The Complainant is Jaguar Land Rover Limited of Whitley, Coventry, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Greg Chambers, United States of America.
The Respondents are F.W.D. Vehicles Pty. Ltd. (the "First Respondent") and High Ground Vehicles Pty. Ltd. (the "Second Respondent") of Hallam, Victoria, Australia, internally represented.
The disputed domain name <landrovers.com.au> is registered with Synergy Wholesale Pty. Ltd. (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 28, 2016. The following day, the Center transmitted by email to the Registrar a request for verification in connection with the disputed domain name. On September 30, 2016, 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 October 6, 2016, 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 October 11, 2016.
The Center verified that the amended Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the "Policy" or ".auDRP"), 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 October 11, 2016. The Response was filed with the Center on October 30, 2016, prior to the due date.
The Center appointed Matthew Kennedy as the sole panelist in this matter on November 8, 2016. 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 manufactures motor vehicles, notably four-wheel drive vehicles. The Complainant is the owner of multiple trademark registrations in multiple jurisdictions, including Australian trademark registration number 96332 for LAND ROVER specifying motor vehicles and parts thereof in class 12, and Australian trademark registration number 654437 for LAND ROVER and device specifying all services in class 42 relating to the retailing and wholesaling of vehicles. These two trademarks were registered from September 9, 1948 and March 1, 1995, respectively, and they remain in effect. The Complainant operates websites at multiple domain names, including <landrover.com.au> and <landroverparts.net.au>.
The Respondents are listed as the registrants of the disputed domain name. According to the WhoIs database of AusRegistry, as last modified on September 30, 2016, the registrant is the First Respondent and the registrant contact person is Allen Lim. According to the information provided to the Center by the Registrar, the registrant company is the Second Respondent while the relevant individual is Allen Lim. The Respondents have the same contact address. The Second Respondent evidently holds the disputed domain name on behalf of, or for the use of, the First Respondent. Both companies are referred to below as "the Respondent".
The disputed domain name was registered on October 1, 2003. The disputed domain name resolves to the website of "Four Wheel Drives Pty. Ltd.", which is the former name of the First Respondent. At the time of filing the Complaint, that website sold spare parts and accessories for Land Rover vehicles. Some of the spare parts offered for sale were LAND ROVER branded products while others were third-party products. The website's homepage included a disclaimer which, at the time of filing the Complaint, was located below the main photograph and above information about the First Respondent and its products. The disclaimer was displayed in a relatively small font but in bold type in a distinct colour. It read "Four Wheel Drives is in no way directly affiliated with Jaguar Land Rover which is the owner of the trademark LAND ROVER. As a reseller, all we do is sell spare parts and accessories suitable for use with Land Rover vehicles." At the time of this Decision, the disputed domain name resolves to a landing page generated by WordPress which advises that the site has moved, displays the same disclaimer but in large type and redirects to a new website of "Four Wheel Drives" at "www.forwardspares.com.au". The new website is currently under construction but provides an email address and a telephone number where the business can still be contacted. The contact email address for the Second Respondent is also an address "@forwardspares.com.au".
The disputed domain name is confusingly similar to the Complainant's LAND ROVER trademark. The LAND ROVER trademark is the dominant and distinctive element of the disputed domain name. The plural form of the trade mark is entirely descriptive of more than one of the Complainants' vehicles.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has never been licensed or otherwise permitted by the Complainant to use the LAND ROVER trademark or to apply for or use any domain name incorporating that trademark. The Respondent has never been an authorized representative or distributor of the Complainant's vehicles or their parts. F.W.D. Pty. Ltd. operates a business selling spare parts for four-wheel drive vehicles, specializing in spare parts suitable for use with the Complainant's vehicles. However, it also sells parts for other brands of vehicle. The Complaint provides an example of a turbo water pump for an Isuzu vehicle. High Ground Vehicles Pty. Ltd. is an associated company that facilitates the use of the disputed domain name. The Respondent utilizes the disputed domain name to draw business away from authorized representatives of the Complainant and to sell parts, including non-genuine spare parts that are not those of the Complainant but compete directly with them. The Respondent has never been known by the disputed domain name. The website associated with the disputed domain name prominently displays the name "Four Wheel Drives Pty Ltd" and the logo "4 Wheel Drives". The most appropriate domain name for use in connection with the Respondent's business would be "www.4wheeldrives.com.au" or some variant of that name. The disputed domain name is not one that the Respondent would choose unless seeking to take advantage of an association with the Complainant.
