WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rolls-Royce PLC v. Ragnar Kallaste
Case No. D2014-2218
1. The Parties
The Complainant is Rolls-Royce PLC of London, United Kingdom of Great Britain and Northern Ireland, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Ragnar Kallaste of Münster, Germany.
2. The Domain Names and Registrar
The disputed domain names <rolls-royce.trade> and <rollsroyce.trade> (“the Disputed Domain Names”) are registered with Key-Systems GmbH dba domaindiscount24.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2014. On December 19, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On December 22, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact information.
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”).
By email of January 6, 2015, the Center notified the Complainant that the language of the registration agreement relating to the Disputed Domain Names was German and requested the Complainant (given that the Complaint was filed in English) to provide satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or to submit the Complaint translated into German; or to submit a request for English to be the language of the administrative proceedings. On January 7, 2015, the Complainant answered to the Center by referring to the arguments that it had made about the language of the proceedings in the Complaint in which it had stated that English shall be the language of the administrative proceedings because the Parties had exchanges in English before the initiation of the proceedings. The Respondent did not react to the submission of the Complainant. The issue of the language of proceedings will be analyzed below (under 4).
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 January 12, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 1, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 2, 2015.
The Center appointed Jacques de Werra as the sole panelist in this matter on February 17, 2015. 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 global company operating two technology platforms (gas turbines and reciprocating engines) with customers in more than 120 countries, comprising more than 380 airlines and leasing customers, 160 armed forces, 4,000 marine customers, including 70 navies, and 1,600 energy and nuclear customers. The Complainant has 55,000 employees in 45 countries with revenue for 2013 of GBP 15,5 billion.
The Complainant is the owner of numerous trademark registrations for the ROLLS ROYCE trademark (the “Trademark”) around the world.
The Complainant has registered and uses numerous domain names reflecting the Trademark for its business activities (including <rolls-royce.com>).
The Disputed Domain Names were registered on June 11, 2014. They are used as parking pages which contain links to other websites (sponsored ads), whereby the Respondent has listed them for sale.
The Complainant sent a cease and desist letter to the Respondent regarding the Disputed Domain Names on June 19, 2014. By then, the Complainant had already been in contact with the Respondent concerning other domain name registrations which conflicted with the rights of other trademark owners. The Complainant advised the Respondent that the unauthorized use of the Trademark in the Disputed Domain Names violated the Complainant’s rights in the Trademark. The Complainant requested a voluntary transfer of the Disputed Domain Names and offered compensation for the expenses of registration and transfer fees (not exceeding out-of-pocket expenses). The Respondent replied on June 24, 2014 and wrote “I paid 25 EUR per domain plus fee. I will get the invoice next week, then I can tell you the exact sum”. The Complainant sent reminders to the Respondent on July 1, 14, 31 and August 18, 2014 but never heard back from the Respondent, which is why the proceeding was initiated.
5. Parties’ Contentions
The Complainant claims first that it is the owner of a well-known Trademark and that the Disputed Domain Names which reproduce the entirety of the Trademark without the addition of any prefix or suffix, only the removal of a hyphen, are confusingly similar to the Trademark.
The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because the Respondent has not demonstrated or established rights or a legitimate interest in respect of the Disputed Domain Names. The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the Disputed Domain Names. No license or authorization of any other kind, has been given by the Complainant to the Respondent to use the Trademark. The Respondent is today not using the Disputed Domain Names in connection with a bona fide offering of goods or services. Instead, the Respondent has intentionally chosen domain names based on the Trademark in order to generate traffic and income through websites with sponsored links, leading to third-party websites that are unrelated to the Complainant.
The Respondent registered and is using the Disputed Domain Names in bad faith because the considerable value and goodwill of the Trademark is most likely what made the Respondent register the Disputed Domain Names. The sole purpose of the inclusion of the Complainant’s Trademark in the Disputed Domain Names was to attract Internet users in order to generate revenue, whether for third parties, for the Respondent or both parties involved, and such conduct establishes that the Respondent is acting in bad faith further to paragraph 4(b)(iv) of the Policy. The Respondent has also been found to have registered many other domain names incorporating well-known trademarks of third parties (e.g. <adidas.trade>, <astonmartin.trade>, <burberry.trade>, <cadillac.trade>, <bugatti.trade>). On this basis, the Complainant asserts that the Respondent is clearly showing a pattern of conduct which is expressly forbidden by paragraph 4(b)(ii) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Language of proceedings
The Registrar confirmed that the language of the Registration Agreement for the Disputed Domain Names is German.
Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The Complainant initially filed its Complaint in English.
On January 6, 2015, the Center issued a notice to the Complainant about the language of the proceedings. The Complainant referred to the request that it had already made in the Complaint according to which English shall be the language of the proceeding because of pre-Complaint exchanges between the Parties which took place in that language, to which the Respondent did not reply.
