WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rolls-Royce PLC v. Sergey Sevreev / Sigmal LP
Case No. D2014-1469
1. The Parties
The Complainant is Rolls-Royce PLC of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Sergey Sevreev / Sigmal LP of Edinburgh, Scotland, UK.
2. The Domain Name and Registrar
The disputed domain name <rolls-royce.club> 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 August 27, 2014. On August 27, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 27, 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 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 September 3, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 23, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 24, 2014.
The Center appointed Dr. Clive N.A. Trotman 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
According to the Complainant, Rolls-Royce is a brand associated with quality cars, car systems, car engines, aircraft engines and other things including a range of promotional merchandise and certain services. The scale of the Complainant is that it employs 55,000 people in 45 countries and had underlying revenue GBP 15.5 billion in 2013.
The Complainant owns a large number of trademarks internationally, running in tabulated form to some 23 pages, for ROLLS-ROYCE as a badge or as words or variants including ROLLS ROYCE or ROLLS. The following are representative:
ROLLS-ROYCE, European Community Trademark number 23069, filed April 1, 1996, classes 7, 12;
ROLLS-ROYCE, UK trademark number 1051623, filed September 3, 1975, class 12;
ROLLS-ROYCE, United States of America trademark number 3995473, filed June 15, 2010, classes 35, 37, 41, 43.
The Complainant also owns more than 600 domain names incorporating “rolls-royce”, “rollsroyce” or similar, and uses in particular the website “www.rolls-royce.com”.
Nothing is known about the Respondent except for the contact information provided to the Registrar in order to register the disputed domain name, and that the same registrant has evidently registered the domain names <bugatti.club>, <christiandior.club>, <coca-cola.club>, <fendi.club>, <louisvuitton.club>, <mcdonalds.club>, <prada.club> and <versace.club>. The disputed domain name was registered on May 8, 2014.
5. Parties’ Contentions
The Complainant has submitted its own list of its trademark registrations by countries or jurisdictions including the respective registration numbers, classes and filing dates. The Complainant says that its trademark is world famous, is adjudged a Business Superbrand by Superbrands UK, and under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) is protected in connection with any products or services.
The Complainant contends that the disputed domain name is confusingly similar to the trademark ROLLS‑ROYCE which it incorporates in its entirety. It is submitted that the generic Top-Level Domain (“gTLD”) designation “.club” is not relevant to the question of confusing similarity.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not given the Respondent any license or authorisation to use the trademark ROLLS-ROYCE. The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name, or found any evidence of the Respondent’s use of the trademark ROLLS-ROYCE such as would create any rights or legitimate interests in the disputed domain name. The Complainant says that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services but has redirected Internet users to the Complainant’s website. There is no noncommercial or fair use of the disputed domain name.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. A cease, desist and transfer communication, setting out the Complainant’s rights, was sent to the Respondent on June 9, June 18 and June 24, 2014, and was not replied to.
The Complainant says that the Respondent’s act of redirecting Internet visitors to the Complainant’s website demonstrates that the Respondent was aware of the Complainant’s trademark.
The Complainant says that on dates in May and June 2014 the Respondent also registered the domain names <bugatti.club>, <christiandior.club>, <coca-cola.club>, <fendi.club>, <louisvuitton.club>, <mcdonalds.club>, <prada.club> and <versace.club>, and the Complainant has produced evidence that each is redirected to the respective trademark holder’s own website. The Complainant posits that the Respondent’s plan is eventually to try to sell them to the trademark owners and in the meantime to use them to gain the relevant traffic. The Complainant says there is a pattern of conduct within the meaning of paragraph 4(b)(ii) of the Policy.
The Complainant has cited a number of previous decisions under the Policy that it submits would support its position.
The Complainant requests the transfer to itself of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
The Panel is satisfied that the Center has fulfilled its obligations to attempt to contact the Respondent in service of the Complaint in accordance with paragraph 2 of the Rules.
A. Identical or Confusingly Similar
The disputed domain name is <rolls-royce.club> and the Complainant’s trademark is ROLLS-ROYCE.
The gTLD designation, in this instance “.club”, is generally disregarded in the determination of confusing similarity under the Policy and is normally held not to create a distinction between a trademark and a domain name incorporating that trademark. On the evidence, the presently disputed domain name reproduces the Complainant’s trademark entirely and is found to be identical and confusingly similar to the Complainant’s trademark under paragraph 4(a)(i) of the Policy.
