|Respondent||Internet Billions Domains, Inc.|
|Panelist||Elliott, Clive L. (Presiding), Osborne, Dawn, Wallace, Anne|
|Date of Decision||25.06.2003|
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rolls-Royce plc v. Internet Billions Domains, Inc.
Case No. D2003-0270
1. The Parties
The Complainant is Rolls-Royce plc, United Kingdom, represented by Erica Erica Denise Denise Lerner of Buenos Aires, Argentina.
The Respondent is Internet Billions Domains, Inc., , Pavas N/A, Costa Rica, represented by Anthony J DeGidio of Toledo, the USA.
2. The Domain Names and Registrar
The disputed domain names <1rollsroyce.com>, <rollsroyce1.com> (the the "domain domain names") are registered with Domain Bank of Bethleham, PA, USA.
The domain names were registered on June 24 and 27, 1997, respectively.
3. Procedural History
The Complaint was filed and received by e-mail to the WIPO Arbitration and Mediation Center (the "Center") on April 8, 2003. A hard copy was received on April 14, 2003. On April 9, 2003, the Center transmitted by email to Domain Bank a request for registrar verification in connection with the domain name(s) at issue. On April 14, 2003, the Registrar (Domain Bank) transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified on April 17, 2003, 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 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 April 17, 2003. In accordance with the Rules, paragraph 5(a), the due date for the response was May 17, 2003. The Response was filed with the Center on May 17, 2003.
The Complainant lodged a supplementary submission on April 23, 2003. On May 16 2003, e-mail communications between parties, discussed issues raised by the supplemental filing. On June 3, 2003, the Respondent requested the document be struck from the record.
The Center appointed Clive Elliott, Anne Wallace QC and Dawn Osborne as Panelists in this matter on June 11, 2003. The Panel finds that it was properly constituted. Each member of 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.
The Panel is of the view that it is unnecessary to consider the further submission or the strike out request and has not done so, for the reasons apparent below.
On June 25, 2003, a decision was submitted to the Center.
4. Factual Background
Rolls-Royce is a global group that operates in four markets: civil aerospace, defence aerospace, marine and energy. It supports a wide range of customers around the world and employs around 38,000 people worldwide and its annual sales total around 6 billion. Rolls-Royce is the corporate name and the brand of the Complainant.
The Complainant is the owner of many trademark registrations for the ROLLS-ROYCE mark and variations thereof in countries throughout the world. The Complainant asserts that for more than a century, it has been one of the most famous and valuable trade names and trademarks around the world.
Mr. C Levy is the director of Internet Billions Domains, Inc. He is also the owner of a 1954 Rolls-Royce Silver Dawn Hooper "Empress" with an aluminium coach built body. The license plate is 1RR. Rolls Royce only made 12 of these cars. It is thus a vehicle of some value.
In June 2002, the Complainant discovered that Internet Billions Domains, Inc. was using the domain names to direct Internet users to the Respondents Internet casino site at "www.lasvegascasino.com". The Respondents home page invites visitors to online gaming.
On July 23, 2002, the Complainant sent that firm a cease and desist letter providing notice of its alleged exclusive rights in the ROLLS-ROYCE mark, and demanding the immediate cancellation of the domain names. This letter could not be served upon the Respondent because there was no firm domiciled at the address to which it was sent, which is the one provided by the Respondent to the domain names Registrar.
The Complainant tried to contact the Respondent by fax using the number listed in the WHOIS record for the domain names. However the Complainant received no answer, either by a facsimile machine or by an operator.
In a further attempt to contact the Respondent, on August 7, 2002, the Complainant sent it an e-mail attaching a "Word" document with the cease and desist letter that it had previously tried to notify to the Respondent. The e-mail was sent to email@example.com, which is the electronic address indicated at the WHOIS database for the conflicting domain names.
On August 8, 2002, the following message was received by the Complainant via e-mail from the Respondent:
I dont speak or understand whatever language you have used in your Word file, so please send it in English.
The cease and desist letter attached to the Complainants e-mail was, it seems, written in Spanish, we are informed because this is the official language of Costa Rica. Accordingly to the Complainant, it was supposed that the members or employees of a company domiciled in this country should be, at least, acquainted with that language.
On August 9, 2002, the Complainant sent an e-mail to the Respondent attaching a "Word" document with an English version of the former cease and desist letter. However, no further response was received from the Respondent.
It is asserted by the Complainant that after receiving the Complainants cease and desist letter, the Respondent changed the address, phone and fax numbers listed at the domain names Registrar. The new contact information was Paseo Colón, calles 30-32, Edificio E-Business Center, San José.
We are informed that on September 11, 2002, another cease and desist letter was delivered by hand to the Respondents new address. The document in question was received by an employee of the firm, who acknowledged receipt of the letter by signing on a copy of it). The Respondent again did not answer this notice.
Further attempts were made to contact the Respondent at the new telephone and fax numbers. However, they proved unsuccessful insofar the calls were not answered.
