WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jaguar Land Rover Limited v. Registration Private, Domains By Proxy, LLC / OverTerrain.com
Case No. D2014-1350
1. The Parties
The Complainant is Jaguar Land Rover Limited of Whitley, Coventry, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Arochi & Lindner, Mexico.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / OverTerrain.com of Huixquilucan, Mexico.
2. The Domain Name and Registrar
The disputed domain name <refaccioneslandrover.com> is registered with Wild West Domains, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2014. On August 11, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 12, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 21, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 26, 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 the Respondent of the Complaint, and the proceedings commenced on September 2, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 22, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 23, 2014.
The Center appointed Luiz E. Montaury Pimenta as the sole panelist in this matter on September 29, 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 Complainant is the result of the merger between two prestigious British car brands, Jaguar and Land Rover, and currently is the UK’s largest automotive manufacturing business. Jaguar started in 1922 making motorcycle sidecars and Land Rover was founded in 1970 and both were bought by the Indian company Tata Motors in 2008, but only in 2013 did the companies merge.
The Complainant has an online presence in 142 countries and is the owner of several trademark registrations for the word mark LAND ROVER covering a vast number of products and services in the UK, United States and Mexico according to the printouts from the UK Intellectual Property Office, United States Patent and Trademark Office and Mexican Trademark Office annexed to the Complaint.
The Complainant, after receiving the correct information about the Respondent from the Center, sent a cease and desist letter on August 25, 2014 but did not receive any response.
According to the WhoIs database, the disputed domain name was registered on May 11, 2013.
5. Parties’ Contentions
The Complaint states that the disputed domain name <refaccioneslandrover.com> is confusingly similar to the trademark LAND ROVER previously registered by the Complainant.
The Complaint also states that the disputed domain name contains two irrelevant elements. The first is the generic Top-Level Domain (gTLD) “.com”, which is not to be taken into account when comparing the disputed domain name with a previously registered trademark, as it is a technical and necessary part of a domain name with no distinguishing or legal significance. The other irrelevant element, according to the Complainant, is the word “refacciones”, which in Spanish means “spare parts” and is considered a descriptive word that is not sufficient to prevent the disputed domain name from being confusingly similar to the trademark.
The Complainant asserts that the distinctive element of the disputed domain name is the trademark LAND ROVER.
The Complainant argues that the Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name because it has no rights over the LAND ROVER trademark and because the Respondent is not known among manufacturers and distributors of automobiles or in any other media as “Land Rover”. Also, even if the Respondent’s official website is dedicated to the sale of products related to the Complainant’s trademarks, the disputed domain name is not and, due to that, this conduct is considered “parking”.
According to the Complainant, the Respondent does not fulfill any of the requirements established in Oki Data Americas, Inc. vs. ASD, Inc., WIPO Case No. D2001-0903 and, because of that, the Respondent cannot claim a legitimate interest based on the fact that it is a reseller of spare parts of LAND ROVER vehicles.
The Complainant argues that it is not related in any way to the Respondent nor has it authorized or licensed the registered trademark LAND ROVER to be used as a domain name.
The Complainant states that since the disputed domain name was registered 62 years after the first LAND ROVER trademark registration in the United States and 21 years after the first LAND ROVER trademark registration in Mexico, the Respondent acted with knowledge of the Complainant’s trademarks and also that the Respondent is using the disputed domain name in order to attract Internet users who are looking for the Complainant’s LAND ROVER products only to find empty links with random words as well as links relating to the Complainant’s competitors.
The Complainant argues that the Respondent is using the trademark LAND ROVER as a domain name to host a pay-per-click (PPC) parking website in order to obtain profits by taking advantage of the Complainant’s world famous trademark and is also offering to sell the disputed domain name for MX 39,900.00 (Mexican pesos) - approximately USD 3,069.00.
The Complainant affirms that there is no evidence of the legitimate use of the disputed domain name, and neither is there evidence that the Respondent intends to make a legitimate use of the disputed domain name in the future. .
The Complainant argues that the disputed domain name is being used in bad faith because the Respondent is not using it with a bona fide purpose, only to prevent the Complainant, as the owner of the trademark LAND ROVER, from using the disputed domain name. Also, the Complainant states that the Respondent’s behavior regarding the disputed domain name is known as “parking” and several panels have regarded this practice as bad faith use.
The Complainant argues that the Respondent is acting in bad faith because the selling price of the disputed domain name is excessive. Also, the Complainant states that bad faith is evident in this case due to the contracted Privacy Service (“privacy shield”). The use of a privacy shield has been considered, by other panels, as an indication of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s LAND ROVER trademark. The Panel finds that the addition of the word “refacciones” is not enough to escape a finding of confusing similarity.
The Panel, therefore, finds that the Complainant has established the first condition of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Complainant has alleged that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
With respect to paragraph 4(c)(i) of the Policy, there is no evidence that the Respondent, before any notice of the dispute, used the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence indicating that the Respondent has ever been commonly known by the disputed domain name.
With respect to paragraph 4(c)(iii) of the Policy, the Respondent has not made and is not currently making a legitimate noncommercial or fair use of the disputed domain name.
In view of the above, the Panel finds that the Complainant has established the second condition of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that the Respondent intentionally registered the disputed domain name, which reproduces Complainant’s well-known trademark LAND ROVER, in order to capitalize on that trademark. By the time the disputed domain name was registered, it is impossible that the Respondent was not aware of the Complainant’s rights to the trademark LAND ROVER, since the Respondent is a reseller of spare parts of LAND ROVER vehicles.
Complainant’s allegations of bad faith were not contested since the Respondent did not reply the Complaint. The evidence provided by the Complainant confirms that it had long used its LAND ROVER trademark by the time the Respondent registered the disputed domain name.
Under the Policy, it is evidence of bad faith registration and use that “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 or your web site or location of a product or service on you web-site or location.” Policy, paragraph 4(b)(iv). In this case, the Panel is satisfied that the Respondent’s use of the disputed domain names to host PPC links related to the Complainant’s LAND ROVER trademark falls within the ambit of Policy, paragraph 4(b)(iv).
Therefore, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith, and that the Complainant has established the third element of the paragraph 4(a) 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 <refaccioneslandrover.com> be transferred to the Complainant.
Luiz E. Montaury Pimenta
Date: October 13, 2014