WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jaguar Land Rover Limited v. Phnom Penh Prestige, Tuy Sombo
Case No. D2014-0977
1. The Parties
Complainant is Jaguar Land Rover Limited of Whitley, Coventry, United Kingdom of Great Britain and Northern Ireland (the “UK”), represented by Brooks Kushman, P.C., United States of America (the “USA”).
Respondent is Phnom Penh Prestige, Tuy Sombo of Phnom Penh, Cambodia.
2. The Domain Name and Registrar
The disputed domain name <landrovercambodia.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2014. On June 10, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 11, 2014, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amended Complaint on June 19, 2014.
The Center verified that the Complaint together with the amended 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 July 2, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 22, 2014. On July 4, 2014, Respondent sent an informal email communication to the Center. Respondent did not submit any formal response. Accordingly, the Center informed the parties about the commencement of the panel appointment process on July 23, 2014.
The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on August 1, 2014. 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 trademark upon which the Complaint is based is LAND ROVER. According to the documentary evidence and contentions submitted, Complainant owns a number of registrations for the LAND ROVER trademark in different countries, including in the UK where it was first registered in 1947. Complainant owns the European Community Trademark Registrations No. 143654 dated April 1, 1966 and No. 2271500 dated June 22, 2001, as well as a number of trademark registrations in various Asian countries.
According to the documentary evidence and contentions submitted, Complainant is a manufacturer of premium automobiles and utility vehicles based in England, employing over 20,000 people in the UK. Complainant claims it is the top automotive manufacturing employer in the UK. Complainant produces vehicle models under the LAND ROVER trademark, amongst others.
Complainant contends that its LAND ROVER trademark has acquired extensive goodwill and a substantial reputation throughout the world, including in Europe and throughout Asia, and, as a result, it is a very well-known trademark in those territories. Complainant also contends that it has an online presence in 142 countries and that Complainant’s primary website is at “www.landrover.com”, the domain name <landrover.com> having been registered on March 22, 1995. Complainant asserts that Complainant and its licensed dealer network also own and use various domain names consisting of the LAND ROVER trademark followed by a geographic term, such as <landroverthailand.com> and <landroverchina.com>, among others.
The disputed domain name was registered on October 5, 2013.
5. Parties’ Contentions
Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark because (i) it incorporates the LAND ROVER trademark in its entirety; (ii) it attaches the geographic term Cambodia to the LAND ROVER trademark, following the same pattern – LAND ROVER trademark coupled with a geographic term – that is used by Complainant and its licensed dealer network in legitimate LAND ROVER domain name registrations; and (iii) the generic Top-Level Domain designation “.com” does not negate a finding of confusing similarity.
Complainant further contends that Respondent does not have rights or legitimate interests regarding the disputed domain name because (i) Complainant has not licensed or otherwise permitted Respondent to use the LAND ROVER trademark; (ii) Respondent is not, and has never been, known by the disputed domain name; (iii) Respondent uses the disputed domain name to operate a commercial website that offers products and/or services in competition with Complainant’s products and services; (iv) Respondent uses the disputed domain name in an attempt to pass itself off as Complainant, including by using Complainant’s copyrighted images of LAND ROVER vehicles and by prominently displaying the LAND ROVER trademark; (v) Respondent has not used the disputed domain name in connection with a bona fide offering of good or services and has not made a legitimate noncommercial or fair use of the disputed domain name; and (vi) there exists at least a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name.
Finally, Complainant contends that Respondent registered and uses the disputed domain name in bad faith because (i) Respondent registered the disputed domain name primarily for the purpose of commercial gain and/or misleadingly divert consumers; (ii) Respondent is using the disputed domain name to offer competing products and services, thus disrupting Complainant’s business; (iii) Respondent is diverting Complainant’s customers for financial gain from the false impression created for Internet users with regard to an association/affiliation with Complainant; and (iii) Respondent attempts to pass itself as Complainant by using the well-known LAND ROVER trademark and copyrighted images of Land Rover vehicles and Complainant’s logo.
Respondent did not formally reply to Complainant’s contentions. However, on July 4, 2014, Respondent sent an informal communication to the Center stating “There is so many documents to read and it’s my English is not my first language. Can you tell me what is the option for this dispute? Domain transfer? Remove any property right of Land Rover? Please kindly let me know. ”
6. Discussion and Findings
The Panel will review each of the three cumulative elements set forth in Paragraph 4(a) of the Policy to determine whether Complainant has complied with such requirements.
