LAND ROVER just lost a UDRP on the domain name RangeRoverChauffeur.com in a one member panel decision of Houston Putnam Lowry, and the domain owner did not even respond.
Land Rover not only lose the UDRP but it lost all three elements of a UDRP.
Here are the highlights:
“Complainant claims Respondent’s domain is confusingly similar to Complainant’s mark because it incorporates the mark in its entirety and merely adds the descriptive term “chauffeur”
“However, this Panel does not believe the domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
“Complainant is not in the business of being a chauffeur. Complainant’s marks are only for land motor vehicles and parts thereof. The addition of ANY word to Complainant’s mark does not automatically create confusing similarity.
The Panel finds Policy ¶4(a)(i) NOT satisfied.
“Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
The question is whether Respondent is not using the domain in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. According to the UDRP decision in Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001), a reseller has a limited right to use the trademarks of others so long as all of certain criteria are met:
• Respondent must actually be offering the goods or services at issue; AND
• Respondent must use the site to sell only the trademarked goods; AND
• The site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents; AND
• The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
Respondent uses the domain name to advertise its business of providing Ranger Rover chauffeured cars for hire.
There doesn’t seem to be a real dispute on this point (even though Respondent did not file a formal response).
The cars are genuine Range Rovers.
Respondent is only advertising the fact Respondent is using Range Rovers (meaning Respondent is not advertising Bentley chauffeured cars in addition to Range Rover chauffeured cars).
Respondent expressly disclaims any relationship to Complainant and provides a link to Complainant’s web site.
Respondent is not trying to “corner the market” in domain names using Complainant’s mark.
Respondent meets all of the criterial in Oki Data Americas, Inc. v. ASD, Inc., supra.
Respondent is using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
The Panel finds Policy ¶4(a)(ii) NOT satisfied.
Registration and Use in Bad Faith
The Policy sets forth a non-exclusive list of ways to determine whether or not a disputed domain name has been registered and is being used in bad faith:
Policy ¶4(b)(i) finds bad faith if there are circumstances indicating Respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the owner of the mark or to a competitor of that complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name.
That isn’t the case here.
Policy ¶4(b)(ii) finds bad faith if Respondent registered the domain name to prevent the owner of the mark from reflecting the mark in a corresponding domain name, provided Respondent has engaged in a pattern of such conduct.
That isn’t the case here. Complainant has domain names which reflect its mark, including LandRover.com.
Policy ¶4(b)(iii) finds bad faith if Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor.
That isn’t the case here. Complainant and Respondent’s aren’t competitors.
Policy ¶4(b)(iv) finds bad faith if Respondent intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site by using the disputed domain name to create a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site.
That isn’t the case here. Respondent chauffeurs cars manufactured by Complainant and is apparently proud of the fact. A disclaimer appears on Respondent’s web site and directs visitors to Complainant’s web site if that is what they want.
Complainant believes it has demonstrated Respondents bad faith by refusing permission to register this domain name. This Panel thinks not because Respondent has the right to register this domain name under the circumstances of this case. The fact Respondent is aware of the trademark does not automatically mean Respondent registered and uses the domain name in bad faith.
The Panel finds Policy ¶4(a)(iii) NOT satisfied.
