanel.com establishes bad faith use and registration."

The Panel finds that the same reasoning should apply in this instance. Complainant has been using the Complainant Trademark for many years, and the Panel concludes that it possesses worldwide fame and identification with a particular make of automobile. Respondent's failure to file a response to the Complaint only adds weight to the Panel's conclusion that Respondent registered the disputed domain name in bad faith.

Aware that the above ground for finding bad faith in registration is not explicitly enumerated in STOP, the Panel relies on paragraph 15(a) of the STOP Rules for the latitude to find other grounds for bad faith if appropriate. As can be seen in the few cases the Panel has cited among the numerous cases in which panels have found bad faith for similar reasons, strong support exists in prior panel decisions under the Policy and STOP for the Panelís bad faith findings here.

The Panel thus finds that the disputed domain name was registered in bad faith.

 

7. Decision

The Panel finds the disputed domain name, <landrover.biz>, is identical to Complainantís "Land Rover" trade and service marks. The Panel also finds the Respondent has no rights or legitimate interests in the disputed domain name. Finally, the Panel finds Respondent registered the disputed domain name in bad faith because the Complainant Trademark is in a select class of internationally strong marks that make it virtually certain Respondent knew that his domain name registration infringed Complainantís mark.

In accordance with Paragraph 4(i) of STOP and Paragraph 15 of the STOP Rules, the Panel orders that the disputed domain name, <landrover.biz>, be transferred from Respondent to Complainant.

 


 

Dennis A. Foster
Sole Panelist

Dated: July 15, 2002