v.
Suood AL-Mansoori
[Indexed as: Rolls Royce and Bentley v. Suood AL-Mansoori]
[Indexed as: BENTLEY2000.com ; ROLLS-ROYCE.org]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No. D2000-0383
Commenced: 19 May 2000
Judgment: 30 June 2000
Presiding Panelist: J.C. Thomas
Domain name Domain name dispute resolution policy Legitimate interest Bad faith registration Bad faith use Identical Confusingly similar U.S. Trademark Rolls-Royce and Bentley Sufficient Evidence Complaint Does Not Set Out Full Argumentation.
Complainant was owner of United States trademark registrations for the marks ROLLS-ROYCE and BENTLEY. Respondent registered the domain names rolls-royce.org and bentley2000.com.
HELD, Name Transferred to Complainant
Although the Complaint does not fully set out argumentation with respect to all three elements of paragraph 4(b) of the Policy, the Panel is of the view that the record contains sufficient evidence of each of the three elements.
The domain names bentley2000.com and rolls-royce.org are, in the first instance, confusingly similar, and in the second, identical to trademarks in which the Complainant has rights.
Respondent has no rights or legitimate interests in respect of the domain names at issue. Complainants rights and legitimate interests in the names are settled.
The domain names were registered and used in bad faith. Respondents communications to Complainant indicate that Respondent reserved the domain names for the primary purpose of selling the domain names to the Complainant who is the owner of the trademarks for valuable consideration in excess of Respondents out-of-pocket costs.
Policies referred to
Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999
--
Thomas, Panelist: -
1. The Parties
The Complainant
Rolls-Royce and Bentley Motors Limited
Pyms Lane
Crewe, Cheshire, CW1 3PL
UK
Represented by:
Barbara Weil Gall
Sherman & Howard L.L.C.
633 17th Stree, Suite 3000
Denver, Colorado 80202
USA
The Respondent
Suood AL-Mansoori
8899 East Prentice Ave., Apt#3304
Greenwood Village, Colorado 80111
USA
2. The Domain Name and Registrar
The domain names at issue are:
Bentley2000.com
Rolls-Royce.org
It is registered with:
Register.com
575 8th Avenue, 11th Floor
New York, NY 10018
3. Procedural History
h On May 4, 2000, the Complaint was filed with the WIPO Arbitration
and Mediation Center. The Complaint was filed in accordance with the requirements
of the Rules and
Supplemental Rules.
h On May 15, 2000, the Center acknowledged of receipt of the Complaint.
On that date, the Center requested Register.com verification, and received
the Registrars answer
to that request on May 16, 2000.
h On May 19, 2000, the Center printed out the web pages for the contested
domain names. Both websites stated that they are "coming soon". The Center
also
communicated to both parties a Notification of Complaint and Commencement
together with communication records. The e-mail to the respondent was returned
as an
undeliverable e-mail message.
h Rule 5 of Rules for Uniform Domain Name Dispute Resolution Policy
requires a respondent to submit a response to the Provider addressing the
matters contained therein
within twenty days of the date of commencement of the administrative
proceeding. As no such response was submitted, on June 8, 2000, the Center
recorded a
Notification of Respondents Default and communicated it to both parties.
h On June 16, 2000, the sole panelist agreed to the appointment. As
required by the Rules, he filed a Statement of Acceptance and Declaration
of Impartiality and
Independence.
h On June 20, 2000, the Center provided Notification of Appointment of Administrative Panel and Projected Decision Date to the parties.
4. Jurisdictional Basis for the Mandatory Administrative Proceeding
Paragraph 4 of the ICANN Uniform Domain Name Dispute Resolution Policy
requires that a registrant must submit to a mandatory administrative proceeding
in the event
that a third party asserts to the applicable Provider, in compliance
with the Rules of Procedure, that the registered domain name is disputed
under the grounds stipulated in
that paragraph.
The registration agreement, pursuant to which the domain name that is
the subject of this Complaint was registered, incorporates the Policy in
force at the time "or a later
version of this Policy adapted by ICANN". A true and correct copy of
the domain name dispute policy applicable to the domain name in question
was provided by the
complainant as Exhibit B to the Complaint.
As noted above, under Paragraph 4(a), a respondent is required to submit to a mandatory administrative proceeding where it is alleged that:
(1) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) The respondent has no rights or legitimate interests in respect of the domain name; and
(3) The domain name has been registered and is being used in bad faith.
The Administrative Panel finds that the complainant has complied with
the applicable rules and this dispute is properly within the scope of the
Policy and, further, that the
Panel has jurisdiction to decide the dispute.
5. Factual Background
The Panel must base its decision on the record evidence. As the complainant
was the only party that filed evidence in support of its case, where findings
of fact are made,
in each instance, the Panel has satisfied itself that the evidence
supports the complainants allegations of fact.
The domain names at issue, rolls-royce.org and bentley2000.com, were
registered by the respondent on October 5, and October 6, 1999, respectively.
Although the
Complaint is silent as to when the complainant first became aware of
the respondents registration of the domain names, Exhibit D, dated October
20, 1999, shows that the
respondent contacted Ms. Claire Smith and confirmed that he "got the
domain names Rolls-Royce.org and Bentley2000.com".
Exhibit C to the Complaint contains copies of the registration certificates
showing that the complainant owns the exclusive trademark ROLLS-ROYCE,
U.S. Registration
No. 0325195 (for Automobiles and chassis in Class 19) and owns the
exclusive trademark BENTLEY, U.S. Registration No. 0645703 (Internal combustion
engines and
parts thereof in Class 7).
