WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Rolls-Royce Motor Cars Limited v. S Wagle a/k/a Sudhakar Wagle

Case No. D2020-1768

1. The Parties

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

The Respondent is S Wagle a/k/a Sudhakar Wagle, United States.

2. The Domain Name and Registrar

The disputed domain name <rollsroyceghost.com>, <rollsroyceghost.org>, and <rollsroycewraith.org> are registered with GoDaddy.com, LLC

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2020. On July 8, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 9, 2020, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 6, 2020. The Respondent submitted the Response on August 5, 2020.

The Center appointed Luca Barbero as the sole panelist in this matter on August 21, 2020.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 August 11,2020, the Complainant filed a Supplemental Filing, rebutting all Respondent’s allegations.

On August 13, 2020, the Respondent filed a Supplemental Filing, in which it sent copies of email exchanges regarding the sale of the disputed domain name <rollsroyceghost.com>.

4. Factual Background

The Complainant, whose ROLLS-ROYCE brand traces its origins to 1904, is one of the most successful and best-known manufacturers of ultra-luxury automobiles in the world. Its automobiles are hand-built at the Complainant’s state-of-the-art manufacturing facility in the United Kingdom.

In the 1990’s, Bayerische Motoren Werke AG (“BMW”) acquired the rights to produce ROLLS-ROYCE automobiles. The Complainant, as wholly owned subsidiary of BMW, is the exclusive manufacturer of ROLLS-ROYCE automobiles, and has been since 2003. The Complainant markets and distributes its ROLLS-ROYCE automobiles through a network of 150 authorized dealers worldwide. Under its trademark ROLLS-ROYCE, the Complainant enjoys and has enjoyed for years a high level of commercial success at the pinnacle of the luxury car market.

The Complainant’s automobiles are offered under the trademark ROLLS-ROYCE as well as additional trademarks that identify specific models. In particular, the Complainant offers cars under the trademarks GHOST and WRAITH, which are related to the Complainant’s iconic brands SILVER GHOST and SILVER WRAITH.

In April 2009, the Complainant announced its new GHOST model at the biennial international auto show in Shanghai. This model, including its planned release in the United States in 2010, received substantial publicity from the time of its announcement to this day from numerous and diverse media sources.

On January 18, 2013, the Complainant announced its new WRAITH model, at the Rolls-Royce World Dealer Conference in London and via press release. On January 22, 2013, the Complainant published a second press release which included it first publicity image of the WRAITH automobile. Such announcements immediately received substantial publicity from numerous and diverse media sources such as national and auto-industry news outlets that reached many millions of people.

The Complainant is the owner of several trademark registrations for the trademark ROLLS-ROYCE, including but not limited to the following, as per trademark certificates submitted as annexes to the Complaint:

- United States Trademark registration No. 0325195 for ROLLS-ROYCE (figurative mark), filed on December 6, 1934 and registered on June 11, 1935, in International Class 12;

- United States Trademark registration n. 3148743, for ROLLS-ROYCE (word mark), filed on November 9, 2005 and registered on September 26, 2006 in International Class 12;

In addition, the Complainant’s parent company BMW is the owner of the following trademark registrations, that are exclusively licensed to the Complainant:

- United States trademark registration No. 3468371 for GHOST (word mark), filed November 21, 2007 and registered on July 15, 2008, in International classes 12 and 28;

- German trademark registration No. 30733616 for SILVER GHOST (word mark), filed on May 23,

2007 and registered on Jun 30, 2007, in international classes 12 and 28;

- United States trademark registration No. 4303425 for the WRAITH (word mark), filed on July 3, 2012 and registered on March 19, 2013, in international class 12;

- International trademark registration No. 1128868 for the WRAITH (word mark), registered on July 3,

2012, in international class 12;

- United States trademark registration No. 1082440 for the SILVER WRAITH (word mark), filed on March 16, 1977, and registered on January 17, 1978, in international class 12.

The Complainant is also the owner of the domain name <rolls-roycemotorcars.com>, which was registered on September 26, 1996 and is used by the Complainant to promote its products under the trademark ROLLS-ROYCE.

The disputed domain names <rollsroyceghost.com>, registered on October 23, 2010, and <rollsroyceghost.org>, registered on January 22, 2013, are pointed to self-declared “fan” sites consisting of a static page displaying images of ROLLS-ROYCE cars and a statement “Welcome to my Rolls Royce Ghost fan page... If you are interested in going to the Official Rolls Royce Website, please click HERE!” including a link to the Complainant’s official website “www.rolls-roycemotorcars.com”. The domain name <rollsroycewraith.org>, registered on January 22, 2013, is currently pointed to a website displaying a blank page with the text: “pageok”.

