November 4, 2016
On October 10, 2016, the WIPO Arbitration and Mediation Center delivered issued a ruling on an auDRP case involving 175 domain names (mostly .com.au). The domain names included the trademarks « Jaguar », « Land Rover » or « Range Rover », accompanied by descriptive terms. The decision DAU2016-033 is available here.
The registrant stated that a service allowing owners of vehicles of the brands concerned to liaise with service providers such as repairers or spare parts providers was in preparation. The 175 domain names had been reserved in order to anticipate the launch of said service. This case served to remind the public of the criteria necessary for a ruling in favour of legitimate interest, in the case of a domain name used in connection with a bona fide offering of goods and services. These criteria are listed in decision D2001-0903 « Oki Data Americas, Inc. v. ASD, Inc. » (available here). In order to find in favour of legitimate interest, a « Bona Fide » offering of goods or services in connection with a domain name registration must :
actually offer for sale the goods or services at issue ;
use the site to sell only the trademarked goods ;
accurately disclose the registrant's relationship with the trademark owner ;
not try to corner the market by monopolizing all relevant domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
In this particular case, the Panelist considered the registration of 175 domain names as an attempt to corner the market, thus preventing a finding of legitimate interest in those registrations in connection with the service described. However, the panelist underlines that the outcome might have been different in the presence of a much smaller amount of domain names.
In this case, the huge number of domain name registrations went against the registrant, although the domain names were apparently registered in connection with a (supposedly) non-infringing service. It may also be recalled here that Jaguar Land Rover Limited recently lost in a UDRP case involving the domain name rangeroverchauffeur.com (decision available here). In this case, the Panelist found that the registrant of the domain name fulfilled the four criteria listed above and denied the complaint.