The disputed domain namewas registered or is subsequently being used in bad faith. In light of the Complainant's numerous trademark registrations and worldwide reputation, it is inconceivable that the Respondent did not know of the Complainant's rights and interests in the LAND ROVER trademark prior to registering the disputed domain name. The Respondent has registered the disputed domain name to disrupt the business of the Complainant in Australia. The Respondent uses the disputed domain name to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of their website or location or of a product or service on their website or location. Members of the public would expect the registrant of the disputed domain name to be an authorized supplier of the Complainant's products. The Respondent's use of the disputed domain name does not conform to the principles of bona fide use enunciated in Oki Data Americas, Inc. v ASD Inc., WIPO Case No. D2001-0903. Specifically, (i) the Respondent is using the disputed domain name to sell not only the trademarked goods but also non-genuine spare parts that compete directly with those of the Complainant; and (ii) the Respondent's website does not accurately disclose its relationship with the Complainant because the disclaimer appears in a crowded page and could be easily overlooked, while search results can link to other pages on the website that do not include any disclaimer at all. The Respondent also uses an oval-shaped logo reminiscent of the LAND ROVER logo.
The First Respondent F.W.D. Pty. Ltd. ("FWD") has operated a legitimate business since 1955. The website to which the disputed domain name resolves was launched in May 2004. FWD offers the sale of parts and accessories (both new and second-hand) for Land Rover vehicles. Both genuine and after-market parts are available from FWD.
Use of a domain name to direct customers to a website displaying a person's goods is trademark use as it is analogous to using those words as a sign on the front of a shop to indicate the goods that are sold within. As such, FWD's use of the disputed domain name to direct potential customers to its website which advertises its goods is likely to constitute use of the disputed domain name as a trademark and may seem as though there is an infringement of the Complainant's registrations.
However, under Section 122(1)(c) of the Australian Trade Marks Act, it is a complete defence to infringement if the mark is being used in good faith to indicate the intended purposes of the goods, in particular that they are accessories or spare parts. The use of the offending mark in the disputed domain name by FWD is merely to indicate the purpose of its goods, i.e. they are spare parts and accessories for Land Rover vehicles. Using the word "landrovers" in the disputed domain name is the normal and logical term to signify the spare parts and accessories being primarily offered by FWD. In fact, there is really no way for FWD to be able to describe in the disputed domain name the goods offered at its website without making any reference to the Complainant's trademark. It is common practice for other traders to use brands as part of their domain names to sell both genuine and aftermarket products. The Response sets out some examples.
The FWD website promotes the FWD company and its own branding is prominently displayed. Visitors to the FWD website run no risk of confusion with the Complainant's website because visitors to the website get what they require, which are spare parts and accessories rather than brand new Land Rover vehicles. The website clearly has a statement disclosing that Four Wheel Drives is not affiliated with the Complainant. The turbo water pump referred to in the Complaint is used on Land Rover vehicles which Rover fitted to Australian Series I and 110 LAND ROVER models. These parts are compatible and exclusive to the LAND ROVER vehicles mentioned.
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:
(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 has been registered or subsequently used in bad faith.
Failure to prove any one of these elements will result in the Complaint being denied.
Based on the evidence submitted, the Panel finds that the Complainant has rights in the LAND ROVER trademark.
The disputed domain name incorporates the LAND ROVER wordmark in its entirety with the exception of the space between the words "land" and "rover". This omission can be disregarded in a comparison with the Complainant's trademark because domain names do not include spaces for technical reasons.
The only additional elements in the disputed domain name are the letter "s" and the open Second-Level Domain ("2LD") suffix ".com.au". The letter "s" appears immediately after the trademark without any other substantive element, indicating a plural, and the Complainant's trademark remains easily recognizable in the disputed domain name. As for the 2LD suffix, this element is generally disregarded in an assessment of confusing similarity between a domain name and a trademark for the purposes of the Policy: see BT Financial Group Pty Limited v. Basketball Times Pty Ltd, WIPO Case No. DAU2004-0001; Telstra Corporation Limited v. CQ Media Group Pty Ltd, WIPO Case No. DAU2008-0023.
Consequently, the Complainant's trademark is the dominant and only distinctive element of the disputed domain name.
Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy sets out circumstances which, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. One of these is the following:
(i) before any notice to [the respondent] of the subject matter of the dispute, [the respondent's] bona fide use of, or demonstrable preparations to use, the [disputed] 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 [the respondent has] acquired for the purpose of selling, renting or otherwise transferring).
In the present case, the Respondent is using the disputed domain name in connection with an offering of goods and the key question is whether that use of the disputed domain name is bona fide. The Respondent is not an authorized representative or distributor of the Complainant's vehicles or parts. Nevertheless, the Panel considers applicable the criteria enunciated in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, because the Respondent does in fact resell the Complainant's products. See GM Holden Ltd. v. Bradley John Lawless, WIPO Case No. DAU2010-0010; BlackBerry Limited v. Computer Ezy Pty Ltd., WIPO Case No. DAU2015-0029.
The Oki Data criteria can be expressed as follows: (1) the website with which the disputed domain name is used actually offers goods and services related to the trademark at issue; (2) the website is used to sell only the trademarked goods or services, and (3) the site accurately and prominently discloses the registrant's relationship with the trademark holder. The respondent must also not try to "corner the market" in domain names that reflect the trademark.
