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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Rolls-Royce Motor Cars v. DomainsByProxy, LLC / Eugenio Paolo Losa

Case No. D2019-0740

1. The Parties

The Complainant is Rolls-Royce Motor Cars of Farnborough, Hampshire, United Kingdom, represented by Kelly IP, LLP, United States of America (“United States”).

The Respondent is DomainsByProxy, LLC of Scottsdale, Arizona, United States of America / Eugenio Paolo Losa of Milan, Italy.

2. The Domain Name and Registrar

The disputed domain name <rolls-roycemotorcars.email> 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 April 2, 2019. On April 2, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 3, 2019, 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 April 4, 2019 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 April 5, 2019.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 5, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 25, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 26, 2019.

The Center appointed Syed Naqiz Shahabuddin as the sole panelist in this matter on May 9, 2019. 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 following summary sets out the uncontested factual submissions made by the Complainant:

The Complainant is a company, organized under the laws of England and Wales, that is active in the automobile sector as a manufacturer of, inter alia, luxury cars.

The Complainant owns the following registered trademarks for ROLLS-ROYCE mark:

- United States Registration No. 325,195 for the mark ROLLS-ROYCE, first used 1906, filed December 6, 1934, issued June 11, 1935, covering automobiles and chassis in International Class 12;

- United States Registration No. 3,148,743 for the mark ROLLS-ROYCE, first used 1906, filed November 9, 2005, issued September 26, 2006, covering automobiles and structural parts therefor in International Class 12; and

- European Union Trademark (“EUTM”) Registration No. 003384071 for the mark ROLLS-ROYCE, filed October 2, 2003, issued March 2, 2005, covering cars and parts therefor in International Class 12,

The Complainant also owns the following registered trademark for the ROLLS-ROYCE MOTOR CARS mark:

- EUTM Registration No. 010206233 for the mark ROLLS-ROYCE MOTOR CARS, filed August 19, 2011, issued January 24, 2012, covering automobiles and automobile parts in International Class 12.

The ROLLS-ROYCE mark and ROLLS-ROYCE MOTOR CARS mark shall hereinafter be collectively referred to as the “Complainant’s Marks”.

In addition, the Complainant owns a domain name related to the Complainant’s Marks, that being <rolls-roycemotorcars.com>.

The Complainant has also permitted authorized dealers to use domains comprised of the Complainant’s Marks along with geographical descriptions, such as <rolls-roycemotorcars-mexicocity.com>, <rolls-roycemotorcars-manhattan.com> and <rollsroycemotorcars-london.co.uk>.

The disputed domain name was registered on November 23, 2018. As of the date of the decision, the disputed domain name appears to resolve to the Complainant’s website, specifically the following URL: “https://www.rolls-roycemotorcars.com/en-GB/home.html”.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has rights in the trademarks listed in section 4 above and has produced the relevant trademark certificates and proof of use.

The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s Marks as if it is constituted entirely of the Complainant’s ROLLS-ROYCE MOTOR CARS mark. The Complainant has referred this Panel to a previous panel decision, Rolls-Royce Motor Cars v. Zhao Zhong Xian, WIPO Case No. D2017-0525 (<rolls-roycemotorcars.space>, <rolls-roycemotorcars.tech>, <rolls-roycemotorcars.website>, <rollsroycemotorcars.website>), where the Complainant’s rights in other domain names which wholly incorporated the Complainant’s Marks were confirmed by that panel.

The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant contends that the Respondent has no connection or affiliation with the Complainant and has not received any authorization to use the Complainant’s Marks, nor is the Respondent commonly known by the disputed domain name.

The Complainant further contends that the Respondent has used and registered the disputed domain name in bad faith. The Complainant submits that the Complainant’s Marks are famous and predate the registration of the disputed domain name. As a result, the Respondent clearly is aware of the Complainant and the Complainant’s Marks and was intentionally attracting Internet users by creating a likelihood of confusion as to the source, sponsorship, affiliation, and/or endorsement of the Respondent’s activities. As such, the Complainant has indicated that the Respondent is falsely impersonating and passing off as the Complainant. Further, the Complainant contends that the Respondent’s use and registration disrupts the Complainant’s business.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel is satisfied with the evidence adduced by the Complainant to establish its rights to the Complainant’s Marks through its abovementioned registrations in the United States and the European Union.

The disputed domain name comprises the ROLLS-ROYCE MOTOR CARS mark in its entirety and only differs by the generic Top-Level Domain (“gTLD”) “.email”. This Panel agrees that a gTLD indicator such as “.email” cannot be taken into consideration in this case when judging confusing similarity and is guided by the decision in O2 Holdings Limited v Yoyo.email / Giovanni Laporta, WIPO Case No. D2014-1399, where that panel held that “[t]he gTLD “.email” does not carry any distinguishing weight.”

