WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Jaguar Land Rover Limited v. Dafydd Morgan / Packaging Plus

Case No. D2013-1727

1. The Parties

Complainant is Jaguar Land Rover Limited of Coventry, United Kingdom of Great Britain and Northern Ireland, represented by Taylor Wessing, of the United Kingdom.

Respondent is Dafydd Morgan / Packaging Plus of Aberystwyth, Ceredigion, United Kingdom of Great Britain and Northern Ireland (the United Kingdom).

2. The Domain Names and Registrars

The disputed domain names <land-rover-evoque.com>, <new-defender.com>, <new-landrover.com>, <new-landrover-defender.com>, <newlandrover-defender.com> and <rangerover.tel> (the “Domain Names”) are registered with Webfusion Ltd trading as 123-reg and 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 October 7, 2013. On October 7, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On October 9, 14 and 18, 2013, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on October 18, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 7, 2013.

Email communications were received by the Center from Respondent on October 31, 2013, November 3, 2013 and November 21, 2013. These communications did not comply with the Rules and for the reasons set out below were not considered by the Panel.

The Center appointed Clive L. Elliott as the sole panelist in this matter on November 19, 2013. 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

According to the WhoIs record, the Domain Names were registered as follows:

1. Registrar : Webfusion Limited:

a) <land-rover-evoque.com> September 5, 2011;

b) <new-defender.com> April 25, 2012;

c) <new-landrover.com> April 25, 2012;

d) <new-landrover-defender.com> April 25, 2012;

e) <newlandrover-defender.com> April 25, 2012; and

2. Registrar : Key-Systems GmbH:

a) <rangerover.tel> April 17, 2013

5. Parties’ Contentions

A. Complainant

Complainant states that it is a registered company operating as a manufacturer of premium saloon and sports cars and sports utility vehicles, based in the Midlands region of the United Kingdom. Complainant asserts that it employs over 20,000 people in the United Kingdom and claims it is the top automotive manufacturing employer in the United Kingdom.

Complainant asserts that at present it produces six vehicle models under the Land Rover and Range Rover brands, as shown below in order of the date of launch:

(a) Land Rover Defender;

(b) Range Rover;

(d) Land Rover Freelander;

(e) Range Rover Sport; and

(f) Range Rover Evoque

Complainant advises that in the course of its activities, it has built up extensive Intellectual Property rights, including a large portfolio of trade mark registrations and common law rights, and it owns the following trade mark registrations, amongst others:

- LAND ROVER - registered in the United Kingdom in 1947 and in use since 1948;

- DEFENDER - registered in the United Kingdom in 1992 and first used in 1990; and

- EVOQUE – Community Trademark registered in 2010 and first used in the United Kingdom in 2011.

Complainant contends that its trade marks LAND ROVER, DEFENDER, LAND ROVER DEFENDER and EVOQUE, (together “Complainant’s Trade Marks”) have acquired extensive goodwill and a substantial reputation throughout the United Kingdom, the European Union and the rest of the world and, as a result, claims that they are very well-known marks.

Complainant contends that it has invested heavily over the years in advertising its cars in the media (including magazines, newspapers and on the television) in the United Kingdom and throughout the European Union. By way of example Complainant asserts that the total advertising spend by Complainant for the Range Rover Evoque in the United Kingdom over an 18 month period since its launch in September 2011 was in excess of GBP 4 million. Complainant’s distributors, dealers and licensees also spend substantial sums on advertising in addition to that which Complainant spends.

Complainant asserts that Land Rover vehicles have consistently won awards from the United Kingdom motor industry and several recent awards won by the Defender and Evoque models were attached to the Complaint to support this assertion.

Complainant states that it participates in and attends numerous European motor shows, with its Land Rover and Range Rover vehicles, on an annual basis including the Paris International Motor Show in France, the Geneva Motor Show in Switzerland, the Frankfurt International Motor Show in Germany, the London Motor Show and the Birmingham Motor Show in the United Kingdom.

Complainant claims that it has an online presence in 142 countries showing details of its Land Rover and Range Rover vehicles, including country specific websites for customers in the United Kingdom. Complainant points out that from January 2011 to January 2013, there were in excess of 6.8 million visitors to its United Kingdom website.

