WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jaguar Land Rover Limited v. Hondwreck Pty. Ltd.
Case No. DAU2017-0017
1. The Parties
The Complainant is Jaguar Land Rover Limited of Coventry, United Kingdom of Great Britain and Northern Ireland ("United Kingdom" or "UK"), represented by Phillips Ormonde Fitzpatrick, Australia.
The Respondent is Hondwreck Pty. Ltd. of Clayton South, Victoria, Australia.
2. The Domain Name and Registrar
The disputed domain name <rangeroverspares.com.au> is registered with TPP Wholesale Pty Ltd (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 7, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 19, 2017, 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 .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 July 20, 2017. In accordance with the Rules, paragraph 5(a), the due date for Response was August 9, 2017. On August 2, 2017, the Center received an email communication from the Respondent. On August 4, 2017, the Center received an email communication from a third party. A formal Response was not received by the Center.
The Center appointed James A. Barker as the sole panelist in this matter on August 21, 2017. 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, Jaguar Land Rover Limited, is a globally renowned manufacturer of premium saloons, sports cars and utility vehicles, based in the Midlands region of England. The Complainant employs over 20,000 people in the United Kingdom.
The Complainant currently produces motor vehicles under the brand and trademark RANGE ROVER. The Range Rover was launched in 1970. The Complainant refers to a brief history of the use of the trademark RANGE ROVER by the Complainant and its predecessors in business summarised in a Wikipedia entry.
The Complainant owns, among others, the following trademark registrations:
- UK trademark number 920322 for RANGE ROVER (word) in class 12 for "Land motor vehicles and parts thereof included in Class 12". This mark was first registered in the UK in January 1968 and has been used in the UK since about 1970.
- Australian trademark number 230454 for RANGE ROVER (word) in class 12 for "Land motor vehicles and parts thereof". This mark was first registered in Australia in 1969 and has been used in Australia since 1970.
The Complainant is the registrant of a number of domain names that incorporate its trademark including <rangeroverspares.uk>, <rangerover.co>, <rangerover.uk>, and <rangerover.biz>.
The Complainant refers to a previous case decided under the Policy, involving its mark: Jaguar Land Rover Limited v. The Trustee for The Trivett Family Trust, WIPO Case No. DAU2016-0033. The Complainant states that the Panel in that case found that descriptive words such as "service, spare parts or warranty", when joined with any of the trademarks JAGUAR, LAND ROVER or RANGE ROVER, did not alter those trademarks in a way which changed them from being confusingly similar to the registered marks of the Complainant. The Panel also notes that this case:
- found that there was such a high degree of recognition attached to the relevant RANGE ROVER mark in Australia and elsewhere in the world that the mark falls into the category that could truly be said to be "well known".
- applied the factors set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (the "Oki Data case"), to determine whether an unauthorized reseller of the Complainant's products has rights or legitimate interests in using the Complainant's mark in a domain name.
Although not mentioned in the Complaint, the Complainant's mark has also been the subject of other domain name dispute proceedings, for example, Jaguar Land Rover Limited v. Range Rover Classic, WIPO Case No. DNL2015-0073. In this case, like in the case of Jaguar Land Rover Limited v. The Trustee for The Trivett Family Trust, supra, the panel applied the factors in the Oki Data case to determine whether the Respondent had rights or legitimate interests as an apparent reseller of the Complainant's products.
In response to the written notification of the Complaint, an email was sent to the Center on August 2, 2017, from an employee of a business called "RightParks P/L trading as Partsheaven" located in the State of Victoria, Australia, which is the same area as the physical address details in the WhoIs record for the Respondent. That email stated that "Since we do not know what it is about so could you please help to send us the copy of the complaint". That email also noted that the written notification of the Complaint was sent to "Mark Tran – our Manager". Mark Tran is the name of an individual listed as the "registrant contact" and "technical contact" in the WhoIs details for the disputed domain name. No further emails or other communications were received from this business.
Another email was sent to the Center on August 4, 2017, from a person associated with a business Partsheaven Inc, located in California, United States of America, stating that "We are located in California and have nothing to do with this dispute".
There is otherwise little information in the case file to indicate the business of the named Respondent, Hondwreck Pty. Ltd. However, the Complaint attaches the following description (reproduced in part) of the Respondent's apparent business, derived from the website to which the disputed domain name reverts: "Parts Heaven first started in 1995 as a parts and service center for imported and speciality cars. It was a first stop for many people trying to find hard to track down parts for their performance cars."
The disputed domain name was registered to the Respondent on December 3, 2013. The disputed domain name points to a website at "www.findyourparts.com.au" for the business "Parts Heaven", which is concerned with the offer for sale of new, used and after market car parts. The website provides contact details for the business and includes a search function.
The Complainant provides evidence of a cease-and-desist letter that it sent to the Respondent on October 25, 2016. Despite following up that letter with an email in December 2016, the Complainant received only a short email in response stating that "there is no mr tran at this email address". The Complainant's representative sent a further email in response, noting the registration details for the disputed domain name included "Mr Mark Tran" as the registrant contact. There is no evidence that any further communication was sent to the Complainant in response.