5. Parties’ Contentions

A. Complainant

The Complainant contends that disputed domain names <rollsroyceghost.com>, <rollsroyceghost.org> and <rollsroycewraith.org> are confusingly similar to the trademark ROLLS-ROYCE in which it has rights as they reproduce the trademark in its entirety with the mere addition of the terms “ghost” and “wraith”, which have an obvious connection to the Complainant’s business identifying the car models GHOST and WRAITH, and the generic Top Level Domains (“gTLD”) “.com” and “.org”.

With reference to rights or legitimate interests in respect of the disputed domain names, the Complainant states that the Respondent’s offer to sell <rollsroyceghost.com> and, by extension, also <rollsroyceghost.org> and <rollsroycewraith.org>, does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use.

The Complainant claims that the use of <rollsroyceghost.com> and <rollsroyceghost.org> for purported self-declared “fan” sites, also does not constitute a bona fide offering of goods or services, as also in the case of the third disputed domain name <rollsroycewraith.org>, which instead, is being held passively. The Complainant further underlines that the Respondent is not and has not been commonly known by the disputed domain names.

With reference to the circumstances evidencing bad faith, the Complainant indicates that the Respondent registered the disputed domain names with the intent of preventing the Complainant from reflecting its trademark ROLLS-ROYCE, in particular in relation to the Complainant’s GHOST and WRAITH, ROLLS-ROYCE models, in corresponding domain names. The Complainant emphasizes that this is not the first time that the Respondent has engaged in such pattern and that such conduct constitutes further evidence of the Respondent’s bad faith.

The Complainant asserts that the Respondent registered the disputed domain names in opportunistic bad faith considering the dates of registration happen to be only days after the Complainant announced its new GHOST and WRAITH models, receiving substantial publicity, public interest and attention from such announcement. The Complainant submits that the Respondent’s offer to sell the first disputed domain name and, by extension the second and third disputed domain names as well, also constitutes evidence of the Respondent’s bad faith.

In view of the Complainant, the Respondent’s registration and use of the disputed domain names constitute bad faith also because the Respondent is using the disputed domain names to intentionally attract Internet users by creating a likelihood of confusion with the Complainant’s famous and registered trademark ROLLS-ROYCE as to the source, sponsorship, affiliation, and/or endorsement of the Respondent’s website and activities.

Moreover, the Complainant states that not only the Respondent’s registrations and use of the first two disputed domain names should be seen as constituting bad faith, since the Respondent is disrupting the Complainant’s business by competing with the Complainant for Internet traffic, interfering with the Complainant’s ability to control use of its federally registered trademark ROLLS-ROYCE, but also that even the passive holding of the third disputed domain name constitutes bad faith.

Lastly, the Complainant highlights that the Respondent was undoubtedly well aware of the Complainant’s trademarks and world renown, when registering the disputed domain names and that, in doing so, the Respondent proved to be acting in opportunistic bad faith.

B. Respondent

The Respondent replied to the Complainant’s contentions denying all allegations and stating as follows.

The Respondent claims that the disputed domain names are not identical to any of the Complainant’s trademarks as the Complainant does not hold a single trademark comprising both of the names ROLLS-ROYCE and the words GHOST or WRAITH, but has submitted evidence only of separate trademark registrations either for ROLLS-ROYCE, or for GHOST, SILVER GHOST, WRAITH, and SILVER WRAITH.

The Respondent further states that it registered the disputed domain names in good faith, with the sole intention of using them in connection with genuine noncommercial fan sites to pay tribute to the Complainant’s models GHOST and WRAITH.

Moreover, the Respondent claims that it registered the disputed domain names without the intention of profiting in any way from the Complainant’s world renown and that it added a disclaimer on its website (reading “if you are interested in going to the Rolls Royce website, click HERE) redirecting to the Complainant’s website.

The Respondent further asserts that the Complainant’s claims are barred by laches as the Complainant has waited seven to ten years to bring up its Complaint against the disputed domain names, and that in its claims the Complainant provided no explanation for its delay in bringing up the present action.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the disputed domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) that the disputed domain names have been registered and are being used in bad faith.

