ARBITRATION
AND
MEDIATION CENTER
ADMINISTRATIVE PANEL DECISION
Land Rover v. Xabier Amezaga
Case No. D2011-1252
1. The Parties
The Complainant is Land Rover of Gaydon, Warwick, United Kingdom of Great Britain and Northern Ireland,
represented by Brooks Kushman, P.C., United States of America.
The Respondent is Xabier Amezaga of Caracas, Bolivarian Republic of Venezuela.
2. The Domain Names and Registrar
The disputed domain names <rangerover-ltd.com> and <rangerover-venezuela.com> are registered with
Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 21, 2011. On
July 22, 2011, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a
PublicDomainRegistry.com. a request for registrar verification in connection with the disputed domain
names. On July 25, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com. 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(a) and 4(a), the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on July 26, 2011. In accordance with the Rules, paragraph
5(a), the due date for Response was August 15, 2011. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on August 16, 2011.
The Center appointed Charné Le Roux as the sole panelist in this matter on August 22, 2011. The Panel
finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and
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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 owner of the well known RANGE ROVER, LAND ROVER and LAND ROVER logo
trademarks. The Complainant has manufactured sport utility vehicles for more than 60 years and those
vehicles branded with the trademark RANGE ROVER, for over 40 years. RANGE ROVER has been
recognized in numerous countries as a premier automotive brand. The trademark signifies luxury standards
and capability.
The first “Range Rover” vehicle went on sale in 1970 and one of the first registrations that the Complainant
obtained for the trademark RANGE ROVER was in the United Kingdom in 1968. The first USA registration
for the same trademark was obtained in 1972. The Complainant also owns four trademark registrations in
Venezuela for RANGE ROVER for “land motor vehicles”, registered in 1970 and 1997 respectively. The
Complainant owns over 270 trademark applications and registrations for RANGE ROVER and variations of it
in approximately 140 different territories worldwide. The Complainant furthermore owns the domain name
<rangerover.com> that it registered on February 17, 2002.
The Respondent registered the disputed domain names <rangerover-ltd.com> and <rangerovervenezuela.com> on October 20, 2009 and October 9, 2007 respectively. The websites at the disputed
domain names display the Complainant’s RANGE ROVER and LAND ROVER trademarks and images of the
Complainant’s vehicles in connection with the sale of parts for the Complainant’s vehicles.
5. Parties’ Contentions
A. Complainant
The Complainant contends that it is the owner of the famous RANGE ROVER, LAND ROVER and LAND
ROVER logo trademarks that it uses in connection with the manufacture, promotion and sale of sport utility
vehicles. It commenced use of the trademark RANGE ROVER in connection with vehicles in 1970. It owns
various trademark registrations and a domain name for the RANGE ROVER trademark in many countries in
the world.
The Complainant contends that it has spent millions of dollars in advertising and promoting its RANGE
ROVER and LAND ROVER trademarks throughout the United States and the world and that, as a
consequence of this promotion, and also the resulting level of consumer recognition, the Complainant’s
RANGE ROVER and LAND ROVER trademarks are highly distinctive and represent considerable goodwill.
The Complainant submits that the public readily accepts the Complainant’s trademarks as the hallmark of
automobile sales and services by the Complainant.
The Complainant contends that the disputed domain names are confusingly similar to its RANGE ROVER
trademark despite the addition of the geographic term “Venezuela” and the appearance of “ltd” which is an
abbreviation for the word “limited” and a general identifier of a limited corporation. The Complainant
contends that the disputed domain names are designed to lead consumers who are searching for the
Complainant’s goods to the Respondent’s website.
The Complainant indicates that it was successful in effecting the transfer of the unauthorized domain name
<rangeroverusa.com> to it by the National Arbitration Forum (“NAF”) in circumstances similar to the present
case (See LAND ROVER vs HK Domain Privacy /Name administrator, NAF Claim No. 1341065).
The Complainant contends that the Respondent lacks rights or legitimate interests in the disputed domain
names for the following reasons:
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a.
The Complainant has not authorized the Respondent to register or use the RANGE ROVER
trademark in any way;
b.
The Respondent is not commonly known by the disputed domain names, despite the fact that it is
using “RANGE ROVER Limited” and/or “RANGE ROVER Venezuela” as trading names. The
Complainant contends that these trading names were adopted with a mala fide intent and that there is
no information to support the fact that the Respondent was known by either of these names prior to
the registration of the disputed domain names.
c.
The Respondent is not using the disputed domain names in connection with the bona fide offering of
goods or services;
d.
The Respondent is not making legitimate, noncommercial or fair use of any of the disputed domain
names but intends, for commercial gain, and by misleading Internet users, to divert them to the
websites to which the disputed domain names resolve. In fact, the disputed domain names falsely
appear to be associated with the Complainant, thereby luring Internet users to purchase goods from
the website associated with them, which goods the Complainant contends are counterfeit;
e.
The Respondent had actual knowledge of the Complainant’s rights in the RANGE ROVER trademark
and the Complainant’s operation of a website at “www.rangerover.com” at the time that the
Respondent registered the disputed domain names; and
f.
The Respondent cannot avail itself of any of the defenses provided in terms of Paragraph 4(c) of the
Policy because it has not registered or is using the disputed domain names for reasons unconnected
with their significance as the Complainant’s trademark.
