WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayerische Motoren Werke Aktiengesellschaft, Rolls-Royce Motor Cars Limited v. Mr David Redshaw, Auto Crowd, Auto Crowd Group / MEDIAGROUP24/ WhoisGuard Protected / WhoisGuard, Inc.
Case No. D2015-0589
1. The Parties
The Complainants are Bayerische Motoren Werke Aktiengesellschaft of Munich, Germany and Rolls-Royce Motor Cars Limited, of Farnborough, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Palmer Biggs Legal, United Kingdom.
The Respondents are Mr. David Redshaw, Auto Crowd, Auto Crowd Group / MEDIAGROUP24 of Manchester, United Kingdom / WhoisGuard Protected / WhoisGuard, Inc. of Panama, self-represented.
2. The Domain Names and Registrar
The disputed domain names <bmwenthusiastsclub.com>, <bmwmotorcycle.club>, <bmwowners.club>, <minienthusiastsclub.com>, <miniowners.club>, <miniownersclub.net>, <rollsroyceenthusiastsclub.com>, <rollsroyceowners.club> are registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 2, 2015. On April 2, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 3, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainants on April 15, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an Amended Complaint on April 17, 2015.
On April 20, 2015 the Center sent an email communication to the Complainant informing that one of the disputed domain names originally included in the Complaint (<bmwmotorcycleclub.net>) appeared to be available for registration and asking the Complainants to confirm that said domain name was withdrawn from the Complaint. On April 28, 2015 the Complainants sent an email communication to the Center confirming that the domain name <bmwmotorcycleclub.net> could be withdrawn from the Complaint.
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 Respondents of the Complaint, and the proceedings commenced on April 29, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 19, 2015. The Response was filed with the Center on April 27, 2015.
On May 6, 2015 the Complainants filed a Supplemental Filing.
The Center appointed Adam Taylor as the sole panelist in this matter on May 21, 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.
On May 28, 2015, following a request from the Complainant, the Panel issued Procedural Order No. 1 suspending the proceedings to enable settlement discussions to take place between the parties. Following a further request from the Complainant, on June 24, 2015, the Panel issued Procedural Order No. 2 reinstituting the proceedings.
4. Factual Background
The Complainants and Respondents are hereafter referred to as “the Complainant” and “the Respondent” respectively unless there is a reason to refer to them separately.
Both Bayerische Motoren Werke Aktiengesellschaft and Rolls-Royce Motor Cars Limited are part of the well-known BMW group of companies which manufactures and distributes BMW, Mini and Rolls-Royce vehicles.
The Complainant’s trade marks include:
- Community Trade Mark No. 91835 for the word mark BMW filed April 1, 1996 in classes 1-30 and 32-42.
- Community Trade Mark No.143909 for the word mark MINI filed April 1, 1996 in classes 12, 28, 36 and 37.
- International Madrid (UK) Trade Mark No. 727906 for the MINI logo registered October 1, 1999 in classes 2, 6-9, 11, 12, 14, 16, 18, 20, 21, 24, 25-28, 34, 36-39, 41 and 42.
- Community trade mark No 3384071 for the word mark ROLLS-ROYCE filed October 2, 2003 in class 12.
- UK trade mark No 870368 for the ROLLS-ROYCE logo filed October 13, 1964 in class 12.
The Complainant operates official Rolls-Royce owners’ and enthusiasts’ car clubs at the websites “www.rroc.org” and “www.rrec.org.uk” respectively.
The disputed domain names were registered by the Respondent on the following dates:
<bmwenthusiastsclub.com> registered on August 21, 2012.
<minienthusiastsclub.com> registered on August 24, 2012.
<rollsroyceenthusiastsclub.com> registered on August 24, 2012.
<miniownersclub.net> registered on September 20, 2013.
<bmwmotorcycle.club> registered on September 25, 2014.
<bmwowners.club> registered on May 7, 2014.
<rollsroyceowners.club> registered on May 7, 2014.
<miniowners.club> registered on May 8, 2014.
At various times since September 2014, the websites at the disputed domain names (“the Websites”) have included the following features:
“www.bmwenthusiastsclub.com”: The website was branded “BMW Enthusiasts Club. Welcomes BMW Owners and Enthusiasts”. The site included an advertisement with a list of official motor company logos including the Rolls-Royce logo offering sponsorship and advertising services and linking to another Respondent site branded “Car Club Marketing”; a page entitled “BMW Insurance” promoting a third party insurance company; various third party advertisements including for the AutoTrader publication; and a list of “QUICK LINKS” to other commercial sites of the Respondent branded “Car Clubs Insurance”, “Car Clubs Finance”, Car Clubs Warranty” and “Car Clubs Parts”.
