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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Jaguar Land Rover Limited v. Downshire Motors (Service) Pty Ltd

Case No. DAU2015-0039

1. The Parties

The Complainant is Jaguar Land Rover Limited of Coventry, United Kingdom of Great Britain and Northern Ireland (the “United Kingdom” or “UK”), represented by Phillips Ormonde & Fitzpatrick, Australia.

The Respondent is Downshire Motors (Service) Pty Ltd of East Malvern, Australia, internally represented.

2. The Domain Name and Registrar

The disputed domain name <jaguarservice.net.au> is registered with Web Address Registration Pty Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2015. On October 28, 2015, the Center transmitted by email to Web Address Registration Pty Ltd a request for registrar verification in connection with the disputed domain name. On October 29, 2015, Web Address Registration Pty Ltd 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 .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 November 4, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was November 24, 2015. The Response was filed with the Center on November 23, 2015.

The Center appointed William Van Caenegem as the sole panelist in this matter on December 1, 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

The Complainant is the registered owner of Australian trade mark No. 83411 for JAGUAR for motor vehicles and parts and fittings thereof included in class 12, first registered in 1945. The Complainant is also the registered owner of Australian trade mark No. 424480 for JAGUAR in class 37 for repair, maintenance, cleaning and polishing of motor vehicles. The Complainant is the registered owner of United Kingdom trade mark No 625805 for JAGUAR in class 12 for motor land vehicles, and United States trade mark No. 0423961 for JAGUAR in class 12 for automobiles and parts thereof.

The disputed domain name was registered on May 23, 2011.

5. Parties’ Contentions

A. Complainant

The Complainant is the leading car manufacturer in the United Kingdom where it employs approximately 20,000 people. It manufactures what it refers to as premium saloon and sports cars and sports utility vehicles and has done so for many years. It is the registered owner of the JAGUAR word mark in a large number of jurisdictions in relation to motor vehicles and their maintenance and repair. The Complainant also asserts that it has extensive common law rights in the JAGUAR trade mark as it has acquired an extensive reputation in the UK, the United States, the European Union, Australia and the rest of the world. The Complainant contends that its JAGUAR trade mark is very well-known in relation to automobiles, their sale and their servicing and maintenance. The Complainant’s advertising expenditure is said to be very extensive, amounting to AUD 15 million in Australia between 2009 and 2014. The Complainant asserts that it has won numerous awards for its vehicles and has maintained a presence at important motor shows. The Complainant also refers to its extensive web presence with country specific websites such as “www.jaguar.com.au” for customers in a number of countries. The Complainant’s main website (at “www.jaguar.com”) has been operating since at least 1998.

According to the Complainant, the term “service” used in combination with the word “Jaguar” signifies a reference to the servicing of Jaguar brand vehicles. More relevantly, the Complainant asserts that consumers have long recognised the JAGUAR trade mark as identifying and distinguishing its automobile products and services, and its authorised representatives alone. The Complainant cites the panel decision in Automobili Lamborghini S.p.A v. Louis Rich, J L Rich, WIPO Case No. D2014-1259, in which the domain name <lamborghinisydneyservice.com> was found to be confusingly similar to the trade mark LAMBORGHINI.

Further the Complainant contends that the dominant and distinctive element of the disputed domain name is the JAGUAR trade mark, and that the disputed domain name is confusingly similar to the names and trade marks the Complainant has rights in.

The Complainant asserts that it has not licensed or otherwise permitted the Respondent to use the JAGUAR trade mark or to apply for or use any domain name incorporating that term. According to the Complainant it is inconceivable that the Respondent did not know of the Complainant’s rights and interests in the JAGUAR trade mark prior to registration of the disputed domain name.

Further, according to the Complainant the Respondent is an independent repairer of Jaguar brand vehicles, and not an authorised service agent. The Respondent does not trade under the name “Jaguar Service”, and has its website at “www.downshiremotors.com.au”. Nor is it or has it ever been known by the disputed domain name.