6.1. Preliminary procedural issues

A. Consolidation of multiple Respondents.

Paragraph 10(e) of the Rules provides that a panel shall decide a request by a party to consolidate multiple domain name disputes in accordance with the Policy and the Rules.

As stated in section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario. Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants’ identity(ies) including pseudonyms, (ii) the registrants’ contact information including email address(es), postal address(es), or phone number(s), including any pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., <mark-country> or <mark-goods>), (vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue, (viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s), (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior) pattern of similar respondent behavior, or (xi) other arguments made by the complainant and/or disclosures by the respondent(s).”

The Complainant asserted that the registrants of the disputed domain names are one-and-the-same and/or acting in concert, as shown by the registrants’ identical surnames and identical contact information in the WhoIs records.

Based on the commonalities of the registrant information for the disputed domain names as highlighted by the Complainant and the fact that the Respondent confirmed to be the owner of the three disputed domain names, the Panel finds that they are indeed registered and controlled by the same domain holder and that, therefore, consolidation of the multiple domain names is appropriate in this case and is consistent with the Policy and Rules as well as with prior relevant UDRP decisions in this area (see, amongst others, Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281).

B. Supplemental Filings

No provision concerning supplemental filings are made in the Rules or Supplemental Rules, except at the request of the panel according to paragraph 12 of the Rules, which states the panel, in its sole discretion, may request any further statements or documents from the parties it may deem necessary to decide the case.

According to paragraph 10 of the Rules, the Panel has the authority to determine the admissibility, relevance, materiality and weight of the evidence, and also to conduct the proceedings with due expedition, ensuring that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.

As stated in the WIPO Overview 3.0, unsolicited supplemental filings are generally discouraged – unless specifically requested by the panel – and the party submitting an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response.

Accordingly, UDRP panels generally accept supplemental filings only when they provide material new evidence or a fair opportunity to respond to arguments that could not reasonably have been anticipated. See, along these lines, Welcomemat Services, Inc. v. Michael Plummer jr., MLP Enterprises Inc., WIPO Case No. D2017-0481.

In the case at hand, the Panel notes that none of the Respondent’s arguments in the Response was unforeseeable and finds that the Complainant’s supplemental submission is not grounded on evidence that was not available to the Complainant when the Complaint was filed. Moreover, the Complainant’s Supplemental Filing substantially reiterates the arguments already raised in the Complaint, and not considering such supplemental submission does not at all impact on the Panel’s findings under the next sections.

The Panel notes that also the Respondent’s Supplemental Filing, consisting in correspondence concerning the disputed domain name exchanged between the Respondent and a third party in 2012, could have been submitted by the Respondent at the time of the filing of its Response. Therefore, the Panel has decided not to admit such submission, noting, however, that considering it would not have changed the outcome of the case.

6.2. Substantive Issues

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established rights over the trademark ROLLS-ROYCE based on the trademark registrations cited under section 4 above and the related trademark certificates submitted as annexes to the Complaint.

Moreover, the Panel finds that the Complainant has also established rights over the trademarks GHOST and WRAITH, formally registered by the Complainant’s parent company BMW and exclusively licensed to the Complainant. As stated in section 1.4.1 of the WIPO Overview 3.0,”a trademark owner’s affiliate such as a subsidiary of a parent or of a holding company, or an exclusive trademark licensee, is considered to have rights in a trademark under the UDRP for purposes of standing to file a complaint”.

In addition, as highlighted in section 1.7 of the WIPO Overview 3.0, the first element functions primarily as a standing requirement, and the threshold test for confusing similarity typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.

In the case at hand, the Complainant’s trademark ROLLS-ROYCE is entirely reproduced in the disputed domain names, with the mere deletion of the hyphen between the two words constituting the trademark and the addition of the trademarks GHOST and WRAITH, corresponding to the name of Complainant’s car models, and the gTLDs “.com” and “.org”, which are commonly disregarded under the first element confusing similarity test (section 1.11 of the WIPO Overview 3.0).

In view of the above, the Panel finds that the Complainant has proven that the disputed domain names are confusingly similar to the trademarks in which the Complainant has established rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent may establish a right or legitimate interest in the disputed domain names by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

“(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 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.”

In the case at hand, the Complainant has made a prima facie case and the Respondent has failed to raise any convincing circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain names.

The Panel notes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks. Moreover, there is no element from which the Panel could infer a Respondent’s right over the disputed domain names, or that the Respondent might be commonly known by the disputed domain names.

