The Complainant is Jaguar Land Rover Limited of Whitley, Coventry, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Phillips Ormonde & Fitzpatrick, Australia.
The Respondent is Greg Brown, Acheeva Business Solutions Pty Ltd. of Gold Coast, Queensland, Australia.
The disputed domain name <etypejaguar.com.au> (the “Domain Name”) is registered with Domain Shield Pty Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2015. On February 26, 2015, the Center transmitted by email to Domain Shield Pty Ltd a request for registrar verification in connection with the Domain Name. On March 4, 2015, Domain Shield 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 March 4, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 24, 2015. The Response was filed with the Center on March 24, 2015.
The Center appointed Nicholas Smith as the sole panelist in this matter on March 31, 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.
The Complainant is a manufacturer of premium sports cars and sports utility vehicles, based in the Midlands region of England, United Kingdom. The Complainant employs over 20,000 people and is the top automotive manufacturer in the United Kingdom. The Complainant has produced a number of models under the “Jaguar” brand, including the Jaguar E-Type (also known as the E-Type Jaguar). The Jaguar E-Type was first manufactured between 1961 and 1974. In this period more than 70,000 Jaguar E-Type vehicles were manufactured and sold. In May 2014 the Complainant announced that it would be manufacturing and selling six new E-Type Jaguars made to the original 1960’s design.
The Complainant holds an Australian trade mark registration for the word mark JAGUAR E TYPE (the “JAGUAR Mark”) being trade mark number 891678 in class 12 for “Land vehicles and parts and fittings therefor.” The JAGUAR Mark was registered in Australia in 2001.
The Domain Name <etypejaguar.com.au> was created on July 2, 2012. Prior to August 19, 2014, the Domain Name redirected to a website which stated “Click here to buy ETypeJaguar.com.au for your website Name!” and contained various links and advertisements (the “Respondent’s Website”). On that date the Complainant sent a letter of demand to the Respondent. Since August 20, 2014, the Domain Name has redirected to a website that states “We are developing a new site devoted to the owners of E Type Jaguars” and contains various content regarding “jaguars” sourced from elsewhere in the Internet (the “Respondent’s Second Website”).
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s JAGUAR Mark;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and/or is subsequently being used in bad faith.
The Complainant is the owner of the JAGUAR Mark having a trade mark registration for JAGUAR E TYPE in Australia.
The Domain Name <etypejaguar.com.au> is confusingly similar to the JAGUAR Mark since it reflects the JAGUAR Mark, rendered in the commonly used word order “E Type Jaguar”.
The Respondent has no rights or legitimate interests in the Domain Name. The Respondent does not hold a trade mark for JAGUAR or any similar trade mark. The Respondent is not licensed or authorised by the Complainant to register the Domain Name. The Respondent does not have any other apparent rights in the Domain Name, nor does he appear to be commonly known by the Domain Name. It would appear that the Respondent is a business consultation business operating from Surfers Paradise in Queensland, Australia. A related company Acheeva Marketing Pty Ltd (operating from the same address) maintains a website offering domain names for sale. Examples of domain names offered for sale through Acheeva Domains include <mothersday.com.au> for AUD 126,500.00 and <7seatercars.com.au> for AUD 83,600.00.
Prior to August 20, 2014 the Domain Name redirected to the Respondent’s Website which incorporated an image of a jaguar animal and prominently indicated that the Domain Name was available for purchase. There were commercial advertisements also associated with the site. Such use does not give rise to rights or legitimate interests. Following the receipt of a letter of demand from the Complainant, the Respondent changed its website to the Respondent’s Second Website that purports to be a site for JAGUAR car enthusiasts. The site is not a legitimate enthusiast site. The articles posted to the site are derived using a digital news scraper (or similar) – apparently using the word “jaguar” and include articles that relate to jaguar animals and a football team called the “Jaguars”. The Complainant submits that the Respondent has created the Respondent’s Second Website so that the Domain Name appears to be legitimately used as an E-Type Jaguar owners’ forum to frustrate a UDRP Proceeding. Quite plainly this is a device to suggest that there was a legitimate purpose in registering the Domain Name when there was none.
The Domain Name was registered or is being used in bad faith. The Respondent registered the Domain Name with the awareness of the Complainant and for the purpose of selling, renting, or otherwise transferring it for valuable consideration in excess of its or his documented out-of-pocket costs directly related to the Domain Name. Prior to the receipt of the letter of demand, the Respondent’s Website clearly indicated that the Domain Name was available for sale.
The Respondent claims that on July 2, 2012 it acquired the Domain Name for the purpose of establishing a forum for owners of E type Jaguars, with a predominant emphasis on vintage models. He states that he was not aware of the JAGUAR Mark at the time of the acquisition of the Domain Name.
Following the registration of the Domain Name the anticipated website was delayed because the “the developer chosen to complete a portfolio of ‘forum’ style websites failed to complete the first of those sites and I was left significantly out-of-pocket without a completed project” and the Respondent was not able to source another developer and suffered a series of illnesses that restricted the ability of the Respondent to create the anticipated website.
The Respondent denies that the Domain Name was for sale and indicates that “the display of ‘may be for sale’ style banners on the websites annexed to the complaint have historically provided me with a major source of contacts from persons with similar interest. Notwithstanding, due to the circumstances above, I am more inclined to sell any assets I own than I was at the time of purchase of the domain name and have received inquiries for the purchase of this domain name to which I have responded.”
