In a World Intellectual Property Office (WIPO) domain name decision, WIPO has ordered the cancellation of 175 domain names that include the famous Range Rover, Land Rover and Jaguar trademarks. The domains were registered in the .au ccTLD by the Trustee for the Trivett Family Trust (Trivett). Representative samples of the domains include rangeroverservicecentre.com.au., jaguarhybrid.com.au and landrover.net.au. Jaguar Land Rover (JLR) submitted its complaint in August. The decision was rendered on October 10, 2016. The ownership of the Jaguar, Land Rover and Range Rover marks was not in dispute. Trivett submitted that the domains were acquired by Trivett for the purposes of developing a proposed “Maintain My” web platform that would connect consumers to a range of service providers, including manufacturers of both genuine and non-genuine automotive spare parts.
JLR submitted that the use of well-known trademarks together with geographic or descriptive terms creates a domain name that is confusingly similar to the well-known trademark. Furthermore, JLR did not license or permit Trivett to use the trademarks, nor was the proposed use of the trademarks tantamount to a bona fide offering of goods and services. Trivett relied upon the test set out in the Oki-Data Americas, Inc. v ASD decision that sets out four minimum factors used to help decide whether there was a bona fide use of the domain name. Those factors include:
- The respondent must actually be offering the goods or services (Trivett had said that it was going to use the names starting in 2017 as part of its “Maintain My” platform);
- Only genuine trademarked goods could be sold on the website;
- The site must accurately disclose the relationship between the registrant and the trademark owner, and may not falsely suggest that the registrant is the trademark owner or is an official site; and
- The respondent must not try to corner the market in all domain names (175!) depriving the trademark owner of its own use of the mark.
The WIPO panel discussed that the decision may have been different had Trivett been able to show development of its “Maintain My” mark and if they could show that they actually sold JLR vehicles and they had not registered 175 domains.
The result: Oki-Data is still a reasonable test for the bona fide intent. It just so happened that Trivett did not qualify for any of the prongs of the test.