As to the Respondent’s claim that it is a fan of the Complainant’s models and only intended to build websites dedicated to fans of such models, the Panel notes that the right to operate a community or fan site does not extend to registering and using a domain name matching a third-party trademark, since the such domain name may be misunderstood by Internet users as being sponsored or endorsed by the trademark owner. The Panel notes that the composition of the disputed domain names carries also a high risk of implied affiliation with the Complainants.

In addition, noting the nature of the disputed domain names, the Panel finds that the inclusion of a disclaimer – such as it is, visible to Internet users once they land on the homepage, is not capable to prevent the risk of implied affiliation or association with a complainant and its trademark.

As stated in section 2.7 of the WIPO Overview 3.0, “for purposes of assessing fair use under UDRP paragraph 4(c)(iii), a respondent’s fan site must be active, genuinely noncommercial, and clearly distinct from any official complainant site. Again, similar to claimed criticism sites, there are a number of UDRP cases in which the respondent claims to have a true fan site but the panel finds that it is primarily a pretext for cybersquatting or commercial activity. 2.7.2 Where a domain name which is identical to a trademark (i.e., <trademark.tld>) is being used in relation to a genuine noncommercial fan site, panels have tended to find that a general right to operate a fan site (even one that is supportive of the mark owner) does not necessarily extend to registering or using a domain name that is identical to the complainant’s trademark, particularly as the domain name may be misunderstood by Internet users as being somehow sponsored or endorsed by the trademark owner. (See discussion of inter alia misrepresentation at section 2.5 above.) In such cases, where the domain name is identical to the trademark, panels have also noted that this prevents the trademark holder from exercising its rights to the mark and so managing its presence on the Internet, including through a corresponding email address. However, as with criticism sites, in certain cases involving parties exclusively from the United States, some panels applying U.S. First Amendment principles have found that even a domain name identical to a trademark used for a bona fide noncommercial fan site may support a legitimate interest. 2.7.3 Where the domain name is not identical to the complainant’s trademark, i.e., it comprises the mark plus an additional, typically descriptive or laudatory term (e.g., <celebrity-fan.tld>), noting the factors listed above at section 2.5.2, panels tend to find that the respondent has a legitimate interest in using the mark as part of the domain name for a fan site if such use is considered to be fair in all of the circumstances of the case. Where such a site is noncommercial in nature, this would tend to support a finding that the use is a fair one. Some panels have found in such cases that a limited degree of incidental commercial activity may be permissible in certain circumstances (e.g., to offset registration or hosting costs associated with the domain name and website)”.

In the case at hand, as mentioned above, the disputed domain names <rollsroyceghost.com> and <rollsroyceghost.org> both point to a self-declared “fan” site consisting only of a static page displaying photographs of ROLLS-ROYCE cars and the following text “Welcome to my Rolls-Royce Ghost fan page…If you are interested in going to the Official Rolls-Royce Website, please click HERE!” with a link to the Complainant’s official website.

In view of the above and of the fact that the disputed domain name <rollsroycewraith.com> was offered for sale by the Respondent at USD 99,999 on the Registrar’s auction website, the Panel finds that the Respondent, on balance of probabilities, did not intend to register the disputed domain names for use in connection with genuine fan sites but in order to attempt to derive profits from the sale of the disputed domain names to the Complainant.

As far as the disputed domain name <rollsroycewraith.org> is concerned, the Panel notes that the disputed domain name is passively held. The Panel shares the view held in Teachers Insurance and Annuity Association of America v. Wreaks Communications Group, WIPO Case No. D2006-0483, where the Panel found that “passive holding of a Domain Name does not constitute “legitimate noncommercial or fair use. See Euromarket Designs, Inc. v. Domain For Sale VMI, WIPO Case No. D2000-1195 (October 26, 2000) (noting that respondent was a passive holder of the Domain Name <crateandbarrel.org> in that “the Domain Name does not resolve to a site” and ruling that, “given that the Domain Name has been registered since mid-March, 2000, it is fair to infer that the Respondent has not made, nor taken any preparatory steps to make,” any legitimate use of the Domain Name); Netcentives, Inc. v. B.W. Brody Co., WIPO Case No. D2000-0672 (finding that the complainant made the requisite showing under paragraph 4(a)(ii) where complainant argued that the Domain Name at issue had no value to the respondent apart from the goodwill and reputation associated with complainant’s mark).”

Therefore, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in the disputed domain names according to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain names were registered and are being used by the Respondent in bad faith.