“www.minienthusiastsclub.com”:The website was branded “MINI” with the words “enthusiasts club” in smaller font below. The site offered free membership and a paid annual membership for GBP29.99. It also included a “sponsor” advertisement for the Respondent’s “Car Club Dating” website and promotion of a third party insurance company.
“www.rollsroyceenthusiastsclub.com”:The website was branded “Rolls Royce”” with the words “enthusiasts club” in smaller font below. The site offered free and paid membership and advertisements similar to those mentioned above in relation to “www.minienthusiastsclub.com”
“www.bmwowners.club”: The website was branded “bmw” with the words “owners club” in smaller font below. The site offered free and paid membership as above. It also included the car club marketing advertisement mentioned above; an advertisement by “a sponsor” linking to another Respondent site offering GPS tracking devices for motor vehicles; a third party advertisement for the AA and a “Club Insurance” promotion for a third party insurance company.
“www.miniownersclub.net”: The website was branded “Mini Owners Club. welcomes both mini owners and enthusiasts” including the official Mini logo in the header. It offered free and paid membership as well as the above-mentioned advertisements for the Respondent’s car tracker, dating and car club marketing sites plus the promotion of the third party insurance company and a third party advertisement for the Automobile Association (“AA”).
“www.bmwmotorcycle.club”: The website was branded “BMW Motorcycle Club. Welcomes both Owners and Enthusiasts”. The site included advertisements for the Respondent’s “Biker Club Insurance” website as well as various third party advertisements including for the Auto Express publication.
“www.rollsroyceowners.club”:The website was branded “rolls royce” with the words “owners club” in smaller font below. The site included free and paid membership; the list of “QUICK LINKS” to other commercial sites of the Respondent; the advertisement for the Respondent’s car club marketing site with Rolls-Royce logo, all as mentioned above; and a page entitled “Rolls Royce Insurance” promoting a third party insurance company.
“www.miniowners.club”: The website was branded “mini” with the words “owners club” in smaller font below. The site included free and paid membership; the list of “QUICK LINKS” to other commercial sites of the Respondent as well as the advertisement for the Respondent’s car club marketing site, all as mentioned above; a page entitled “Mini Insurance” promoting a third party insurance company and also various other third party advertisements including for Autotrader.
On September 17, 2014, the Complainant sent a letter before action to the Respondent.
Following the Complainant’s letter, the Respondent added disclaimers in the footer of the home page of each one of the Websites stating: “This website has no association with [Rolls Royce, Rolls Royce Aviation, RREC] [BMW] [Mini or BMW]”
In the course of various email exchanges with the Complainant’s solicitors following the letter before action, on October 6, 2014, the Respondent offered to sell 23 domain names (including the disputed domain names) to the Complainant for GBP 440,000. 21 of those 23 domain names comprised the Complainant’s mark followed by the descriptive terms “car club”, “owners club”, “motorcycle club”, “enthusiasts club”, “forum” and “car dealers”. The two other domain names were <rroc.co.uk> and <rrdc.co.uk>.
On November 4, 2014, the Respondent offered to sell 15 of the 23 domain names to the Complainant for GBP 5,000 each or a “car / cars to the same value”. The exact domain names included in the latter offer are not clear.
The Respondent owns at least some 90 “.uk” domain names containing well-known third party trade marks, most of which consist of the name of car manufacturer plus descriptive terms such as those reflected in the disputed domain names, e.g., “owners club”, “enthusiasts club” etc. Some of the domain names consist of unadorned third party trade marks or the names of well-known racing drivers, e.g.
5. Parties’ Contentions
The following is a summary of the Complainant’s contentions.
As a result of their extensive use, the Complainant's marks have a substantial reputation in relation to the manufacture and supply of motor cars and related services and the Complainant is the owner of considerable goodwill and reputation by reference to those marks.
The disputed domain names all incorporate the Complainant’s marks. The addition of the words “enthusiasts club”, “owners”, “motor cycle club” and “owners club” within the disputed domain names is insufficient to avoid confusion with the Complainant’s marks. The disputed domain names are therefore confusingly similar to the Complainant’s marks.