The recent introduction of more descriptive gTLD designations may introduce a new dimension to the determination of confusing similarity under the Policy. The Respondent’s registration of the disputed domain name <rolls-royce.club>, with the “.club” gTLD extension, is found positively to enhance, and not to diminish, confusing similarity because Internet users interested in the Complainant by virtue of its well-known trademark could well believe or anticipate the existence of an authentic “Rolls-Royce Club”.
B. Rights or Legitimate Interests
The Complainant has asserted prima facie that the Respondent has not been licensed or authorised to use the trademark ROLLS-ROYCE and does not have rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy provides for the Respondent to establish rights or legitimate interests in a disputed domain name by demonstrating:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The above circumstances are without limitation and rights or legitimate interests may be established by the Respondent in any other way satisfactory to the Panel.
The failure of the Respondent to make any reply does not lead to a decision by default for the Complainant, which must prove that the Respondent does not have the relevant rights or legitimate interests. A genuine fan, tribute or criticism website might carry some limited implied licence to incorporate a trademark in a part of its domain name, to an extent that may be debatable (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)). A club website may be a place for tribute or criticism among other things. In the exercise of its power to undertake limited factual research into matters of public record (WIPO Overview 2.0), the Panel notes the existence of the apparently authentic website belonging to “Le French Rolls-Royce Drivers’ Club” with the Internet address “www.frenchrollsroycedriversclub.fr”, registered in March 2011 and evidently active, notwithstanding the “strict policy of the Complainant that all domain names containing the term ROLLS-ROYCE should be owned by the Complainant”. The institution of the gTLD “.club” makes feasible the construction of domain names incorporating a trademark and “.club” in the novel expectation that the gTLD may be read directly into the domain name as a descriptive word, thus, the “Rolls-Royce Club”.
The Respondent does not, however, claim to be making any legitimate noncommercial or fair use of the disputed domain name in connection with a “Rolls-Royce Club” or otherwise. On the evidence presented, the disputed domain name is not in use as a club, or for tribute or criticism, or for any other authentic purpose. The disputed domain name has not been constructed so as to demonstrate unequivocally that its ownership is distinctly separate from the trademark owner, and comprises a domain name the Complainant may reasonably have wanted to use in the future. All of criteria in this paragraph are commonly held to negate a claim to fair use for tribute or criticism.
The Panel finds for the Complainant under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered in bad faith and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) 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 of your website or location or of a product or service on your website or location.”
The provisions of paragraph 4(b) of the Policy are, however, without limitation, and bad faith may be found alternatively by the Panel.
The trademark ROLLS-ROYCE can scarcely be better known and has been ranked 13th among Business Superbrands. The TRIPS Agreement provides that the owner of a well-known trademark has the right to prevent its use in connection with any products or services regardless of those for which it is registered. The Respondent’s knowledge of the trademark ROLLS-ROYCE is demonstrated conclusively by the evidence that the website of the disputed domain name has been redirected to resolve to an official website of the Complainant that prominently displays the ROLLS ROYCE trademark, badge and products.
Whilst decisions under the Policy are not bound by precedent, a long-established principle supports the finding of bad faith or lack of rights where a respondent has registered a domain name incorporating a well-known trademark without any plausible explanation. See for example the decision in the case of the domain name <veuvecliquot.org>, Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163: “‘VEUVECLIQUOT.ORG’ is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith.” See also the decision in the case of the domain name <nike-shoes.com>, Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397: “In addition, given that Complainant’s trademark is distinctive and famous to the point where it may not be used by other persons even in fields or industries unrelated to Complainant’s activities, one would be hard pressed to find a person who may show a right or legitimate interest in a domain name containing Complainant’s trademark.”
In the present case it is not necessary to speculate whether in the terms of paragraph 4(b) of the Policy the Respondent might have in mind eventually to sell the disputed domain name, to block the Complainant from registering it, to disrupt the Complainant’s business or to garner Internet traffic. It is sufficient to note that the Respondent has no demonstrable or reasonably conceivable cause to hold the disputed domain name displaying the world-famous trademark ROLLS-ROYCE in its entirety. Furthermore, the Respondent’s registration in similar vein at about the same time of the family of domain names <bugatti.club>, <christiandior.club>, <coca-cola.club>, <fendi.club>, <louisvuitton.club>, <mcdonalds.club>, <prada.club> and <versace.club>, each redirected to the relevant trademark holder’s website, constitutes a pattern of conduct that, whether or not these are intended to be blocking registrations, is in and of itself strongly indicative of nefarious intent.
On the evidence, the Panel finds the dispute domain name to be in use, and to have been used in bad faith. The Panel further finds on the balance of probabilities that the disputed domain name was registered for the bad faith purpose for which it has been used.
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 <rolls-royce.club> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: October 9, 2014