5. Parties' Contentions
The Complainant refers to the substantial reputation of its RANGE ROVER mark. By reference to its advertising efforts, awards, motor shows, and its online presence, the Complainant says that its mark is well known.
The Complainant says that the disputed domain name is confusingly similar to its mark, because that mark is wholly incorporated in the disputed domain name. The addition of the term "spares" is descriptive of spare parts. The Complainant points to the decision in Jaguar Land Rover Limited v. The Trustee for The Trivett Family Trust, supra, as authority for the proposition that the words "spare parts" and other similar terms to not distinguish its mark.
The Complainant says that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not been licensed or otherwise permitted by the Complainant to use its mark in the disputed domain name.
The Complainant also says that the disputed domain name was registered or subsequently used in bad faith. In light of the Complainant's trademark registrations and worldwide reputation, it is inconceivable that the Respondent was not aware of the Complainant's rights and interests prior to registering the disputed domain name.
The Respondent did not reply to the contentions in the Complaint. Apart from the very brief email dated August 2, 2017, mentioned above, there were no other communications from any person associated with the Respondent in connection with this case.
6. Discussion and Findings
For the Complaint to succeed, under paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered in bad faith or subsequently used in bad faith.
Each of these elements is addressed in turn below. The Panel notes that the Policy is, with some notable exceptions discussed below, substantially similar to the Uniform Domain Name Dispute Resolution Policy ("UDRP") and, as such, the Panel has drawn on authority concerning the UDRP, in relation to similar terms of the Policy.
A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, the Complainant must first establish that it "has rights" in a mark. The Complainant has provided evidence of its registered trademark rights, outlined above, which are clearly sufficient for this purpose.
The Complainant must next establish that the disputed domain name is identical or confusingly similar to its trademark. Following the approach in Jaguar Land Rover Limited v. The Trustee for The Trivett Family Trust, supra, the Panel finds that the disputed domain name is confusingly similar to the Complainant's RANGE ROVER mark. One of the domain names in dispute in that case included the Complainant's trademark and added only the term "spare parts". The panel concluded that the inclusion of "neither the inclusion of the geographical terms nor of any the ordinary English words […] has the effect of distinguishing any of the disputed domain names from the relevant Complainant's highly distinctive and well known trade marks."
This approach is consistent with the majority view of auDRP panelists on this issue. As outlined in paragraph 1.9 of the auDA Overview of Panel Views on Selected auDRP Questions First Edition, ("auDA auDRP Overview 1.0"):
"The addition of merely generic, descriptive, or geographical wording to a trademark or name in a domain name would normally be insufficient, of itself, to avoid a finding of confusing similarity under the first element of the auDRP. In such a situation, panels have usually found the incorporated trademark or name to constitute the dominant or principal component of the domain name. However, in certain cases panels have come to a different conclusion, where a trademark or name (especially one that is of a descriptive nature) is incorporated or subsumed within other words or textual elements of the domain name so that the trademark or name is not clearly the dominant component of the domain name."
This is not a case where the trademark is incorporated or subsumed in other words or textual elements of the disputed domain name. The Complainant's trademark is wholly incorporated and is the first appearing element of the disputed domain name. It is followed only by the term "spares", which is an obvious reference to spare parts. These elements of the disputed domain name are not much different from one of the domain names (which added the term "spare parts") considered by the panel in Jaguar Land Rover Limited v. The Trustee for The Trivett Family Trust, supra.
Accordingly, following the approach of the panel in that case, and the majority of auDRP panelists' opinion on this issue, the Panel in this case finds that the disputed domain name is confusingly similar to the Complainant's mark.
B. Rights or Legitimate Interests
The Respondent has made no substantive submission in response to the allegations against it. As such, the Respondent has provided nothing to rebut the Complainant's prima facie case that the Respondent lacks rights or legitimate interests.
As noted above, the disputed domain name reverts to a website that offers car parts for sale – rather than car parts of a particular manufacturer. The apparent business name under which the disputed domain name was registered, i.e., Hondwreck Pty. Ltd., may suggest some relationship to Honda car parts (derived from wreckers). Despite this, the website to which the disputed domain name refers does not appear to be associated with any particular manufacturer. The home page of that website prominently features the banner "Partsheaven.com.au". An email to the Center apparently from that business (PartsHeaven) states that the "manager" of that business is the same as the person registered as the contact for the disputed domain name. The Panel has therefore inferred that the person behind the Respondent is the same as the manager of PartsHeaven, and that there is an overlapping commercial relationship between them.
While there is no direct evidence on this point, the nature of the Respondent's website – as one offering a wide variety of car parts – suggests that it would also offer Range Rover car parts. If so, the best case that might be put by the Respondent is that it is a reseller of genuine Range Rover car parts. Based on the Complaint, the Respondent is not authorized directly by the Complainant to sell or distribute its products, nor is the Respondent authorized by the Complainant to use its mark.