The Respondent has no rights or legitimate interests in the disputed domain names.
By diverting traffic to third party websites/services and other websites/services offered by the Respondent, the Respondent cannot be said to have any legitimate interests in the disputed domain names and it is not using the disputed domain names in connection with a bona fide offering of goods or services.
The Respondent cannot be said to be using the Websites as “non-commercial clubs”, analogous to “fan-sites”. Panels have found that a claimed fan site which includes pay-per-click links (“PPC”) or automated advertising would not normally be regarded as a legitimate non-commercial site.
The Respondent’s two offers to sell the disputed domain names to the Complainant constituted bad faith under paragraph 4(b)(i) of the Policy.
The Respondent’s other domain names are evidence that it registered the disputed domain names in order to prevent the Complainant from reflecting its marks in corresponding domain names and that the Respondent has engaged in a pattern of such conduct under paragraph 4(b)(ii) of the Policy.
The Respondent has intentionally attempted to create a likelihood of confusion with the Complainant’s marks under paragraph 4(b)(i) of the Policy. Since each of the disputed domain names contains a sign identical to one of the Complainant’s marks, this will inevitably result in confusion and the diversion of Internet traffic to the Respondent’s sites. Further, the domain names <rollsroyceowners.club> and <rollsroyceenthusiastsclub.com> are particularly confusing for members of the public because official Rolls-Royce car clubs are operated under these names at the websites attached to the domain names <rroc.org> and <rrec.org.uk> owned by the Complainant.
The likelihood of confusion is enhanced by the Respondent’s extensive use on the Websites of terms similar to the marks as well as its use of the Complainant’s logos on some of the sites.
The following is a summary of the Respondent’s contentions.
This is a case of David versus Goliath.
The Respondent (David Redshaw) has a passion for cars, motorcycles and yachts.
The Respondent started his first car club in April 2005 – the “Lotus Owners Club”. He felt that other clubs at the time did not offer good online experiences. The Respondent’s Website offer social network type features such as instant chat, photo and video galleries and free classified advertisements.
The Respondent operates as not-for-profit and non-political club network as most of the car club members are free enthusiasts. The ratio between paid and free members is 90% / 10%. To keep the clubs free, the Respondent has to rely on sponsors and PPC. This enables the Respondent to pay overheads such as servers, domain names, programmers, software etc.
The Respondent has over 70 car clubs all linking to one members’ area where each club has its own page.
There are many other unofficial car clubs for BMW, Mini and Rolls-Royce but the Complainant appears to be targetting the Respondent in particular.
It is relevant to compare the Respondent’s clubs with another car club called “BMW Car Club GB”, which promotes the fact that it is the only car club officially endorsed by the Complainant and claims to be non-profit making. Yet it does not offer free membership. Membership starts at GBP 40, rising to GBP 65, and it claims to have over 4,000 members. So it generates revenue of GBP 160,000 without any other revenue streams. It is very profitable and not necessarily benefitting its members. It could easily offer free membership. This club also includes extensive sponsorship and advertising, yet the Complainant objects to the Respondent engaging in such activities. The Complainant is not pursuing this club but is pursuing the Respondent, although the Respondent offers its members much more and is not exploiting members by insisting that they all pay a fee.
The Respondent registered the disputed domain names to add to his car club network in order to attract international traffic.
The Complainant could have registered the “.club” domain names during the applicable sunrise period but chose not to.
In 2011, the Respondent registered with the Complainant’s BMW and Rolls Royce press media centres using a “rollsroyceownersclub.co.uk” email address. They approved the Respondent’s account and started supplying the Respondent with press releases, videos and photos to promote on its club sites. The Respondent continues to receive such material. The Complainant has thereby worked with the Respondent and his clubs and has acknowledged the clubs’ existence for the previous five years. The media centres issue no guidelines regarding use of the Complainant’s names or logos.
The Respondent’s Rolls-Royce club is listed on a number of the Complainant’s Twitter accounts. The Respondent has connections with high-ranked staff within the Complainant via LinkedIn. Those persons are all aware of the Complainant’s network of clubs. The Respondent has been invited to various promotional events organised by the Complainant, showing that the Respondent is recognised by the Complainant.
It is commonly known that car owners clubs and forums are owned and run by enthusiasts. It would be more confusing for a visitor if a car manufacturer were to own a club as it would be politically motivated to promote itself and members would not be free to speak freely.