The Complainant also states that to its knowledge the Respondent has never used the disputed domain name which at present resolves to a page that states that it has been suspended. The Complainant maintains that there is no evidence that the Respondent has used or made demonstrable preparations to use the disputed domain name or any name corresponding to it in connection with the bona fide offering of goods or services.

The Complainant also asserts that there is no connection between the Respondent and any authorised service agents for the service and maintenance of JAGUAR vehicles. The word “jaguar” is said to be associated exclusively with the Complainant, the Respondent not having acquired any trade mark or service mark rights in the disputed domain name. According to the Complainant the Respondent cannot establish any rights or legitimate interests as it is not distributing the Complainant’s products: it only provides car maintenance services which are not in any way associated with the Complainant.

The Complainant asserts that it is common practice for the webpage that deals with car servicing within the website of an authorised dealer to be associated with a URL which incorporates the word “service”, as is for example the case with the Complainant’s authorised servicing agent in the suburb of Brighton in Victoria, Australia, which contains the page: “www.brightonjaguar.com.au/jaguar/service.asp”. The Complainant asserts that it uses the trade mark JAGUAR in relation to the services of maintenance and servicing of Jaguar brand vehicles, for which purposes it licenses its JAGUAR trade mark to dealers who are authorised to provide such services. Such dealers have specially trained technicians who use the Complainant’s latest diagnostic equipment, and only authorised parts and accessories.

Accordingly the Complainant asserts that the Respondent’s registration of the disputed domain name precludes the Complainant from using or permitting its authorised distributors to use it in connection with a bona fide offering of car servicing and maintenance services. This has the effect of disrupting the business of the Complainant in Australia.

Further, according to the Complainant the Respondent’s use of the disputed domain name without any disclaimer would indicate to members of the public that the disputed domain name and any website to which it resolves are either registered to, operated or authorised by or otherwise connected with the Complainant, when that is not the case. According to the Complainant, its JAGUAR trade mark has a very strong reputation and is widely known.

The Complainant contends that the Respondent has provided no evidence of actual or contemplated good faith use of the disputed domain name, and the Respondent is in direct business competition with authorised service agents of the Complainant. According to the Complainant all these factual circumstances support a bad faith finding.

B. Respondent

The Respondent (Downshire Motors (Service) Pty Ltd) asserts that it has been an established independent service center for the service and restoration of Jaguar cars since 1960. Its reputation is said to be based on Jaguar cars. The Respondent contends that the disputed domain name is relevant to its business as an independent Jaguar repairer and was registered with a number of other domain names relevant to its business (the Respondent does not identify these).

The Respondent maintains that the disputed domain name was available for registration in 2011 and registered in good faith as it relates to the Respondent’s core business, the servicing of Jaguar cars. The Respondent asserts that it has never insinuated that it was affiliated with the Complainant and that the availability for registration of the disputed domain name in 2011 leads it to conclude that there is no conflict with the Complainant.

The Respondent thus requests that the Complaint be rejected.

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain name is not identical to the Complainant’s JAGUAR trade mark. However, the disputed domain name incorporates the term “jaguar” as its initial and most prominent part. The addition of the generic term “service” is insufficient to distinguish the disputed domain name from the Complainant’s trade mark and dispel any consumer confusion about the existence of a connection with the Complainant. Although the term “jaguar” is itself an ordinary English word signifying a large feline, the addition of the term “service” effectively dispels any notion that the disputed domain name or any website that may be associated with it concerns such animals. The trade mark JAGUAR has well established goodwill amongst consumers in Australia as elsewhere in relation to motor vehicles. Where it is associated with the term “service” in a domain name the suggestion of some connection with the Complainant is further reinforced (such connection does not in fact exist).

Therefore the Panel holds that the disputed domain name is confusingly similar to the Complainant’s JAGUAR trade mark.

