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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Rolls-Royce Motor Cars Limited v. Lazarus Essulat

Case No. D2005-1161

 

1. The Parties

The Complainant is Rolls-Royce Motor Cars Limited, Munich, Germany.

The Respondent is Lazarus Essulat, Merced, California, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <donmasseyrollsroyce.com> is registered with eNom.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2005. On November 9, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On November 15, 2005, eNom 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”), 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 November 18, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was December 8, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 12, 2005.

The Center appointed Peter G. Nitter as the sole panelist in this matter on December 19, 2005. 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.

On December 19, 2005, the Center received an e-mail from the Respondent reading: “Hello, you may have this domain. Just send in a transfer request and we will approve it. Regards Webmaster.” On the basis of this e-mail, the Panel instructed the Center to contact the parties in order to give them the opportunity to settle the dispute. The Complainant expressed its wish for the Panel to proceed with its decision.

 

4. Factual Background

The Complainant carries on business in the manufacture and distribution of Rolls-Royce cars. ROLLS-ROYCE has been used as a trademark for cars since 1904 in the United Kingdom. The trademark has also been used by the Complainant and its predecessors-in-title throughout the world for the past 100 years, in connection with high-quality goods and services.

The trademark ROLLS-ROYCE was filed April 9, 1907 by the British Patent Authorities and has since been renewed. Further, the trademark ROLLS-ROYCE was filed May 21, 1924, with the United States Patent and Trademark Office (USPTO) and has since been renewed.

On December 23, 1998, the ROLLS-ROYCE trademark was assigned to the Complainant from the aero-engine manufacturer Rolls-Royce PLC. At the same time, the Complainant licensed the use of ROLLS-ROYCE to Bentley Motors Ltd. On December 31, 2002, this license agreement was terminated by the Complainant. The background for this was that the Complainant had designed and engineered a new Rolls-Royce car and established a new manufacturing facility in the United Kingdom for current Rolls-Royce cars.

The Respondent has registered and used the disputed domain name since September 18, 2002.

 

5. Parties’ Contentions

A. Complainant

The domain name at issue is confusingly similar to the Complainant’s trademark ROLLS-ROYCE.

The domain name consists of the trademark ROLLS-ROYCE, preceded by the name “Don Massey” a trade name of a car dealer group in the United States which is operated by Sonic Automotive Inc, one of the largest automotive retailers in the United States. Don Massey was previously an authorized dealer of Rolls-Royce cars of Bentley Motors Ltd. prior to and for a short period after the time when the Complainant purchased the rights, title and goodwill in the trademark ROLLS-ROYCE and licensed it to Bentley Motors Ltd.

The license from the Complainant to Bentley Motors Ltd. ceased in 2002 and Bentley terminated its sublicenses to its Rolls-Royce dealer network. Don Massey Rolls-Royce and Bentley probably allowed the domain name to lapse due to its ending status as an authorized dealer, at which time, the Respondent registered the domain name. Therefore, Don Massey as a trading entity has no official connection to or authorization from the Complainant. Currently, “Don Massy” is no longer being used by its owners in conjunction with “Rolls-Royce” but is being used as a trade name in conjunction with other car brands.

The fact that Don Massey is a trading name used with respect to car dealerships and is commonly used in combination with the brand name of cars, is likely to lead to confusion as to the status and source of any website connected to <donmasseyrollsroyce.com>. Moreover, the fact that there used to be an official dealership trading under the name “Don Massey Rolls-Royce and Bentley” which was actually using the domain name at issue, is likely to create even more consumer confusion, since consumers who knew Don Massey Rolls-Royce cars would be misled as to the source or affiliation of the Respondent’s current website.

As a consequence, the addition of the trade name “Don Massey” to “Rolls-Royce” within <donmasseyrollsroyce.com>, is not sufficient to render the domain name dissimilar or to prevent consumer confusion. Indeed, previous cases involving a Complaint’s trademark in conjunction with a third party’s trade name and/or trademark which is not a party in the Complaint, have found confusingly similarity under paragraph. 4(a)(i) of the Policy.

Further, the minor differences in the addition of .com as a generic top level domain and the removal of the hyphen of the ROLLS-ROYCE trademark are not sufficient to render the domain name dissimilar or to prevent consumer confusion.