A. Identical or Confusingly Similar
The disputed domain name <landrovercambodia > incorporates the LAND ROVER mark in its entirety. Previous UDRP panels have held that when a domain name wholly incorporates a complainant’s registered trademark that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Telstra Corporation Limited v. Barry Cheng Kwok Chu, WIPO Case No. D2000-0423; Pfizer Inc. v. United Pharmacy Ltd, WIPO Case No. D2001-0446; E.I. du Pont de Nemours and Company v. Richi Industry S. r. l., WIPO Case No. D2001-1206; Utensilerie Associate S. p. A. v. C & M, WIPO Case No. D2003-0159; Shaw Industries Group Inc., Columbia Insurance Company v. Wan-Fu China, Ltd., WIPO Case No. D2007-0282.
As decided in other UDRP cases, “the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone”. LEGO Juris A/S v. Name Administrator, Hong Kong Domains, LLC., WIPO Case No. D2009-0924. See also Wal-Mart Stores, Inc. v. Traffic Yoon, WIPO Case No. D2006-0812. In the instant case, the combination of the word “landrover” with the suffix “cambodia” does not affect the overall impression of the dominant part of the disputed domain name. In fact, the addition of the geographic term “cambodia” renders the domain name even more confusingly similar to the LAND ROVER registered trademark, particularly because it follows the same pattern – LAND ROVER trademark coupled with a geographic term – that is used in Complainant’s domain name registrations.
Finally, the addition of generic Top-Level Domain (“gLD”) suffix “.com” is non-distinctive because it is required for the registration of the domain name. RX America, LLC v. Mattew Smith, WIPO Case No. D2005-0540; Sanofi-aventis v. US Online Pharmacies, WIPO Case No. D2006-0582.
Therefore, the Panel finds that the disputed domain name is clearly confusingly similar to the LAND ROVER trademark and, as a result, finds that the requirement of paragraph 4(a)(i) of the Policy is met.
B. Rights or Legitimate Interests
The consensus view in the URDP panel decisions has been that a complainant is required to make out an initial prima facie case. Once such a prima facie case I made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the “WIPO Overview 2.0”), paragraph 2.1.
The Panel is convinced that the Complainant has established a prima facie case that the Respondent lacks rights to or legitimate interests in the disputed domain name, and the Respondent has failed to provide the Panel with any evidence of Respondent’s rights to or legitimate interests therein. In addition, none of the three nonexclusive methods for the sole panelist to conclude that Respondent has rights or a legitimate interest in the disputed domain name [Paragraph 4(c) of the Policy] shows a result in favor of the Respondent.
In fact, the Panel finds as reasonable Complainant’s contentions that Respondent has never been licensed or otherwise authorized to use the Complainant’s LAND ROVER trademark.
The Panel also agrees that Respondent’s use of the disputed domain name does not satisfy the test for bona fide use established in prior UDRP Panel decisions as the disputed domain name is being used to host a website offering products and services intended for Complainant’s LAND ROVER and JAGUAR vehicles as well as for products that are in competition with Complainant’s products and services.
Therefore, the Panel holds that Respondent has not used the disputed domain name in connection with a bona fide offering of good or services and has not made a legitimate noncommercial or fair use of the disputed domain name. On the contrary, the disputed domain name has been used to divert Internet users by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship or affiliation, or endorsement of Respondent’s website.
In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.
C. Registered and Used in Bad Faith
The Panel concurs with previous UDRP decisions holding that registration of a well-known trademark as a domain name may be an indication of bad faith in itself, even without considering other elements. See PepsiCo, Inc. v. “null”, aka Alexander Zhavoronkov, WIPO Case No. D2002-0562; Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Pepsico, Inc. v. Domain Admin, WIPO Case No. D2006-0435.
In view of the particulars of the instant case, the Panel finds that Respondent was undoubtedly aware of the existence of the LAND ROVER trademark when Respondent registered the disputed domain name. In fact, the combination of the word “landrover”, which is recognized as a well-known trademark, with the geographic term “cambodia” indicates that Respondent acted with opportunistic bad faith because the disputed domain name clearly followed a pattern of coupling the LAND ROVER trademark with a certain territory.
The Panel has found before, for the purpose of determining whether Respondent lacks rights to or legitimate interests in the disputed domain name, that the disputed domain name has been used to divert Internet users by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship or affiliation, or endorsement of Respondent’s website.
Paragraph 4(b)(iv) of the Policy provides that if, by using the domain name respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 your web site or location or of a product or service on your web site or location, that circumstance shall be evidence of the registration and use of a domain name in bad faith.
In short, the manner in which Respondent has used and is using the disputed domain name demonstrates that the disputed domain name was and still is being used in bad faith. Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith, and finds that the requirement of Paragraph 4(a)(iii) of the Policy is 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 name <landrovercambodia.com> be transferred to Complainant.
Manoel J. Pereira dos Santos
Date: August 13, 2014