WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jaguar Land Rover Limited v. Damasco Inc., Ezio Damasco
Case No. D2015-0297
1. The Parties
Complainant is Jaguar Land Rover Limited of Coventry, United Kingdom of Great Britain and Northern Ireland, represented by Arochi & Lindner, Mexico.
Respondent is Damasco Inc., Ezio Damasco of Luxembourg,.
2. The Domain Name and Registrar
The disputed domain name <jaguarlandroverlimited.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 February 24, 2015. On February 24, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 24, 2015, 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 March 3, 2015.
The Panel notes that the evidence of record indicates that the Written Notice of the Complaint which was sent to Respondent at its available postal-mail address was not delivered, and that the e-mail copy of the Complaint that was sent to Respondent’s “postmaster” e-mail address in accordance with paragraph 2(a)(ii)(B) was returned as undeliverable. However, the e-mail copy of the Complaint that was sent to Respondent’s “[…]@gmail.com” e-mail address was not returned, and is therefore presumed delivered.
In accordance with the Rules, paragraph 5(a), the due date for Response was March 23, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 24, 2015.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on April 16, 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
Complainant is the producer of two prestigious British car brands: JAGUAR, which has its origins tracing back to 1922, and LAND ROVER, which was established as a standalone company in 1978. The two brands were officially joined together as one company in 2013.
Complainant has an online presence in 142 countries showing details of its JAGUAR and LAND ROVER vehicles. Complainant owns numerous trademark registrations around the world in conjunction with its LAND ROVER and JAGUAR automobiles, including the United Kingdom trademark registration No. UK00000663199 for the word mark LAND ROVER, the United Kingdom trademark registration No. UK00000625805 for the word mark JAGUAR, United States trademark registration No. 0541722 for the word mark LAND ROVER, United States trademark registration No. 0423961 for the word mark JAGUAR, Mexican trademark registration Nos. 422982, 520766, 637907 and 534688 for the word mark LAND ROVER and Mexican registration No. 416118 for the word mark JAGUAR.
Complainant owns the <jaguarlandrover.com> domain name, which was registered on February 8, 2005 and expires on February 8, 2016.
The disputed domain name was registered on July 17, 2014 and resolves to a blank page that reads “Website coming soon – Please check back soon to see if the site is available”.
5. Parties’ Contentions
Complainant alleges that it has trademark rights in the JAGUAR and LAND ROVER marks as evidenced by the above listed registrations, that the JAGUAR and LAND ROVER marks have become well-known and famous, that the disputed domain name is confusingly similar to the JAGUAR and LAND ROVER marks, and that the terms “.com” and “limited” are non-distinctive elements of the disputed domain name.
Complainant states that Respondent has no rights or legitimate interests in the disputed domain name, has no rights in the JAGUAR and LAND ROVER trademarks, is not known in any media with the name Jaguar or Land Rover, has no legal or commercial relationship with Complainant and has never been granted a license or authorization for the use of the JAGUAR and LAND ROVER trademarks.
Regarding bad faith registration and use, Complainant states that its trademarks have reached the status of well-known or famous worldwide. For example, the LAND ROVER trademark has been recognized for at least 66 years, and is therefore well-known or famous worldwide, such that Respondent registered the disputed domain name with knowledge of Complainant’s registered JAGUAR and LAND ROVER trademarks. Complainant alleges that Respondent is preventing Complainant from reflecting its marks in the disputed domain name.
Respondent did not respond to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest Respondent of the disputed domain name, Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that Complainant has trademark rights in the JAGUAR and LAND ROVER marks due to its numerous trademark registrations for those marks and that the disputed domain name is confusingly similar to these marks because it incorporates the entirety of both trademarks with the addition of only the descriptive entity identifier “limited.”
The Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The evidence of record supports Complainant’s unrebutted allegations that Respondent has never been commonly known by the names Jaguar or Land Rover, is not authorized to use the JAGUAR or LAND ROVER marks and is not sponsored by or affiliated with Complainant in any way. Further, the disputed domain name does not appear to be in use for any bona fide offering of goods or services. Accordingly, the Panel finds that Complainant has made a prima facie showing that Respondent has no rights or legitimate interests in the disputed domain name; the Respondent, by virtue of its default, has failed to rebut that showing.
The Panel finds that Complainant has carried its burden and satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Respondent did not contest Complainant’s allegations of bad faith registration and use. It is highly unlikely that Respondent was unaware of Complainant’s trademark rights when Respondent registered the disputed domain name on July 17, 2014, since Complainant had trademark registrations in the JAGUAR mark for more than 70 years and in the LAND ROVER mark for more than 66 years prior to the registration of the disputed domain name, and has used the JAGUAR and LAND ROVER marks extensively worldwide.
There is also evidence of bad faith use. While there is no evidence of positive action being taken by Respondent in relation to the disputed domain name, as the panel concluded in Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003, inaction can be considered use within the meaning of the UDRP. Where a respondent registers a domain name that incorporates the trademarks of two recently merged entities, panelists have found the conduct sufficient to demonstrate both bad faith registration and use Avnet, Inc. v. SS, WIPO Case No. D2001-0793.
Given the strong reputation and widely known status of Complainant’s JAGUAR and LAND ROVER marks, the lack of any evidence of good faith use by Respondent, the lack of use of the disputed domain name by Respondent, the Panel concludes that Respondent’s passive holding of the disputed domain name in this particular case satisfies the requirement of paragraph 4(a)(iii) that the disputed domain name “has been registered and is being used in bad faith” by Respondent.
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 <jaguarlandroverlimited.com> be transferred to Complainant.
Lawrence K. Nodine
Date: May 2, 2015