5. Parties Contentions
The Complainant states that Rolls-Royce grew from the electrical and mechanical business established by Henry Royce in 1884. Success with the manufacture of cars led to the formation of the Rolls-Royce Company in March 1906, and to the launch of the six-cylinder Silver Ghost which, within a year, was hailed as "the best car in the world."
The Complainant goes on to say that as years passed by, the company grew to design and manufacture other technological products, such as aero engines and gas turbines. The unbeatable performance and quality of these products led the company to be considered one of the worldwide major firms in the engineering field.
It is asserted that the Complainant owns many domain name registrations displaying its famous mark. These include<rolls-royce.com>, <rollsroyce.com>, <rolls-royce.ca>, <rollsroyce.ca>, <rolls-royce.fr>, <rolls-royce.it>, <rolls-royce.ch>, <rolls-royce.jp>, <rolls-royce.com.au>, <rolls-royce.com.ar>, <rolls-royce.com.mx>, <rolls-royce.gr>, <rolls-royce.ma>. It is stated that all Rolls-Royces domain names link to the firms official web page located at " www.rolls-royce.com."
The Complainant claims that the domain names are almost identical to its trade mark and that the only differences between the domain names and the trade marks at issue are the deletion of a hyphen and the addition of the number "1" before and after each of the questioned names.
It also states that Rolls-Royce has no relationship or association with Internet Billions Domains, Inc., and neither the former nor its subsidiary or affiliated companies have ever authorized the Respondent to utilize any of its marks.
Mr. Levy of the Respondent claims to have bought a Rolls-Royce in 1982. The Respondent claims Mr. Levy felt he had the number one Rolls-Royce on the planet and thus wanted the vanity plates "1RR."
The Respondent states Mr. Levy felt so proud of his Rolls Royce that he placed photos of it on a website at <1rollsroyce.com> and <rollsroyce1.com>. The Respondent says it registered both names so someone else could not create confusion with another car perhaps licensed as RR1. The Respondent could then direct fellow enthusiasts to these domain names to the vehicle by that name.
The Respondent and companies associated with it claim to own over 6500 domain names which reside at multiple registrars and are hosted on different servers which are managed by multiple DNS providers. The Respondent says that the complexities of managing many domain names could cause a possible error in directing some of the domain names to other websites. The Respondent claims to have had no knowledge of this occurring and would have immediately corrected it had been advised. Unfortunately the Complainants boilerplate "cease and desist" letters made no reference of such an error. Upon being advised of this situation, after it received the Complaint, the Respondent claims to have immediately corrected the problem.
The Respondent states that Rolls Royce plc is not affiliated with Rolls Royce Motor cars and that the Complainant is not even in the auto business. Accordingly, the Respondent asserts that the reference made to U.S. court decisions calling the mark famous were with respect to the auto company not Rolls Royce plc.
The Respondent states that its intent at the time of registration is clear and the Complainant has presented no evidence to the contrary and even if the Complainant could show that the Respondent registered the domain names with a view to selling them for a very large sum of money, there is nothing to suggest that the Respondent did so in order to sell it to the Complainant or a competitor of the Complainant (paragraph 4(b)(i) of the Policy). In fact it is noted that there has been no such evidence presented and the name has never been offered for sale to the Complainant or anyone else.
There is dispute among the parties that the domain names are "confusingly" similar to the Complainant's trade mark. The Respondent disagrees and asserts the real issue here is one of fair use and that there can be no confusion in fair use as the mark is used to refer to the genuine article. The Respondent argues that its use has been noncommercial and not misleading.
It is also contended that the Complainant and the Respondent are not competitors and there is no assertion that the names were registered by the Respondent primarily to disrupt the Complainant's business. It is also noted that more than 5 years have passed since the registration of these names in 1997.
The Respondent requests a finding of reverse domain name hijacking. It is asserted that the Complainants lack of evidence relating to bad faith is evidence of its attempt to hijack the domain names. The Respondent also says the Complainant brought this action with absolutely no evidence of wrongdoing. It suggests it simply wants the domain names for some reason.
Accordingly, it is submitted that such "Cyber Lying" should in and of itself be considered to be sufficient evidence for a finding of reverse domain name hijacking.
6. Discussion and Findings
Para. 4(a) of the Policy requires that the Complainant must prove each of the following:
The domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
The Respondent has no right or legitimate interest in respect of the domain names; and
The domain names have been registered and are being used in bad faith.
Para. 4(b) of the Policy sets out four illustrative circumstances that, if proved, constitute evidence of bad faith as required by para. 4(a)(iii) referred to above.
Para. 4(c) of the Policy sets out three illustrative circumstances that, if proved, constitute evidence of a right or legitimate interest as described in para. 4(a)(ii) referred to above.
Domains Names Identical or Similar
The Complainant relies on trademark rights. There can be no real doubt that Rolls Rolls Royce is a famous mark both in United Kingdom and internationally. The Respondent does not dispute the fame of the Rolls Royce name but contends that the Complainant has no relevant trade mark rights and that the Complainant's rights relate to the aerospace rather than automotive industry.