As regards the first Oki Data criterion, the Respondent uses the disputed domain name in connection with an offering of the Complainant's LAND ROVER branded spare parts. The Respondent's use therefore satisfies this criterion.
As regards the second Oki Data criterion, the Respondent uses the disputed domain name in connection with an offering of spare parts produced by third parties. Even though third-party spare parts may be suitable for the Complainant's motor vehicles, they compete directly with the Complainant's spare parts. In other words, the Respondent is using the disputed domain name, which is confusingly similar to the LAND ROVER trademark, in connection with an offering of goods that compete with LAND ROVER branded goods. These third-party products are not merely supplementary to the offering of the Complainant's products. See Clark Equipment Company v. AllJap Machinery Pty Ltd, WIPO Case No. DAU2011-0042. Further, the Respondent's website offered for sale at least one product for use with a different brand of motor vehicle altogether. The product was offered as a "Water pump kit suitable for ISUZU 4BD1 TURBO", not as a product exclusively suitable for certain LAND ROVER models.
The Respondent argues that the use of the Complainant's LAND ROVER trademark in the disputed domain name is merely to indicate that the Respondent's goods are spare parts and accessories for LAND ROVER vehicles. The Panel does not accept this argument for two reasons. First, the plural "s" indicates that the term "landrover" is being used as a noun in the disputed domain name. The Panel considers that the noun "a Land Rover" commonly refers to a motor vehicle. The plural noun "Land Rovers", on its own, commonly refers to more than one such motor vehicle rather than to spare parts and accessories. The lack of initial capitalization or spacing between the words makes no relevant difference. Second, the Panel does not agree that the term "Land Rovers" alone indicates third-party products, even if they are suitable for use in LAND ROVER vehicles.
The Respondent also argues that "there is really no way for FWD to be able to describe in the disputed domain name the goods offered at its website without making any reference to the Complainant's trademark". The Panel does not consider this argument pertinent because the disputed domain name does not merely make reference to the Complainant's trademark. Rather, the disputed domain name incorporates the Complainant's trademark without any distinguishing element.
Therefore, the Panel finds that the Respondent's use of the disputed domain name fails to comply with the second Oki Data criterion. Accordingly, the Respondent's use is not a bona fide use of the disputed domain name in connection with an offering of goods or services.
As regards the third Oki Data criterion, the Panel considers the disclaimer on the Respondent's website's homepage to be at least accurate, if not necessarily prominent at all times. At the time of filing the Complaint, the disclaimer was displayed near the middle of the homepage in a distinct colour but in a relatively small font, much smaller than the font in which it is displayed at the time of this decision. Further, the homepage could be bypassed by deep links from search results. The Respondent's own branding does not disclose its relationship to the Complainant. Given that the Panel has already found that the Respondent's use of the disputed domain name does not conform to the second Oki Data criterion, it is not necessary to decide whether the Respondent's website, at the time of filing of the Complaint, complied with the third Oki Data criterion.
Neither of the other circumstances listed in paragraph 4(c)(ii) and (iii) of the Policy is applicable. The Respondent is not commonly known by the disputed domain name. The Respondent is clearly making a commercial use of the disputed domain name, rather than a legitimate non-commercial or fair use without intent for commercial gain. The record discloses no other basis upon which the Respondent might enjoy any rights or legitimate interests in respect of the disputed domain name.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.
Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:
"(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to a website 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 that website or location or of a product or service on that website or location;"
In the present case, the Complainant's LAND ROVER word mark has been registered and used in Australia since 1948, which was many years before the disputed domain name was registered. The Complainant has never licensed or otherwise permitted the Respondent to apply for or use any domain name incorporating the LAND ROVER trademark. The disputed domain name incorporates the Complainant's LAND ROVER trademark with no more than a plural "s" and a 2LD suffix but no distinguishing element. The nature of the Respondent's business, which offers for sale spare parts and accessories for LAND ROVER vehicles as well as second-hand LAND ROVER vehicles, indicates to the Panel that the Respondent intentionally chose to register (or, in the case of the Second Respondent, acquire) and use the Complainant's LAND ROVER trademark in the disputed domain name. The Respondent's website also offers for sale third-party products that compete with the Complainant's LAND ROVER branded spare parts. For these reasons, and those set out in Section 6B above, the Panel finds that the Respondent's use of the domain name has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's LAND ROVER mark as to the source, sponsorship, affiliation, or endorsement of products on that website.
The Panel emphasizes that the above findings concern only the registration and use of the disputed domain name. They do not prejudice the Respondent's right to use the Complainant's LAND ROVER trademark in the content of the Respondent's website and offline in connection with the Complainant's products in accordance with the law.
Therefore, the Panel finds that the disputed domain name was registered and subsequently used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the domain name <landrovers.com.au> be transferred to the Complainant.
Matthew Kennedy
Sole Panelist
Date: November 14, 2016