The disputed domain name also wholly incorporates the ROLLS-ROYCE mark and differs only by the addition of the word “motorcars” and the gTLD “.email”. The Panel has dealt with the issue of the gTLD above. With respect to the word “motorcars”, the Panel is guided by the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Under section 1.8 of the WIPO Overview 3.0, it states that:

“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”

This Panel refers to the decision of M/s Daiwik Hotels Pvt. Ltd. V Senthil Kumaran S, Daiwik Resorts, WIPO Case No. D2015-1384 (<daiwikresorts.com>) where that panel held that:

“it is a well accepted proposition that a domain name that contains a complainant’s trademark along with a generic word that describes its services, sufficiently satisfies the requirement that the disputed domain name is confusingly similar to the complainant’s mark”

As such, the Panel finds that the Complainant has proved that the disputed domain name is confusingly similar to both the ROLLS-ROYCE MOTOR CARS mark and the ROLLS-ROYCE mark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

It is well settled that a complainant may put forward a prima facie case that the respondent lacks rights or legitimate interests in a domain name. The burden of production then shifts to the respondent to produce evidence demonstrating rights or legitimate interests in respect of the disputed domain name in order to rebut that prima facie case. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of WIPO Overview 3.0 and Universal City Studios, Inc. v. G.A.B. Enterprises, WIPO Case No. D2000-0416.

The Panel is satisfied with the unrebutted evidence adduced by the Complainant in support of its prima facie case. Based on the absence of a response and the absence of any nexus between the disputed domain name and the Respondent’s name, the Panel could not find any justification, rights, or legitimate interests on the part of the Respondent to the disputed domain name. The notoriety of the Complainant’s ROLLS-ROYCE and ROLLS-ROCYE MOTOR CARS marks would present a significant hurdle for the Respondent to justify rights or legitimate interests to the trademark without submitting compelling reasons to this Panel to conclude otherwise.

The Panel also takes cognizance that there have also been several UDRP decisions relating to the Complainant’s Marks whereby the panels recognized the Complainant’s rights thereof. In addition to (<rolls-roycemotorcars.space>, <rolls-roycemotorcars.tech>, <rolls-roycemotorcars.website>, <rollsroycemotorcars.website> as mentioned above, panels have also recognized the Complainant’s rights to the Complainant’s Marks in decisions such as Rolls Royce Motor Cars Limited v. Zhao Ke, WIPO Case No. DNL2015-0062 (<rolls-roycemotorcars.nl>) and Rolls-Royce Motor Cars Limited v. Zhao Ke, WIPO Case No. DMX2016-0006 (<rolls-roycemotorcars.mx>).

Further, there is also no evidence to indicate that the Respondent is an authorized dealer of the Complainant nor is the Respondent known by the name “rolls”, “royce”, “motorcars” or any combination thereof.

In the circumstances, the Panel is, therefore, satisfied that the second element of paragraph 4(a) of the Policy has been proven by the Complainant.

C. Registered and Used in Bad Faith

The Panel agrees with the contention by the Complainant that the Respondent had or should have had knowledge of the Complainant’s Marks when it registered the disputed domain name. The factors that were taken into account to arrive at this conclusion include the date of registration of the disputed domain name which was much later than the date the Complainant registered the Complainant’s Marks and the widespread use of the Complainant’s Marks by the Complainant at an international level.

Indeed, the Panel takes cognizance that the Complainant has registered their ROLLS-ROYCE mark as early as 1935. As such, the Panel is satisfied that the Respondent had or should have had knowledge of the reputation and goodwill of the ROLLS-ROYCE mark when it sought to register the disputed domain name. By including the additional word “motorcars”, which comprises of the Complainant’s ROLLS-ROYCE MOTOR CARS mark in its entirely, and which this Panel also observes forms the legal name of the Complainant, the Respondent had been attempting to misrepresent a connection with the Complainant when in fact no such connection existed.

The fact that the Respondent’s website merely redirects users to the Complainant’s website does not preclude the Panel from making a finding of bad faith. Indeed, pursuant to the WIPO Overview 3.0, section 3.1.3: “panels have found that a respondent redirecting a domain name to the complainant’s website can establish bad faith insofar as the respondent retains control over the redirection thus creating a real or implied ongoing threat to the complainant”. See also: One2move International ApS v. One2Move, WIPO Case No. D2018-2117 (<one2move.com>).

In light of the above, the Panel finds that bad faith has been demonstrated under paragraph 4(b) of the Policy and that the third element of paragraph 4(a) of the Policy has been met.

7. Decision

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-roycemotorcars.email> be transferred to the Complainant.

Syed Naqiz Shahabuddin
Sole Panelist
Date: May 13, 2019

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