In the Panels view it is not relevant that the motor and aerospace companies are not the same. Both trade under the Rolls Royce name and have done so for many years. The Complainant owns registered trade marks for Rolls Royce including some which cover motor vehicles. In any event, the policy does not require a Complainant to have registered trademarks which cover the specific activities of the Respondent. The Complainant is entitled to rely on the extensive number of trademark registrations for Rolls Rolls Royce in its possession and overall reputation and fame of the Rolls Royce name.
In the Panels view it is not critical that the motor and aerospace companies are the same. The connection between the aerospace and automobile companies is a longstanding one. Both trade under the Rolls Royce name and have done so for many years.
Whatever the trade mark registration situation might be, the Complainant is undoubtedly entitled to rely on the overall reputation and fame of the Roll Royce trademark and name. Likewise, any distinctions between Complaints made or cases brought by one or the other Rolls Royce company is of no great moment, for the reasons indicated above.
The Respondents contention that the domain names are not identical to the Complainants mark "rolls royce," has no merit. They are at least confusingly similar.
Accordingly it is found that the domain names are identical or confusingly similar to the name/mark "rolls royce" and that the Complainant makes out its case on this ground.
Respondent has No Rights or Legitimate Interests
It appears that the Respondent has used the domain names to re-direct Internet traffic, at some point in time.
The Respondents evidence is that the use of the domain names to link to its casino site was not deliberate. The Panel finds it difficult to accept that the Respondent, through Mr. Levy who claims to be so attached to his 1RR, would not have known that the websites allegedly registered to display his car were "accidentally" linked to a casino website also owned by the company or Mr. Levy himself. The fact that the Respondent has acquired a number of domain names which include Sheraton, Microsoft and Madonna, albeit with the addition of the word "casino" (see additional comments below), is a factor we also take into account.
If only one of the sites had been so linked, the story might be a little more plausible, but in this case, the Respondent is asking the Panel to accept that the "accident" occurred with respect to both sites. The Respondent did not provide any logical explanation for the mistake the Respondent alleges occurred that linked the car to the casino site. While it is difficult to make credibility findings in a hearing of this nature (and which we do not do), the Panel has some difficulty accepting that the Respondent did not know that both of the domain names somehow got linked to the casino site. It also appears it was only when the Complainant started making complaints to the Respondent that the site was changed to the vehicle picture which is now displayed on the Webster.
Having so found, we are of the view that the Respondent has no rights or legitimate interests and that the obtaining of the domain names was primarily for an ulterior purpose. In this regard, we also rely on the observations made below.
Domain Names Registered and Being Used in Bad Faith
The Panel notes the number of domain names containing famous names that the Respondent holds. Of those mentioned above, they notably include names such as Hilton, Sheraton, Microsoft and Madonna, with the addition of the word "casino". While we have no detailed information on the trademark position, it is evidence that the Respondent is in the habit of using famous names of others for profit or other benefit. It also shows the pattern or theme Sheraton/Hilton for hotels and suggests an interest in taking advantage of third party names indicative of high quality like Rolls Royce. Finally while on this point, it at least suggests that the Respondent is astute to the benefits of famous names.
There is thus some merit in the Complainant's contention that the Respondent's multiple registrations and unauthorised use of domain names corresponding to other people's distinctive names and brands demonstrates a pattern of conduct, relevant to the question before us.
There is also force in the Complainant's assertion that the Respondents failure to answer letters is a basis for inferring bad faith. While certainly not dispositive, it is a consideration.
The Panel finds that the Respondents commercial use of the domain names to increase Internet traffic at the search engine website is in bad faith under Policy 4(b)(iv) and the use of the domain names are likely to result in consumer confusion as to the Complainants supposed affiliation with the resulting search engine website.
The Panel concludes that the Respondent is likely to have been aware of the Complainants interests in the "Rolls Royce" mark, and registered and used the domain names in bad faith. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum, April 17, 2000), (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).
Again the Complainant makes out its case on this ground.
Accordingly, the Complainant has successfully made out all three of the above grounds and is entitled to appropriate relief.
Therefore, and in consideration to the Complaints compliance with the formal requirements for this domain dispute proceeding, to the factual evidence and legal contentions that were submitted, to the confirmation of the presence of each of the elements contemplated in Paragraph 4(a)(i), (ii), and (iii) of the Policy, and on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and other applicable rules and principles of law, as directed by paragraph 15(a) of the Rules, it is found:
(1) that the domain names are confusingly similar to the Complainants Rolls Royce trademark and name;
(2) that the Respondent has no rights or legitimate interests in respect of the domain names; and
(3) that the domain names have been registered and are being used in bad faith by the Respondent.
(4) The Respondents request for a finding of reverse domain name hijacking is refused.
Therefore, the Panel requires, pursuant to what is provided for under Paragraphs 3(c) and 4(i) of the Policy, that the domain names <1rollsroyce.com> and <rollsroyce1.com> be transferred to the Complainant.
Clive L. Elliott
Anne Wallace QC
Dated: June 25, 2003