Paragraph 11(a) of the Rules provides:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
On the basis of this provision, the Panel has discretion to decide that the language of the proceeding can be different from the language of the registration agreement, having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both Parties, taking into consideration matters such as command of the language, time, and costs. It is important that the language finally chosen by the Panel for the proceeding is not prejudicial to the Parties in their ability to articulate the arguments for the case. See International Data Group, Inc. v. Lingjun, WIPO Case No. D2004-0398.
In this case, in view of the previous exchanges between the Parties which took place in English, the Panel notes that the Respondent is able to communicate in English. The Panel also notes that the Respondent has not participated in the proceeding and has not made the claim that the language of the proceeding should be German. On this basis, the Panel decides that the language of the proceeding shall be English.
6.2. Substantive Elements of the Policy
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has rights in the Trademark.
A comparison between the Disputed Domain Names and the Trademark owned by the Complainant shows that the Disputed Domain Names are identical or at least confusingly similar to it to the extent that they reproduce the entirety of the Trademark, whereby, with respect to the second of the Disputed Domain Names (i.e. <rollsroyce.trade>), the mere removal of the hyphen between the two words composing the Trademark cannot affect the finding of confusing similarity between such domain name and the Trademark. See also Rolls-Royce Motor Cars Limited v. Lazarus Essulat, WIPO Case No. D2005-1161.
As a result, based on the rights of the Complainant in the Trademark and on the confusing similarity between the Trademark and the Disputed Domain Names, the Panel finds that paragraph 4(a)(i) of the Policy is met.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the Disputed Domain Names by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Names or a name corresponding to the Disputed Domain Names in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Names, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Names, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, previous UDRP panels have consistently ruled that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests, and once such prima facie case is made the burden of production shifts to the respondent to come forward with evidence of rights or legitimate interests in the domain name. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
In the Panel’s opinion, the Complainant has made a prima facie case against the Respondent. The Respondent indeed registered the Disputed Domain Names, which fully integrate the most distinctive Trademark owned by the Complainant, in a way which can only be explained by reference to the Complainant’s products and business activities. The Panel also finds that the websites associated with the Disputed Domain Names constitute portals pointing to various websites.
The Complainant has also stated without being contradicted that the Respondent has no rights or legitimate interests in the Disputed Domain Names, that the Respondent has not been commonly known as operating under the Trademark or done business under that name and that the Respondent’s use of the Disputed Domain Names is not in connection with a bona fide attempt to offer goods and services. The Panel also notes that the Trademark must be considered to be a well-known and well established trademark around the world, including in Germany where the Respondent is based. See Rolls-Royce plc v. Internet Billions Domains, Inc., WIPO Case No. D2003-0270; Rolls-Royce PLC v. Hallofpain, WIPO Case No. D2000-1709.
The Panel thus accepts the Complainant’s prima facie showing and it was consequently up to the Respondent to come forward with evidence of rights to or legitimate interests in the Disputed Domain Names, which has not been done given the Respondent’s default in this proceeding.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Names and that paragraph 4(a)(ii) of the Policy is met.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of the complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name;
(ii) circumstances indicating that the respondent registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;
(iii) circumstances indicating that the respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the disputed domain name in an attempt to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
In this case, the Panel holds that the Respondent registered the Disputed Domain Names in bad faith because the Trademark distinctively identifies the Complainant and the Complainant’s products so that the choice of the Disputed Domain Names cannot be reasonably explained otherwise than as a reference to the Trademark owned by the Complainant.
From the records of the file, it appears that the Respondent is using the Disputed Domain Names for web portals providing sponsored links to websites referring to various products. It can thus be considered that the Respondent has set up this system in the expectation of some financial gain through a pay-per-click or click-through system.
Therefore, the circumstances of this case lead the Panel to hold that the Respondent was obviously aware of the Complainant’s Trademark and thus registered the Disputed Domain Names and uses them in bad faith, in order to attract Internet users by creating a likelihood of confusion with the Complainant's Trademark for the Respondent’s commercial gain.
In addition, the record shows that the Respondent has engaged in a pattern of registering domain names that correspond to well-known marks (whereby the Panel notes that several of these domain names correspond to well-known trademarks in the car industry, e.g. <astonmartin.trade>, <cadillac.trade>, <bugatti.trade>), whereby such a pattern of conduct is expressly forbidden by paragraph 4(b)(ii) of the Policy. The Panel also notes that the Respondent was a respondent in at least one other UDRP proceeding relating to the registration of a domain name corresponding to another well-known trademark, see Inter IKEA Systems B.V. v. Ragnar Kallaste, WIPO Case No. D2014-1796.
On this basis, the Panel finds that the Respondent registered and uses the Disputed Domain Names in bad faith pursuant to paragraph 4(b) of the Policy, so that the conditions of paragraph 4(a)(iii) of the Policy are met.
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 Names <rolls-royce.trade> and <rollsroyce.trade> be transferred to the Complainant.
Jacques de Werra
Date: March 3, 2015