The domain names adopted by Respondent, Bentley2000.com and Rolls-Royce.org,
are in the first instance, substantially identical to complainants registered
trademark
BENTLEY with the addition of the number "2000", and in the second instance,
identical to the registered trademark, ROLLS-ROYCE.
On October 20, 1999, the respondent acknowledged that purpose for obtaining
the domain names in question was to sell them and indeed, offered them
for sale or "some
commission". On October 24, 1999, respondent again offered to sell
the domain names to the complainant for more than his out-of-pocket expenses
and described other
offers claimed to have been received from third parties.
6. Parties Contentions
A. The complainant contends that:
The respondents purpose in registering the domain names was for the
sole purpose of obtaining money for them, in violation of paragraph 4(b)(i)
of the ICANN Uniform
Domain Name Dispute Resolution Policy. It goes on to contend [at paragraph
12.B] that the domain names were "certainly registered in bad faith".
B. The respondent contends that:
The respondent was duly served by the WIPO Arbitration and Mediation
Center but did not file a response within the prescribed timeframe. Accordingly,
a Notification of
Respondent Default was issued by the Center on June 8, 2000.
In the interests of transparency, however, it is worth citing the two e-mail messages transmitted by the respondent to the Complainant prior to the filing of this Complaint.
The first, dated October 20, 1999, is reproduced in full:
"Dear Sir GARRETTS,
well Im the one who got the domain names Rolls-Royce.org and Bentley2000.com,
well lets talk seriously, actually Im 20 years old ..studying in USA,
and I was looking
at some domains that were sold for a great prices like for hundreds
of thousands or millions and thought that I might get a nice name and sell
it for a price like that
I dont
have any background in things like that but I thought that I might
be able to sell it and buy a real nice car since I dont got one
and I
didnt know if what Im doing was
eligal or not ..and I also thought of selling the domain names to an
authorized Rolls-Royce and Bentley dealers, and at least I reserved it
for them and no one else did, Im
an understanding person and I guess I understood that Ive made a mistake
..but I wish that my dream becomes true so is there any possible way that
at least I get some
commission for it .. and Ill be glad to return the domains
so I would
love to be informed please and thank you
Best regards
Suood AL-Mansoori"
This message was followed by another e-mail on October 24, 1999. It is also reproduced in full:
"Dear GARRETTS,
well its me again Suood AL-Mansoori about the subject of the domain
names Rolls-Royce.org and Bentley2000.com, well you guys are trying to
let me sell the domains to
you by the price that I bought and not to make a website with it and
do not sell it
but I think that is not fair for me, since you wanna take
the name from me and Im the
one who bought it and paid for it, and I also got some bids on it and
the last one was around $186,000 and Im getting more bids each time and
still didnt decide ..and at
the end you guys come to ask me to sell it by the price of $70, I guess
it doesnt fit that a big company like Rolls-Royce and Bentley will try
to sue me and try to put
lawyers against some one who is 20 year old only
that might be not
good for companies like these
especially that those companies are very
famous world wide, ..I
was thinking of making a website using Java and cool stuff for Rolls-Royce
and Bentley cars, but I will stop this decision
but still not thinking
to sell the domain for $ 70
which is the price that I bought it for ..its unbelievable that I get
a $200,000 bid for this domain and at the end I sell it for $70 thats
really not fair, so I would like you to talk
to the manager and for the responsible people and make a decision about
the domain name ..and Ill be waiting for your reply
so take care and
good bye ..waiting for the
reply ..thank you.
Suood AL-Mansoori"
7. Discussion and Findings
The Panel is constituted in order to determine whether the respondents
registration of bentley2000.com and rolls-royce.org complies with the Uniform
Domain Name
Dispute Resolution Policy. As noted above, the Policy provides for
a mandatory administrative proceeding on the grounds set out in paragraph
4. They are:
Applicable Disputes. You are required to submit to a mandatory administrative
proceeding in the event that a third party (a "complainant") asserts to
the applicable
Provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
The Complaint does not fully set out argumentation with respect to all
three elements of paragraph 4(b). That being said, the Panel is of the
view that the record contains
sufficient evidence of each of the three elements.
The Panel finds that the complainant has proved the first element. In
its view, the domain names bentley2000.com and rolls-royce.org are, in
the first instance, confusingly
similar, and in the second, identical to trademarks in which the complainant
has rights.
Secondly, the complainant must prove that the respondent has no rights or legitimate interests in respect of the domain name.
The Panel concludes that respondent has no rights or legitimate interests
in respect of the domain names at issue. The complainants rights and legitimate
interests in the
name bentley2000.com and rolls-royce.org are settled.
Thirdly, it must be shown that the domain name at issue has been registered
and is being used in bad faith. The respondents two communications cited
in paragraph 6(B)
above indicate that the respondent reserved the domain names for the
sole purpose of obtaining money for them.
The Panel concludes that a review of the evidence filed in support of
the Complaint shows that bentley2000.com and rolls-royce.org were registered
"primarily for the
purpose of selling" the domain name registration to the complainant
who is the owner of the trademarks for valuable consideration in excess
of the respondents
out-of-pocket costs.
In the circumstances, the Panel has no doubt in concluding that the domain names were registered and used in bad faith.
8. Decision
At paragraph 13 of the Complaint, the complainant requested that the
Panel issue a decision that the contested domain name be transferred to
it. In light of the findings
made above and having regard to the remedies stipulated in Paragraphs
4(i) of the Policy and 15 of the Rules, the Panel orders that the domain
names bentley2000.com
and rolls-royce.org be transferred to the complainant, Rolls-Royce
and Bentley Motors Limited.
J. C. THOMAS
Presiding Panelist
Dated: June 30, 2000
Domain Name Transferred