The club names are generic and descriptive and are being used to fairly inform visitors who and what the clubs are. The Respondent is not using the Complainant’s marks in a trade mark sense. The Respondent is not infringing the Complainant’s trade marks, nor is it passing off.
On receiving the Complainant’s first communication, the Respondent acted upon this instantly by updating the Websites to meet the Complainant’s concerns and adding a disclaimer saying that there was no official connection with the manufacturer.
The sum of GBP 440,000 was a random figure as the Respondent did not want to sell the clubs. The price of GBP 5,000 per site is fair as the Respondent has been working on the site for the last five years, building up the traffic and organic search positions. The Complainant is bullying the Respondent to transfer the disputed domain names for nothing, disregarding his work in promoting the Complainant’s media content over five years. The Respondent is happy that its offer was not accepted.
The Respondent only allows four or five sponsors on a club website so it will not have a multitude of commercial links and will just generate enough to fund the upkeep of the club.
For the last five years the Respondent has worked well with the Complainant. It took the Complainant a long time to decide that the Respondent was doing something wrong, unless the Complainant decided that it wanted to take over the clubs for its own gain. It is unfortunate if the ethos of the car club is lost and it just becomes a marketing tool.
The Respondent is trying to generate a revenue stream so it can continue to offer free memberships to its members and even though it is not quite covering overheads at the moment. The Respondent is willing to invest his own money in the project until it does.
The Respondent has not endorsed any of its sponsors, nor portrayed them as being associated with the Complainant.
6. Discussion and Findings
The principles governing the question of whether a complaint may be brought by multiple complainants or against multiple respondents are set out in paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
The Panel is satisfied that the Complainants have a common grievance against the Respondents in that they have a common legal interest in relevant rights that are allegedly affected by the Respondents’ conduct and that it would be equitable and procedurally efficient to permit the proceedings to continue in the name of the multiple Complainants specified.
The Panel is also satisfied that the disputed domain names are subject to common control, this not having been denied by the Respondent (David Redshaw) in the Response, and that consolidation of the named Respondents into this proceeding is fair and equitable to all parties.
B. Supplemental Filing
The Complainant has made an unsolicited supplemental filing.
Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of supplemental filings. Paragraph 10(d) states: “The Panel shall determine the admissibility, relevance, materiality and weight of the evidence”. Paragraph 12 states: “In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties”.
The principles which the Panel should apply in deciding whether or not to admit supplemental filings have been considered in many cases under the Policy. See, e.g., The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447. The principles include: that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimize prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself.
Here, the filing is simply presented as a “reply” to the Response. The Complainant has not sought to establish any exceptional circumstances justifying the filing. Accordingly, the Panel declines to admit it.
C. Identical or Confusingly Similar
The Complainant plainly has rights in the marks BMW, MINI and ROLLS-ROYCE by virtue of its registered trade marks as well as unregistered trade mark rights deriving from the extensive and worldwide use of those names.
Paragraph 1.2 of WIPO Overview 2.0 makes clear that the threshold test for confusing similarity under the UDRP involves a comparison between the trade mark and the disputed domain name to determine likelihood of Internet user confusion and that, in order to satisfy this test, the relevant trade mark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion.
Paragraph 1.9 of WIPO Overview 2.0 adds that, in itself, the addition of merely generic, descriptive, or geographical wording to a trade mark in a domain name is normally insufficient to avoid a finding of confusing similarity and that panels have usually found the incorporated trade mark to constitute the dominant or principal component of the domain name.
Here, each of the disputed domain names consists of one of the Complainant’s distinctive trade marks followed by descriptive terms “enthusiasts club”, “owners club” or “motorcycle club”. In each case, the trade mark is undoubtedly the dominant component of the relevant disputed domain name and, as indicated in paragraphs 1.2 and 1.9 of WIPO Overview 2.0, the addition of the various descriptive terms is insufficient to avert a finding of confusing similarity.
Four of the disputed domain names are “.club” domain names. While, under the UDRP, the generic Top-Level Domain (“gTLD”) suffix has usually been disregarded when comparing disputed domain names and trade marks, in Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck, WIPO Case No. D2014-0206, the first UDRP case involving a “new” gTLD, the panel stated:
“The Panel finds that, given the advent of multiple new gTLD domain names, panels may determine that it is appropriate to include consideration of the top-level suffix of a domain name for the purpose of the assessment of identity or similarity in a given case, and indeed that there is nothing in the wording of the Policy that would preclude such an approach….”