Finally the Respondent states that “The domain name was originally parked with various parking companies pending development of the proposed website… Upon becoming aware of the existence of the trademark held by the complainant the parking ceased and a website was created in the form existing immediately prior to this complaint, namely a display of intended use (annexure 9 attaching to the complaint). That website had no infringing advertisements displayed.
The purpose of that website was to display the intended use, to gain some recognition from Google of relevant content for the purpose of gaining a degree of search ranking and to attract persons who may wish to partner or joint venture with me in the development of the forum.
The content for that website was sourced from 3rd parties by my content provider, at minimal cost.”
To prove this element the Complainant must have a name or trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s name, trade or service mark.
The Complainant is the owner of the JAGUAR Mark, having registrations for the JAGUAR Mark as a trade mark in Australia.
The Domain Name <etypejaguar.com.au> consists of the JAGUAR Mark with the words reversed and the country code Top-Level Domain suffix “.com.au”. Disregarding the “.com.au” suffix, the Domain Name is confusingly similar to the JAGUAR Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
To succeed on this element, a complainant may make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, is to be taken to demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the subject matter of the dispute, your bona fide use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with an offering of goods or services (not being the offering of domain names that you have acquired for the purpose of selling, renting or otherwise transferring); or
(ii) you (as an individual, business, or other organisation) 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 name, trademark or service mark at issue.”
The Respondent is not affiliated with the Complainant in any way. It has not been authorised by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the JAGUAR Mark or a mark similar to the JAGUAR Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used the Domain Name in connection with a legitimate non-commercial use.
The Respondent has suggested that it registered the Domain Name to provide a website that operates as a forum for owners of E-Type Jaguars. The Respondent, in its Response, explains its supposed purpose, that it hired a website developer, and that there was a reason for delay. However, the Response provides no documentary evidence in support of its assertions. Had the Respondent, as asserted in the Response, hired a developer to create a website in 2012 it would have been within the Respondent’s power to include evidence of conversations with the developer, scope proposals, evidence of draft websites or invoices. None of this is included. Equally, the Respondent provides no documentary evidence of the supposed health or financial circumstances that delayed the creation of a website. The only actual documentary evidence in support of the Respondent’s contentions is the Respondent’s Second Website that was created on August 20, 2014. However, the Complainant submits, and the Respondent does not deny, that this was a website that was created in response to the Complainant’s letter of demand and does not operate as an active website (indeed the Response suggests that the website was created to display the “intended use” of the Domain Name). Finally the Panel does not accept that the offers to sell the Domain Name on the Respondent’s Website were merely offers designed to attract people to the website with a similar interest. Unless evidence supporting an alternative interpretation is provided, the Panel interprets an offer to sell a domain name as being an offer to sell that domain name.
In summary the Respondent’s Website does not provide a basis for concluding that the Respondent has made a bona fide use or demonstrable preparations to use the Domain Name or a name corresponding to the Domain Name. The Response contains no documentary evidence, as opposed to unsupported assertions, as to demonstrable preparations to use the Domain Name. The Panel accepts the Complainant’s submissions that the Respondent’s Second Website is not a legitimate E-Type Jaguar owners’ forum but instead was created in response to a letter of demand to suggest that there was a legitimate purpose in registering the Domain Name. As such there is no evidence that the Respondent has made a bona fide use or demonstrable preparations to use the Domain Name or a name corresponding to the Domain Name.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests. It has failed to supply sufficient evidence in support of its claims of legitimate interests and has not succeeded in rebutting the presumption. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to another person for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name; or
(iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business or activities of another person; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the Complainant’s name or mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on the Respondent’s web site or location.
The Panel finds that the Respondent, at the time of registration of the Domain Name knew of the existence of the JAGUAR Mark. Indeed the Respondent, in its Response suggests that the purpose of the Domain Name was to create a forum for E-Type Jaguar owners. The registration of the Domain Name in awareness of the Complainant and the rights it had at the time in the JAGUAR Mark and in the absence of rights or legitimate interests amounts to registration in bad faith.
The Panel finds that circumstances exist indicating that the Respondent registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name to another person, presumably the Complainant or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name. For two years following the registration of the Domain Name the Respondent maintained the Respondent’s Website that had no content other than advertisements and a clear statement that the Domain Name was for sale. The Respondent’s explanation for placing the Domain Name for sale, being that the Respondent was seeking to acquire contacts from persons with similar interest, is both implausible in that there are numerous ways to acquire contacts without putting a Domain Name up for sale, and that it is unsupported by any documentary evidence.
The Panel, while noting that the Policy only requires that a complainant shows that a respondent registered or subsequently used the domain name at issue in bad faith, finds that the Respondent has registered and has subsequently used the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant has requested transfer of the Domain Name. Given that the Complainant owns an Australian registered trade mark that appears to be closely and substantially connected to the Domain Name, in that the Domain Name simply reverses the order of the elements of the JAGUAR Mark, the Complainant appears to satisfy the eligibility requirements for registration of the 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 Domain Name <etypejaguar.com.au> be transferred to the Complainant.
Nicholas Smith
Sole Panelist
Date: April 2, 2015