Complainant states that it owns a number of other domain names relevant to each of Complainant’s Trade Marks, including <land-rover.com>, <land-rover.co.uk>, <landrover.com>, <landrover.co.uk>, <landroverevoque.com> and <landroverdefender.com>.

Complainant submits that Complainant’s Trade Marks are associated only with it by members of the public and believes that the public has long recognised Complainant’s Trade Marks as identifying and distinguishing products and services of it and its authorised representatives.

It contends that the dominant and distinctive element in the case of each of the Domain Names is one or more of Complainant’s Trade Marks. The remainder of each Domain Name is the domain suffix “.com” or “.tel” which is descriptive. Complainant asserts that the Domain Names are therefore identical or closely similar to names and marks in which Complainant has rights.

Complainant suggests that there is no evidence that Respondent has made use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services. Neither has Respondent, and has never been, known by any of the Domain Names. The words in the Domain Names are associated exclusively with Complainant. Respondent has not acquired any trade mark or service mark rights in the Domain Names or any of them.

Complainant alleges that Respondent is not making legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain misleadingly to divert consumers or to tarnish the trade mark or service mark at issue and therefore Respondent lacks rights or legitimate interests in the Domain Names. Complainant further alleges that Respondent has registered the Domain Names primarily for the purpose of selling, renting, or otherwise transferring them to it or to one of its competitors, for valuable consideration.

Complainant contends that on April 4, 2013, after it became aware that the domain name <land-roverevoque.co.uk> was registered to Respondent, it wrote to Respondent seeking the immediate transfer of this domain name to Complainant. Then on April 30, 2013 it also became aware that <new-landrover.co.uk>, <newdefender.co.uk> and <new-landerover-defender.co.uk> were being advertised for sale for GBP 45,000 each by a seller account on ebay known as Love-From-Me. Complainant says that it challenged this listing through ebay’s VeRO process and as a result the listing was taken down.

On May 15, 2013, Respondent sent an email to Complainant objecting to the VeRO action. Complainant advises that it then became apparent that Respondent was the proprietor of the ebay Love-From-Me account. As Complainant had not received a response to its letter of April 4, 2013, it wrote a follow up letter on May 28, 2013 repeating its demand that the domain name <land-rover-evoque.co.uk> be transferred to it. Respondent then sent an email to Complainant on June 3, 2013, addressing both Complainant’s action through the ebay VeRO process and its letters of April 4, 2013 and May 28, 2013. It was at this stage that Complainant became aware that Respondent was also the registrant of the Domain Names.

Complainant advises that it responded to Respondent’s email on June 20, 2013 disputing his entitlement to register or retain the Domain Names and that Respondent then responded on June 20, 2013, repeating his offer to sell the Domain Names to Complainant for “a reasonable price” and stating that this “would of course remove the risk to either of us for expensive legal action”.

Complainant further advises that on June 21, 2013 it received from Respondent an email sent “without prejudice save as to costs”, containing an offer to sell the Domain Names to it for GBP 6,000 each. In that email, Respondent also informed Complainant that “interest has been expressed for the domains that I have registered from a range of parties including garages and enthusiasts for a number of these domains”. Complainant says that it did not respond to that email and has not received any further contact from Respondent since then.

Complainant submits that Respondent has, by using the Domain Names, intentionally attempted to attract, for commercial gain, Internet users to his web site 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 its web site or location or of a product or service on the web site or location. Complainant asserts that members of the public will be confused as to the identity of the proprietor of the Domain Names because the Domain Names consist of Complainant’s distinctive trademarks. Complainant’s Trade Marks are the only dominant elements in the Domain Names and Complainant further asserts that in the case of some of the Domain Names, Respondent has appended Complainant’s marks to the descriptive word “new”.

Complainant states that, in addition to the Domain Names subject of this Complaint, Respondent has also registered or acquired several similar domain names, for example <new-landrover.co.uk>, <land-rover-evoque.co.uk>, <landrover-evoque.co.uk> <evoque-finance.co.uk>, <new-defender.co.uk>, <new-landrover-defender.co.uk> and <newlandrover-defender.co.uk>. Complainant says that it filed a complaint with Nominet in relation to the recovery of these domain names on August 6, 2013 and on October 4, 2013 the Nominee Independent Expert found that Respondent had taken unfair advantage of Complainant’s rights and ruled that the domain names be transferred to Complainant.