In the circumstances of this case, the Panel considers it appropriate to take the “.club” suffix into account when assessing confusing similarity given that Respondent claims to have registered and used all of the disputed domain names as “car clubs”. In any case, even if one disregarded the “.club” suffix, that would not prevent a finding of confusing similarity given that the domain names would then be treated as comprising simply the Complainant’s mark plus the single descriptive term “owners” or “motorcycle”.
For the above reasons, the Panel concludes that the disputed domain names are confusingly similar to the Complainant’s trade marks.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
D. Rights or Legitimate Interests
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
The Respondent’s principal argument is that the Websites are operated as a “not-for-profit and non-political club network” because most of the car club members are free enthusiasts. It claims that only some 10% of the members are paid subscribers. The Respondent admits the use of the Websites for advertising by third parties both on the sites themselves and on other linked Respondent sites but says that the purpose is to enable the Respondent to pay the overheads associated with the Websites. The Respondent adds that the revenues are “not quite covering” the overheads at present.
The Respondent is effectively relying on paragraph 4(c)(iii) of the Policy: “…making a legitimate non-commercial 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 site should be actually in use, clearly distinctive from any official site, and non-commercial in nature. Panels have found that a claimed fan site which includes pay-per-click (PPC) links or automated advertising would not normally be regarded as a legitimate non-commercial site. However, some panels have recognized that a degree of incidental commercial activity may be permissible in certain circumstances (e.g., where such activity is of an ancillary or limited nature or bears some relationship to the site's subject).”
In the Panel’s view, the commercial activity on the Websites is more than “incidental”.
First, some of the Websites offer paid as well as free membership; in the Panel’s view that renders those sites “commercial” and it makes no difference that those sites also allow more limited free access or that only a relatively small proportion of the members of those sites are paid subscribers.
Second, as described in section 4 above, the Websites contain, or contained, a wide range of advertising and promotions including third party advertisements for assorted third party goods and services as well as many links to various other commercial sites of the Respondent. All of the Websites except “www.bmwmotorcycle.club” included a promotional page whose sole purpose was to drive traffic to the site of a third party insurance company, for which the Respondent admits that it receives a “donation” for each member who takes out a policy.
In the Panel’s view, the fact that a venture is loss-making cannot render it non-commercial as the Respondent appears to claims. In any event, it is not necessary for the Panel to reach any conclusion on this point because, while the Respondent has given some snippets of information about its receipts, it has by no means provided a full accounting of its revenues and overheads by reference to the Websites.
The Respondent compares the Websites with the site of another car club, which it claims to be authorised by the Complainant. That other site allegedly requires all users to subscribe and includes extensive third party advertising whereas the Respondent points out that it is treating its members more favourably as it does not insist that they all pay a membership fee. If that site is indeed authorised by the Complainant, that would immediately place it in different category to the Websites. In any case, it is not relevant for the Panel to consider, nor indeed is the Panel in a position to assess, whether other car clubs are behaving in a “more commercial” manner than the Respondent. The Panel is concerned only with the Websites.
Nor is the role of the Panel to consider what the ethos of car clubs should be or whether they should be independent of car manufacturers or the extent to which they should be offering free services to their members, all matters raised by the Respondent.
For reasons explained above, the Panel considers that the Complainant has established a prima facie that the Respondent lacks rights and legitimate interests and the Respondent has failed to establish “legitimate non-commercial or fair” use of the disputed domain names for the purposes of paragraph 4(c)(iii) of the Policy.
For the above reasons, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain names and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
E. Registered and Used in Bad Faith
The Panel considers that the Respondent has intentionally created a likelihood of confusion with the Complainant’s trade marks as follows.
First, in the case of “www.miniownersclub.net”, the Respondent used the Complainant’s official logo in the header of the home page, implying that it was an official MINI website.
Second, while the Respondent did not use official logos in the headers of the other Websites nonetheless, in the Panel’s view, the branding used by the Respondent on those sites, discussed in section 4 above, created a likelihood that a significant number of Internet users would think that those sites were also official. While the Respondent says that the public know that car owners’ clubs are owned and run by enthusiasts, the Respondent does not deny that there are official Rolls-Royce car clubs and the Respondent itself invokes another car club which claims to be an official BMW car club. In any case, the Respondent could and should have clarified the position by including a prominent disclaimer but, as explained above, it did not do so.