B. Rights or Legitimate Interests

The Complainant asserts that its trade mark rights extend not only to the sale of Jaguar motor vehicles and parts but also to the servicing of Jaguar motor cars. It has registered its JAGUAR trade mark in relation to motor vehicle servicing, maintenance and repairs. This does not mean that no party independent of the Complainant is entitled to service Jaguar motor vehicles and the Respondent asserts that it has done so as an independent Jaguar motor car servicing business since 1960. The question for the Panel is whether the Respondent is entitled to incorporate the trade mark JAGUAR in the disputed domain name because it is a legitimate independent servicer of the Complainant’s trade marked goods, and such goods only. The guidance of the panel’s decision in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, establishes a number of preconditions that should be met by independent resellers and servicers in these circumstances.1 In this case the Respondent’s principal difficulty is that it does not in fact use the disputed domain name in relation to the offering of actual services (it currently resolves to a page stating that the disputed domain name is suspended). The Respondent has not asserted that it intends to use the disputed domain name in such a manner or shown that demonstrable preparations for its use are in place in connection with its independent servicing business. The Respondent already operates its own established webpage (“downshiremotors.com.au”) which concerns its business as an independent Jaguar servicing and maintenance provider. There is nothing in the disputed domain name that links it or limits it to the actual business of the Respondent operating under the Downshire Motors business name and brand. The disputed domain name is also not linked to a specific place or area where the service concerned is located or offered. It would be a rare case where a disputed domain name not put to a fair use and as broadly concerned with a trade marked service offered by a complainant as the current name would in fact fall within the confines of the rights or legitimate interests of a totally unconnected party.

The other elements of Oki Data become irrelevant to the resolution of any matter if the first requirement (the actual offering of the goods or services at issue) is not satisfied.

Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered or Subsequently Used in Bad Faith

The Complainant’s JAGUAR trade mark was well established in the automotive business long before the registration date of the disputed domain name, in Australia as in many other jurisdictions. In any case the Respondent is on its own assertion engaged in the automotive repair and service business and chose to include the term “service” also in the disputed domain name. As the Respondent asserts, it considered the disputed domain name as related to its core business of servicing Jaguar cars. Its registration of the disputed domain name incorporating the Complainant’s trade mark was thus done deliberately and in the full knowledge of the Complainant’s goodwill and trade mark rights.

The Respondent maintains that it registered the disputed domain name because it is relevant to its business as an independent Jaguar repairer. However, nothing in the record indicates that the Respondent has ever developed any website associated with the disputed domain name, and it has not asserted that it intends to do so or why it might not. In the circumstances the only conclusion open to the Panel is that the Respondent’s intention at the time of registration was to use the disputed domain name in a manner that would disrupt the Complainant’s business or suggest some authorization by the Complainant which did not in fact exist. The Complainant has an established network of recognized service and maintenance agents, a notorious fact that would be well known to the Respondent. Without anything in the disputed domain name to indicate that the servicing business concerned was not in fact authorized by the Complainant (starting with the incorporation of the business name by which the Respondent is in fact known, at the very least) it is not likely the Respondent contemplated using the disputed domain name in good faith within the Oki Data criteria at the time of registration. The disputed domain name went far beyond the business name by which the Respondent has promoted itself and no doubt established a local reputation (Downshire Motors). The Respondent had no legitimate need or requirement for the disputed domain name so as to reflect its own business and reputation as a Jaguar repairer of independent status.

Further, the Respondent has not in fact used the disputed domain name. As the Panel in the Nuclear Marshmallows matter (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003) said, no positive actions are required for a finding of bad faith registration and use to be warranted. In the circumstances the Respondent has since the registration of the disputed domain name in 2011 done nothing to establish use in good faith. Given the nature of the disputed domain name, it was in any case unlikely to be able to obtain that result.

Therefore the Panel holds that the disputed domain name was registered and used in bad faith.

7. Decision

For all 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 <jaguarservice.net.au> be transferred to the Complainant.

William Van Caenegem
Sole Panelist
Date: December 14, 2015

1 While the Complaint was brought under the Policy and not the Uniform Domain Name Dispute Resolution Policy (UDRP), given the similarities between the two, the Panel considers UDRP precedent (including the Oki data decision), relevant to the current proceeding.

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