As to bad faith at the time of the registration, the Panel notes that, in light of i) the well-known character of the Complainant’s trademark ROLLS-ROYCE, ii) the combination of the Complainant’s trademark with the trademarks GHOST and WRAITH registered by the Complainant’s parent company and identifying famous car models of the Complainant and iii) the registration of the disputed domain names shortly after the Complainant’s announcement of its new models, the Respondent was more likely than not aware of the Complainant’s trademark at the time of registration.

The Respondent’s reference to the Complainant’s trademark and products on the websites to which the disputed domain names <rollsroyceghost.com> and <rollsroyceghost.org> resolve confirms that the Respondent was indeed well aware of the Complainant, its trademarks and products.

The Panel also notes that the circumstances of the case suggest that the Respondent did not register and use the disputed domain names for a legitimate purpose without intent to mislead Internet users and trade upon the Complainants’ trademarks, but rather to sell the disputed domain names to the Complainant for a profit.

Indeed, the evidence on records shows that at least one of the disputed domain names, <rollsroyceghost.com> was offered for sale by the Respondent for an amount (USD 99,999) well in excess of typical out-of-pocket costs.

Moreover, in view of the notoriety of the Complainant’s trademark, the Panel finds that the Respondent acted in opportunistic bad faith at the time of registration, since the disputed domain names are so obviously connected with the Complainant that its selection by the Respondent, who has no connection with the Complainant, suggests the disputed domain names were registered with a deliberate intent to create an impression of an association with the Complainant.

In addition, according to section 3.1.2 of the WIPO Overview 3.0, “UDRP panels have held that establishing a pattern of bad faith conduct requires more than one, but as few as two instances of abusive domain name registration. This may include a scenario where a respondent, on separate occasions, has registered trademark-abusive domain names, even where directed at the same brand owner. A pattern of abuse has also been found where the respondent registers, simultaneously or otherwise, multiple trademark-abusive domain names corresponding to the distinct marks of individual brand owners”.

In the case at hand, the Panel finds that the Respondent registered the disputed domain names in order to prevent the Complainant from reflecting its trademark in corresponding domain names and has engaged in a pattern of such conduct according to paragraph 4(b)(ii) of the Policy, since he registered three domain names incorporating the Complainants’ trademarks.

As to the pointing of the disputed domain names <rollsroyceghost.com> and <rollsroyceghost.org> to an alleged fan site, as highlighted above, the Panel finds that such (as with the redirection via a link on such page) is not sufficient to justify the Respondent’s claims for rights or legitimate interests in the disputed domain names. The Panel also finds that the Respondent’s use of these disputed domain names shows its intention to attempt users to its websites by causing confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Complainant’s websites according to paragraph 4(b)(iv) of the Policy. The Panel notes that the Respondent’s statements on the websites to which the disputed domain names resolve (“Welcome to my Rolls Royce Ghost fan page... If you are interested in going to the Official Rolls Royce Website, please click HERE!”) are insufficient to cure likely confusion.

With reference to the disputed domain name <rollsroycewraith.org>, which has not been used in connection with an active website, the Panel finds that in addition to the pattern at play here, in light of the circumstances of the case, such “passive holding” does not prevent a finding of bad faith. As also established in a number of prior cases the concept of “bad faith use” in paragraph 4(b) of the Policy includes not only positive action but also passive holding; see the landmark case Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

The Panel also finds that the delay between the registration of the disputed domain names and the filing of the Complaint does not bar the Complainant from prevailing on the merits. As stated in section 4.17 of the WIPO Overview 3.0, “Panels have noted that the UDRP remedy is injunctive rather than compensatory, and that a principal concern is to halt ongoing or avoid future abuse/damage, not to provide equitable relief. Panels have furthermore noted that trademark owners cannot reasonably be expected to permanently monitor for every instance of potential trademark abuse, nor to instantaneously enforce each such instance they may become aware of, particularly when cyber squatters face almost no (financial or practical) barriers to undertaking (multiple) domain name registrations. Panels have therefore declined to specifically adopt concepts such as laches or its equivalent in UDRP cases”.

Therefore, the Panel finds that the Complainant has also demonstrated that the Respondent registered and is using the disputed domain names in bad faith according to paragraph 4(a)(iii) of the Policy.

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 names, <rollsroyceghost.com>, <rollsroyceghost.org>, and <rollsroycewraith.org> be transferred to the Complainant.

Luca Barbero
Sole Panelist
Date: September 7, 2020