Third, the Panel considers that the Respondent’s liberal use of the Complainant’s trade marks on the Websites adds to the overall impression of an official connection with the Complainant. For example, three of the Websites used the titles “Rolls Royce Insurance”, “BMW Insurance” and “Mini Insurance” on pages designed to drive traffic to a third party insurance company.
Fourth, it is also relevant that two of the disputed domain names, <rollsroyceowners.club> and <rollsroyceenthusiastsclub.com>, reflect exactly the names of the official Rolls-Royce car clubs operated by the Complainant under these names at the websites “www.rroc.org” and “www.rrec.org.uk”, enhancing the likelihood of confusion.
For the above reasons, the Panel considers that the Respondent has intentionally attempted to attract Internet users to the websites for commercial gain by creating a likelihood of confusion with the Complainant’s trade marks in accordance with paragraph 4(b)(iv) of the Policy.
The Panel also considers that paragraph 4(b)(ii) of the Policy applies, namely that the Respondent registered the disputed domain names to prevent the Complainant from reflecting its trade marks in corresponding domain names and has engaged in a pattern of such conduct.
As mentioned above, the disputed domain names are part of a pattern of some 23 domain names, all reflecting the Complainant’s trade marks in the context of owner and enthusiasts’ clubs.
Two of the Respondent’s domain names, <rroc.co.uk> and <rrdc.co.uk>, correspond closely to the acronyms used for the Complainant’s official Rolls-Royce owners’ and enthusiasts’ car clubs at the websites “www.rroc.org” and “www.rrec.org.uk”.
And as mentioned above, the Respondent owns some 90 “.uk” domain names containing well-known third party trade marks, most of which consist of the name of car manufacturer plus descriptive terms such as those reflected in the disputed domain names, e.g., “owners club”, “enthusiasts club” etc. but some of which consist of unadorned third party trade marks or the names of well-known racing drivers, e.g. <harley-davidson.org.uk>, <”lewishamilton.org.uk>.
Finally, the Panel deals with some further contentions of the Respondent as follows.
The Respondent claims that the Complainant has unfairly singled out the Respondent when there are many other unofficial car club websites for the Complainant’s vehicles. However, as mentioned above, the Panel is not in a position to assess the legitimacy of those other sites or know why the Complainant has not pursued them, if they are illegitimate, or even to know whether the Complainant is aware of them. The role of the Panel is purely to assess the disputed domain names and the Websites.
The Respondent denies trade mark infringement and passing off but the Panel is concerned only with whether or not the disputed domain names have been registered and used in bad faith in accordance with the Policy.
The Respondent says that the Complainant failed to register the “.club” domain names during the applicable sunrise period. However, the fact that for whatever reason a trade mark owner has not registered one of the multiplicity of domain names in which its trade mark may conceivably be reflected, cannot of itself justify someone else later registering and using that domain name in bad faith.
In support of its argument that the Complainant has acquiesced in its activities Respondent relies upon the following facts: that the Respondent registered with, and was accepted by, the Complainant’s press media centres using a “rollsroyceownersclub.co.uk” email address and for some years the Respondent has continued to receive official press releases and other publicity materials to use on the Websites; that the Respondent’s Rolls-Royce club is listed on a number of the Complainant’s Twitter accounts; that the Respondent has LinkedIn connections with high-ranking Rolls-Royce personnel, who are allegedly aware of the Respondent’s network of sites; and that the Respondent has been invited to various promotional events organised by the Complainant. The Respondent sums it up by claiming that it has “worked well” with the Complainant for five years.
However, in the Panel’s view, the assertions and evidence provided by the Respondent fall well short of establishing actual knowledge of the Respondent’s activities by the Complainant let alone some form of mutual working relationship. In the Panel’s view, the Respondent has not established any more than that it was included in various automated marketing / PR systems of the Complainant resulting in mailshot and event invitations and possibly LinkedIn connections also. There is nothing to show that the Complainant was aware of the Respondent in any real sense and so it is unnecessary to consider further whether the Complainant can be said to have acquiesced in the Respondent’s activities and, if so, whether that is relevant to the issue of bad faith.
For the above reasons, the Panel finds that the Complainant has established the third element of 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 names, <bmwenthusiastsclub.com>, <bmwmotorcycle.club>, <bmwowners.club>, <minienthusiastsclub.com>, <miniowners.club>, <miniownersclub.net>, <rollsroyceenthusiastsclub.com>, <rollsroyceowners.club> be transferred to the First Complainant.
Date: July 3, 2015