B. Respondent

There was no formal response received from Respondent, although Respondent did send several emails to the Center. These emails do not comply with the Policy or Rules and represent a bitter and sustained polemic, the basis or relevance of which is unclear. The Panel declines to admit or take into account these emails.

6. Discussion and Findings

The Panel has no difficulty in concluding that Complainant is the owner of the trade marks LAND ROVER, RANGE ROVER, DEFENDER, and EVOQUE (including the trade mark RANGE ROVER, hereinafter collectively referred to as “Complainant’s Trade Marks”).

Complainant contends that it has acquired extensive goodwill and reputation in Complainant’s Trade Marks.

There is merit in Complainant’s submission that Respondent’s use of the dominant and distinctive element in the case of each of the Domain Names is one or more of Complainant's Trade Marks. There is also merit in the argument that quite apart from the descriptive domain suffixes and the addition of the descriptive word “new” the Domain Names are identical or closely similar to names and marks in which Complainant has rights.

It is clear that the Domain Names include various trade marks owned by Complainant and that Complainant’s Trade Marks are each identifiable within the Domain Names. Respondent has had the opportunity but has failed to file a complying response and to properly explain, in accordance with the Policy and Rules, why it registered a range of domain names comprising or containing such well-known trade marks belonging to another entity. As a result, the Panel finds that the Domain Names are at least confusingly similar to Complainant’s Trade Marks.

It is therefore found that Complainant has rights in Complainant’s Trade Marks, that the trade marks comprising the Complainant’s Trade Marks each contain a dominant and confusing part of the Domain Names, and that the requirements of paragraph 4(a)(i) of the Policy are met.

A. Rights or Legitimate Interests

Respondent is not affiliated with Complainant and has not been authorized by Complainant to use and register its trade marks or to seek the registration of any domain name incorporating Complainant’s Trade Marks.

The registration and use by Complainant of Complainant’s Trade Marks preceded the registration of the Domain Names. The Domain Names make an obvious and direct reference to Complainant’s Trade Marks, both individually and cumulatively and motor vehicles manufactured by it.

Complainant alleges that Respondent is not making legitimate noncommercial or fair use of the Domain Names, but instead has registered them primarily for the purpose of selling, renting, or otherwise transferring them to Complainant or to one of its competitors, for valuable consideration in excess of their face value. Complainant alleges that there is a connection between an entity or individual Love-From-Me (with an interest in the sale of the <land-rover-evoque.co.uk> domain name) and further that Respondent has offered to sell the Domain Names to it for GBP 6,000 each.

In the absence of any reliable denial the Panel accepts that the Domain Names were registered for such purpose. It is now well established that the registration of domain names for the purpose of resale in circumstances such as the present is not consistent with rights or legitimate interests on Respondent’s part.

It is therefore established that Respondent has no rights or legitimate interests in respect of the Domain Names under paragraph 4(a)(ii) of the Policy.

B. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that Respondent has registered and is using the Domain Names in bad faith.

It is again not difficult, in the absence of any admissible evidence or reliable submission to the contrary, to infer that Respondent knew or must have known of Complainant’s Trade Marks at the time it registered the Domain Names.

Complainant alleges that, in addition to the Domain Names, Respondent has also registered or acquired several similar domain names, for example <new-landrover.co.uk>, <land-rover-evoque.co.uk>, <landrover-evoque.co.uk>, <evoque-finance.co.uk>, <new-defender.co.uk>, <new-landrover-defender.co.uk> and <newlandrover-defender.co.uk> and that a Nominet Expert has found that Respondent had taken unfair advantage of Complainant’s rights and ruled that the said domain names be transferred to Complainant.

The assertion that Respondent has improperly registered similar domain names is relevant to the present complaint, whether or not this was primarily for the purpose of passive holding and resale. Evidence of a pattern of questionable domain name registrations may be taken into account in drawing appropriate inferences.

In the present case, the overall circumstances enable the Panel to infer that the Domain Names have been registered and are being used in bad faith in accordance with paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, namely: <land-rover-evoque.com>, <new-defender.com>, <new-landrover.com>, <new-landrover-defender.com>, <newlandrover-defender.com> and <rangerover.tel> be transferred to the Complainant.

Clive L. Elliott QC
Sole Panelist
Date: November 29, 2013