WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aston Martin Lagonda Limited, Aston Martin Brussels N.V. v. Kharim Khan
Case No. D2012-0611
1. The Parties
The Complainants are Aston Martin Lagonda Limited of Warwick, United Kingdom of Great Britain and Northern Ireland and Aston Martin Brussels N.V. of Sint-Stevens-Woluwe, Belgium, represented by Crowell & Moring, LLP, Belgium.
The Respondent is Kharim Khan of Islamabad, Pakistan.
2. The Domain Name and Registrar
The disputed domain name <astonmartinbrussels.com> is registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2012. On March 23, 2012, the Center transmitted by email to GoDaddy.com, LLC. a request for registrar verification in connection with the disputed domain name. On the same date, GoDaddy.com, LLC. 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 Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform 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 March 28, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 17, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 18, 2012.
The Center appointed Philippe Gilliéron as the sole panelist in this matter on April 24, 2012. 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 Aston Martin Lagonda Limited is a British designer and manufacturer of luxury sports cars. It owns numerous word trademarks consisting of the terms ASTON MARTIN, such as:
- US Trademark n° 72242777 that was registered on December 12, 1967 under class 12 of the Nice Classification, with a priority date as of February 11, 1966;
- US Trademark n° 73779994 that was registered on November 27, 1990 under class 37 of the Nice Classification, with a priority date as of February 10, 1989;
- US Trademark n° 77766955 that was registered on September 13, 2011 under classes 3, 6, 7, 8, 9, 11, 12, 14, 16, 18, 20, 21, 24, 25, 26, 27, 28, 29, 30, 32, 33, 34, 35, 36, 37, 39, 41 and 43 of the Nice Classification, with a priority date as of June 24, 2009;
- CTM n° 008367815 that was registered on March 16, 2010 under classes 3, 6, 7, 8, 9, 11, 12, 14, 16, 18, 20, 21, 24, 25, 26, 27, 28, 29, 30, 32, 33, 34, 35, 36, 37, 39, 41 and 43 of the Nice Classification, with a priority date as of June 16, 2009.
The Complainants’ cars sold under the ASTON MARTIN trademarks have been featured in numerous James Bond blockbuster movies such as “Goldfinger”, “On her Majesty’s secret service”, “Casino Royale” and “Quantum of Solace”.
The ASTON MARTIN cars are distributed by over 130 exclusive dealers in 28 countries, among which the second Complainant, Aston Martin Brussels N.V.
The Complainants carry out their activities online under several domain name such as <www.astonmartin.com>, <www.astonmartin.co.uk> and <astonmartin.net>. Aston Martin Brussels N.V. in particular holds the domain name <www.astonmartin-belgium.com>.
The Respondent registered the disputed domain name <astonmartinbrussels.com> on January 7, 2010. The disputed domain name is not actively used but merely displays a blank web page.
On March 2, 2012, Complainant Aston Martin Lagonda Limited sent a cease and desist letter to the Respondent, drawing his attention upon its exclusive rights upon the ASTON MARTIN trademarks and inviting the Respondent to transfer the disputed domain name in its favor by March 9, 2012.
The Respondent did not respond.
5. Parties’ Contentions
Complainants first assert to have numerous trademarks consisting of the terms ASTON MARTIN which have been used since 1913. The disputed domain name, which entirely incorporates these terms but for the addition of a mere geographical indication, i.e. a generic element, is confusingly similar to its trademarks.
Complainants then contends that the Respondent has no rights or legitimate interests in the disputed domain name. It is not commonly known by the disputed domain name, he has not acquired any trademark or service mark in the words ASTON MARTIN. Absent any license granted by any of the Complainants, Respondent cannot claim any legitimate use of the disputed domain name, which merely leads to a blank page. This would all the more be true than the Respondent is domiciled in Islamabad, i.e. almost 8,000 kilometers away from Brussels.
