Jaguar Land Rover recovers 175 domains
Car manufacturer Jaguar Land Rover has recovered 175 domain names at the World Intellectual Property Organization’s (WIPO) Arbitration and Mediation Center.
Land Rover filed its complaint at WIPO against an Australia-based respondent, the trustee for the Trivett Family Trust, on August 19.
The decision, which was made on October 10, was published on Wednesday, November 2.
The disputed domains included actrangerover.com.au, goldcoastlandrover.com.au, trivettrangerover.com.au and rangeroverhybrid.com.au. The domains were registered between 2014 and 2015.
Land Rover argued that the respondent was not “actively using any of the disputed domain names and has taken no active steps to sell any of the disputed domain names”.
It added that the respondent had acquired the disputed domain names for a web-based application called “MaintainMy”, to promote genuine parts and services, with plans to test the application in 2018.
Land Rover has owned trademarks for the word mark ‘Jaguar’, ‘Land Rover’ and ‘Range Rover’ since 1945, 1948 and 1969 in Australia, respectively.
The car manufacturer also claimed that the domains are confusingly similar to its mark as each domain incorporates a “distinctive and dominant component” of its marks.
Alistair Payne, sole panellist at WIPO, found that “each of the disputed domain names wholly incorporates one of these trademarks”.
Payne also ruled that the respondent has no rights or legitimate interest in the domains because although the business isn’t up and running, it is clear that the application is under development.
He added: “It seems that a key part of preparations for the business to date has been registration of the disputed domain names. However, the respondent acknowledges that the disputed domain names are to be used to drive traffic to the respondent’s website and have been registered for this purpose.”
In total, 174 domains were transferred to Land Rover and trivettrangerover.com.au was cancelled.
Steven Levy, president of Accent Law Group, told TBO that “as far as I know, the 2010 Inter-Continental Hotels case still holds the record—at 1,542—for most domains in a single Uniform Domain Name Dispute Resolution Policy (UDRP) dispute.”
He added: “Brand owners like Jaguar Land Rover save potentially millions of pounds and many years of courtroom litigation by using the UDRP. As the leading UDRP dispute provider (by volume of cases handled), WIPO serves that function very well.”
Levy said that this case is unusual, not only because of the large number of domain names in dispute, but also because it applies the four-part Oki Data test to a nascent business enterprise.
“The Oki Data decision is the single most-often cited UDRP decision, but its test is usually applied to ongoing businesses of both authorised and unauthorised resellers.”
Matthew Harris, partner at UK-based Waterfront Solicitors, said: “It is a very large number of domain names; it is unusual for there to be cases that large."
He added: “The complication in this case was more, I think, to do with the legal analysis ... Here the complication arose because, as I understand it, the respondent had effectively a business plan in mind where he wasn't just using one domain name for the purposes of selling and marketing goods and services with one mark, from one website, from one domain name, but he was registering 175 of them.
"That, as I understand it, was central to the panellist's decision".
Harris also referenced a domain name case in January last year which involved the transfer of more than 1,000 disputed domains to e-commerce website eBay.
The dispute can be viewed in full here.