Under the Policy, the majority auDRP panel position on the issue of whether a reseller might have a right or legitimate interest in registering a domain name which incorporates a trademark is set out in paragraph 2.3 of the auDA auDRP Overview 1.0. The Overview states that:
"The more recent decisions of auDRP panels have adopted the principles set out in the UDRP case Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (the "Oki Data principles") – although at least one panel has expressed doubt that these principles should be accepted verbatim, especially the requirement that there be disclosure of the registrant's relationship with the trademark owner. […] These principles have been applied by auDRP panels to a reseller that is unauthorised, as well as to one that is authorised, to use the trademark by the trademark owner."
The Oki Data principles are that the use of a manufacturer's trademark as a domain name by a dealer or reseller may be regarded as a bona fide offering of goods or services within the meaning of paragraph 4(c)(iii) of the Policy if the following conditions are satisfied:
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);
- the site itself must accurately disclose the respondent's relationship with the trademark owner; and
- the respondent must not try to "corner the market" in all relevant domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
These principles have been referred to as "minimum" requirements in other decisions under the Policy: see, e.g., Terra Plana International Ltd. v. The Summer House Australia Pty Ltd / Tanya Greenwood, WIPO Case No. DAU2012-0025. That is, there may be other factors that are relevant.
As far as the Panel can tell, the Respondent has not made out the second and third of the "minimum" Oki Data principles. The Respondent's website redirecting to "www.findyourparts.com.au" is not confined to selling car parts of the Complainant, even if it does in fact sell the Complainant's products at all. There is no mention on that website of the Respondent's relationship with the Complainant, or any statement from which that relationship (or the lack of one) might be reasonably inferred.
The Respondent has not come forward with any evidence that might otherwise suggest that it has rights or legitimate interests in the disputed domain name.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
C. Registered or Subsequently Used in Bad Faith
Unlike the UDRP, the Policy provides that the Complainant can establish its case by showing that the disputed domain name was registered or used in bad faith.
The disputed domain name in this case was registered in 2013. The Panel considers that there is evidence that the disputed domain name was registered and used in bad faith, for the following reasons.
Firstly, there is no evidence that the Respondent was authorized, explicitly or implicitly, to register and use the Complainant's mark in a domain name. The Complainant has expressly denied that the Respondent was so authorized. The Respondent did not come forward with any information to demonstrate any rights to use the disputed domain name in this way.
Secondly, the Panel considers it is reasonable to infer that the Respondent was aware of the Complainant and its RANGE ROVER mark when the disputed domain name was registered and subsequently used. As outlined above, the Respondent appears to be a retailer of car parts. The Complainant is a well-known car manufacturer. As found in previous decisions under the Policy and UDRP, the Complainant's mark is also well known. The Panel considers it very unlikely that the Respondent was unaware of this fact.
Thirdly, paragraph 4(b)(iv) of the Policy states that evidence of the registration (and use) of the domain name in bad faith includes the respondent using the domain name to intentionally attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant's mark or name as to the source, sponsorship, affiliation, or endorsement of that website or location or of a product or service thereon. Based on the Respondent's likely awareness of the Complainant, and the nature of the Respondent's vehicle-related business, the Panel considers there is also a reasonable inference that the Respondent was attracted to the disputed domain name because of its potential to attract Internet users. And, as discussed above in relation to paragraph 4(a)(i) of the Policy, the disputed domain name is confusingly similar to the Complainant's mark. There is therefore some evidence of bad faith for the purpose of paragraph 4(b)(iv) of the Policy.
Further, as noted in the auDA auDRP Overview 1.0, where a domain name is identical or confusingly similar to a trademark or name in which the complainant has rights, auDRP panels typically find that use of the domain name by the respondent to resolve to a website – whether of the respondent or some third party – is use in bad faith pursuant to paragraph 4(b)(iv) of the Policy. The Respondent has registered such a domain name in this case, and intentionally did so to attract Internet users to its website.
Fourthly, there is also some evidence that the Respondent has sought to obfuscate in response to communications to it in connection with this dispute. In particular, in response to the Complainant's cease-and-desist letter, an email response was sent stating that "there is no mr tran at this email address". Then, in response to the notification of the Complaint, the Respondent stated that it did not know what this dispute was about (despite being apparently made aware of it by at least the cease-and-desist letter) and that Mr. Tran was a manager of that business.
The Panel notes that this conclusion is not affected by the fact that the disputed domain name has been registered for almost 4 years – having been registered to the Respondent in December 2013. The Complainant does not provide an explanation as to why such a period passed before it filed this dispute. Nevertheless, the Panel does not consider this period to be excessive, taking into account the size and scale of the Complainant's business. In any event, a delay in itself does not prevent a Complaint from succeeding under the Policy: see auDA auDRP Overview 1.0, paragraph 4.10. In the face of the factors that indicate bad faith set out above, the Panel also does not consider that the Respondent might have acquired some rights in the disputed domain name.
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 <rangeroverspares.com.au> be transferred to the Complainant.
James A. Barker
Date: September 8, 2017