The Complainant further contends that the disputed domain names were registered and are being used in
bad faith. According to the Complainant, given the prominence of its RANGE ROVER trademark worldwide,
the Respondent must have known that the incorporation of the name “Range Rover” in the disputed domain
names would be likely to cause Internet users to believe that they are affiliated with the Complainant. The
Complainant submits that the Respondent’s bad faith is also illustrated by the fact that the websites to which
the disputed domain names resolve include corporate materials related to the Complainant. By the addition
of the geographical indication “Venezuela” and the identifier “ltd”, the Respondent clearly pretends to be a
corporate entity related to the Complainant, thereby creating a false association between the Complainant
and the disputed domain names. The Complainant submits as provided in Paragraph 4(b)(iv) of the Policy
that the Respondent attempts to attract, for commercial gain, Internet users to the website to which the
disputed domain names resolve, by creating the likelihood of confusion with the Complainant’s RANGE
ROVER trademark.
The Complainant requests that the disputed domain names be transferred to it.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with Paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant
must prove:
i)
ii)
iii)
That the disputed domain names are identical or confusingly similar to the mark in which it has rights;
That the Respondent has no rights or legitimate interests in respect of the disputed domain names;
That the disputed domain names have been registered and are being used in bad faith.
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In accordance with Paragraph 14(b) of the Rules, the Panel will draw such inferences from the Respondent’s
default as it considers appropriate. This will include the acceptance of plausible evidence of the
Complainant which has not been disputed.
A. Procedural Issue concerning pending Court proceedings between the parties
The Complainant initiated criminal proceedings against the Respondent in Venezuela alleging in part the
sale of counterfeit parts. Before a finding of the substantive issues arising from Paragraph 4(a) of the Policy
can be made, the Panel must exercise its discretion whether to suspend or terminate the administrative
proceeding, or to proceed to a decision, as provided for in Paragraph 18(a) of the Rules.
The Panel decides to exercise its discretion to proceed to a decision and in doing so, takes the following
factors into account:
a.
The Respondent did not object to the dispute proceeding to a decision;
b.
It is not clear to the Panel that the criminal proceedings that have been instituted would necessarily
deal with any substantive issues concerning the ownership of the disputed domain names (and in any
event, naturally a UDRP decision (if issued) would not be binding on a national court as such); and
c.
The decision of the Panel in this matter will not preclude the Respondent from seeking relief in Court.
B. Identical or Confusingly Similar
The Panel finds on the evidence that the Complainant owns both registered and common law rights in the
trademark RANGE ROVER and also that this trademark is well known and famous worldwide.
The Panel also finds that the disputed domain names are confusingly similar to the Complainant’s RANGE
ROVER trademark. The differences between the Complainant and the disputed domain names are the
addition of the words “Venezuela” and “ltd” which are descriptive and do not serve a distinguishing function.
The Panel agrees with the Complainant that these additional elements do not assist the Respondent in
escaping a finding of confusing similarity.
The first requirement of Paragraph 4(a) of the Policy is satisfied.
C. Rights or Legitimate Interests
The Panel considers that the Respondent’s use of the disputed domain names is not in connection with the
bona fide offering of goods and services. The Panel takes into account that the Complainant made a very
serious allegation regarding the sale of counterfeit goods on the website to which the disputed domain
names resolve, which the Respondent did not place in dispute in these UDRP proceedings. See e.g
Advance Magazine Publishers Inc. v. Arena International Inc., WIPO Case No. D2011-0203.
The Panel finds that the Respondent’s use of the disputed domain names takes unfair advantage of the
extensive reputation of the Complainant’s RANGE ROVER trademark in order to divert Internet users
seeking information about the Complainant and its goods to the Respondent’s website.
The Panel further finds that there is no evidence that the Respondent is commonly known by the disputed
domain names, and finds that it is not making legitimate, noncommercial or fair use of the disputed domain
names, that it is not authorized by the Complainant to use the disputed domain names and that there is no
other basis on which it could claim to have rights or legitimate interests in the disputed domain names in this
case.
The second requirement of Paragraph 4(a) of the Policy is satisfied.
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D. Registered and Used in Bad Faith
The Panel finds on the evidence that due to the registration of the disputed domain names by the
Respondent many years after the establishment of the Complainant’s well-known “Range Rover” business
and by the use of the disputed domain names for the stated purposes, Respondent is intentionally attracting
Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s
trademark as to the source, sponsorship and affiliation or endorsement of the Respondent’s website.
In the Panel’s view, Internet users seeking information about the Complainant’s vehicles are liable to be
diverted by confusion between the disputed domain names and the Complainant’s trademark, to the
Respondent’s website, where they are falsely lured into making purchases of counterfeit goods. This allows
the Respondent unjustly to profit from and exploit the goodwill associated with the Complainant’s trademark.
See also Advanced Magazine, supra.
In accordance with Paragraph 4(b)(iv) of the Policy, the Panel is satisfied that there is evidence of
registration and use of the disputed domain names in bad faith. There is no evidence displacing this
presumption.
The third requirement of Paragraph 4(a) of the Policy has been met.
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 <rangerover-ltd.com> and <rangerover-venezuela.com> be
transferred to the Complainant.
Charné Le Roux
Sole Panelist
Dated: September 8, 2011