Complainants finally affirm that the disputed domain name has been registered and is being used in bad faith. As to the registration, Complainants argue that, considering the well-known character of its trademarks, Respondent must have been aware of the ASTON MARTIN trademarks. With regards to the use, Complainants point out that the mere passive holding of a domain name as the disputed one can amount to bad faith. Such a bad faith would also result from the fact that the ASTON MARTIN trademarks are well-known.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “[…] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant Aston Martin Lagonda Limited proves to be the holder of several verbal trademarks over the world consisting of the words ASTON MARTIN. Such however is not the case of the second Complainant Aston Martin Brussels N.V. Considering that Aston Martin Lagonda Limited has however expressly requested as legitimate trademark holder to have the disputed domain name transfer in favor of Aston Martin Brussels N.V. should it prevail, the Panel sees no reason to reject such a request should he consider the Complaint to be well-grounded.
There is no doubt in the Panel’s opinion that the ASTON MARTIN mark enjoys a wide reputation and can be considered a well-known trademark under Art. 16.3 of the TRIPS Agreement, respectively Art. 6bis of the Paris Convention.
UDRP panels widely agree that incorporating a trademark into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark for purpose of the Policy (see, e.g., Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358; and F. Hoffmann-La Roche AG v. Relish Entreprises, WIPO Case No. D2007-1629).
This is all the more true when the inserted trademark, a well-known one, consists of the dominant part of the disputed domain name, and that the added elements are merely descriptive.
Such happens to be the case here. The addition of a geographical term such as “brussels” is merely descriptive and does not exclude the likelihood of confusion (see, among others: Playboy Entreprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768; Inter-IKEA Systems B.V. v. Evezon Co. Ltd, WIPO Case No. D2000-0437; Dell Computer Corporation v. MTO C.A. and Diabetes Education Long Life, WIPO Case No. D2002-0363). To the contrary, it rather strengthens the likelihood of confusion by making Internet users mistakenly believe that the website might be the Complainant’s official website in Belgium.
As a result, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied.
B. Rights or Legitimate Interests
According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
As the panel stated in Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, demonstrating that the respondent has no rights or legitimate interests in the domain name “would require complainant to prove a negative, a difficult, if not impossible, task”. Thus, in that decision, the panel opined that “[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion”. Following that decision, subsequent panels developed a consensual view that it is deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, it is the respondent’s burden to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied to paragraph 4(a)(ii) of the Policy (see, e.g., paragraph 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).
In the present case, the Complainant Aston Martin Lagonda Limited is the owner of numerous ASTON MARTIN trademarks. The Complainants have no business or other relationships with the Respondent.
The Complainants thus have made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name.
On its side, the Respondent has not answered to the Complaint.
Considering the absence of a Response and the fact that the Respondent is neither commonly known by the disputed domain name, nor has made a legitimate noncommercial or fair use of the disputed domain name, the Panel finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.
Consequently, in light of the above, the Panel considers paragraph 4(a)(ii) of the Policy to be fulfilled.
C. Registered and Used in Bad Faith
For a complaint to succeed, a panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
Bad faith requires the respondent to be aware of the complainant’s trademarks. In the present case, the Complainant Aston Martin Lagonda Limited is the owner of numerous ASTON MARTIN trademarks, which enjoy a worldwide reputation and amount to well-known trademarks as pointed out above.
Considering the worldwide reputation of the ASTON MARTIN mark, the Panel finds it hard to believe that the Respondent would have chosen and registered the disputed domain name <astomartinbrussels.com> in good faith, without having been aware of the ASTON MARTIN trademarks. The Respondent, having neglected to participate in these proceedings, did not bring any evidence to support such a choice; such evidence does not result from the file, and the Respondent has to bear the consequences of its default on that regard.
There is no doubt in the Panel’s opinion that the Respondent was very well aware of the Complainant’s trademarks. In this Panel’s view, it is indeed inconceivable that an individual domiciled in Islamabad would choose for some legitimate purposes a domain name such as the disputed done.
Consequently, the Panel is of the opinion that the disputed domain name <astonmartinbrussels.com> has been registered and is being used in bad faith under the paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <astonmartinbrussels.com> be transferred to the Complainant Aston Martin Brussels N.V.
Dated: May 3, 2012