Domain names: No roving on Jaguar’s cyber land
13 January 2017
Famous worldwide as a manufacturer of premium vehicles, Jaguar Land Rover Limited (the complainant) owns numerous trade marks, including Australian national trade marks, for JAGUAR, LAND ROVER and RANGE ROVER.
Registration of 175 ".au" domain names, held by the Trustee for the Trivett Family Trust (the respondent), was disputed by the complainant as the domain names incorporated the complainant's marks alongside geographical or descriptive words (eg, "adelaidejaguar.com.au" and "maintainmylandrover.com.au") or "Trivett".
Satisfied the formal requirements of the ".au" Dispute Resolution Policy (a uniform domain-name dispute-resolution policy (UDRP) variation) and rules were met, the WIPO panel held:
- The domain names wholly incorporated the complainant's highly distinctive and well-known marks with no other distinguishing term, such that the domain names were identical or confusingly similar to the marks.
- The respondent gave no evidence of a legitimate non-commercial interest and had cornered the market (contrary to an Oki Data criterion), thus depriving the complainant from seeking to register the domain names.
- The domain names had been registered in bad faith for commercial gain to drive traffic to the respondent's website by creating a likelihood of confusion with the marks.
The panel ordered the transfer of 174 domain names and the cancellation of one incorporating the Trivett name.