The Respondent has no rights or legitimate interests in respect of the domain name at issue.

The Complainant submits that the Respondent was, as under paragraph 4(b)(iv) of the Policy, intentionally attempting “to attract, for commercial gain, Internet users to [the] website or location or of a product or service on the website or location”. The Complainant submits that the domain name at issue has been used to advertise and provide links to commercial pornographic websites and that the Respondent also commercially benefits from diverting consumers to the numerous advertisements for other pornographic sites that automatically “pop-up” at the site. The disputed domain name was registered, and has been used in bad faith.

B. Respondent

The Respondent has not responded to the Complainant’s contentions other than the e-mail referred to in Section 3 above, and is thus in default.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

The domain name at issue is not identical to a trademark held by Complainant, and the question is therefore whether there is confusing similarity.

The disputed domain name consists of the trademark ROLLS-ROYCE, preceded by the name “Don Massey”, a trade name of a car dealer group that was previously an authorized dealer of Rolls-Roycecars. As Don Massey is now a trading name used with respect to other car dealerships and is commonly used in combination with the brand name of cars, the Panel finds it likely that websites connected to <donmasseyrollsroyce.com> will be confused with the Complainant’s trademark. Further, the fact that an official dealership used to practice trading under the name “Don Massey Rolls-Royce and Bentley” and was using the domain name at issue, supports this conclusion.

The Panel agrees with the Complainant that the addition of the trade name “Don Massey” to “Rolls-Royce” is not sufficient to render the domain name dissimilar or to prevent consumer confusion. The Panel further agrees with the Complainant that the minor differences in the addition of .com and the removal of the hyphen of the ROLLS-ROYCE trademark is not sufficient to render the domain name dissimilar or to prevent consumer confusion.

Hence, the Panel finds that there is confusing similarity between Complainant’s trademark and the domain name at issue.

B. Rights or Legitimate Interests

Respondent has not contested Complainant’s allegation that Respondent lacks any rights or legitimate interests in the contested domain name, and has on the contrary stated in an e-mail that the domain name may be transferred to Complainant, as referred to in Section 3 above.

It is generally difficult for a complainant to prove that a respondent does not have any rights or legitimate interests in the domain name at issue, and on the other hand, it would be simple for Respondent to demonstrate that he has any such rights or legitimate interests pursuant to paragraph 4(c) of the Policy. Previous decisions under the UDRP have therefore found it sufficient for Complainant to make a prima facie showing of its assertion in the event of a Respondent’s default.

The Panel takes for its basis that the Complainant has not granted Respondent rights to use its mark, and that it is in no way affiliated with Respondent. The world renown of Complainant makes these assertions easy to accept for the Panel.

The Panel finds that the circumstances mentioned and evidenced by Complainant is sufficient to establish a prima facie showing that Respondent has no rights or legitimate interests in the domain name at issue.

As Respondent has not demonstrated any of the three circumstances that constitute rights to or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy, the Panel concludes that the Respondent does not have any rights or legitimate interests in respect of the domain name at issue.

C. Registered and Used in Bad Faith

As a result of the worldwide fame of Complainant’s trademark, and the use of the trademark in combination with the name of a car dealer group, the Panel finds it inconceivable that Respondent should not have been aware of Complainant when registering the domain name at issue, and therefore the Respondent could not have been unaware that the registration of the disputed domain name would infringe upon Complainant’s rights.

The website resolving to the domain name at issue has contained advertisements and has been used to provide links to commercial pornographic websites. The registration and use of a domain name containing the combination of the terms “Don Massey” and “Rolls-Royce”, which must be regarded as distinctive to Complainant’s business, thus appears to be an attempt to attract for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark. This is evidence of bad faith registration and use pursuant to the Policy, paragraph 4(b)(iii).

As a result of the above, the Panel finds it evidenced that the domain name at issue was registered and has been used in bad faith by Respondent.

 

7. Decision

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 <donmasseyrollsroyce.com> be cancelled.


Peter G. Nitter
Sole Panelist

Date: January 12, 2006

 

Источник информации: https://internet-law.ru/intlaw/udrp/2005/d2005-1161.html

 

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