Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

The Complainant is Rolls-Royce PLC of 65 Buckingham Gate, London SWE 6AT, England, United Kingdom.

The Respondent is Hallofpain of 9063 Descartes, Montreal, QC HIR 3N2, Canada.

The contested domain names are <rollsroycecanada.com> and <rollsroycecanada.net>.

The registrar is Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, VA 20170.

The hardcopy of the Complaint form was filed on December 7, 2000. The electronic version of the Complaint was received on December 11, 2000.

In accordance with Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy ("ICANN Rules") and Paragraph 5 of the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"), the Center verified that the Complaint satisfies the formal requirements of the ICANN Policy, ICANN Rules and Supplemental Rules.

Payment in the required amount was received on December 7, 2000.

On December 14, 2000, the Center formally notified the Respondent by post/courier and email of the Complaint and of the commencement of this administrative proceeding and sent copies to the Complainant, the Registrar and ICANN.

On December 27, 2000, the Respondent filed a response that was deficient in a number of respects. On January 19, 2001, the Center sent a Response Deficiency Notification by email to the Respondent and the Complainant. The Respondent did not remedy the deficiencies.

On February 6, 2001, the Center contacted Mr John Swinson and requested that he acts as panelist in this case.

On February 6, 2001, Mr Swinson accepted to act as panelist in this case and submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

On February 6, 2001, the parties were notified that Mr Swinson had been appointed and that a decision was to be handed down by February 19, 2001.

The language of the proceeding is English.

The panel is satisfied that the Complaint was filed in accordance with the requirements of the ICANN Rules and Supplemental Rules; payment was properly made; the panel agrees with the Center’s assessment concerning the Complaint’s compliance with the formal requirements; the Complaint was properly notified to the Respondent in accordance with paragraph 2(b) of the ICANN Rules; an administratively deficient Response was filed by the Respondent; and the administrative panel was properly constituted.

The Complainant is the owner of the following registered Canadian trade marks:

- Canadian Registration No. UCA05921 for the trade mark ROLLS-ROYCE, registered on April 17, 1936; and

- Canadian Registration No. TMA217,812 for the trade mark ROLLS ROYCE & Design, registered on December 17, 1976.

The Complainant’s predecessor in title first used the firstmentioned trade mark in Canada in 1907.

A. Complainant

The Complainant and its licensees have extensively used the trade mark ROLLS-ROYCE in Canada and throughout the world in association with products and services for the aviation and automotive industries that are known for their high quality and excellence.

In Canada, the Complainant owns and operates various subsidiaries, including Rolls-Royce (Canada) Limited-Limitee and Rolls-Royce Gas Turbine Engines (Canada) Inc which sell and service industrial gas turbines and aeroplane engines.

In 1998, the group turnover of Complainant’s operations in Canada was £827 million.

The Complainant maintains a website at <rolls-royce.com>, which advertises its products and services. The Complainant’s Canadian subsidiaries have reserved the domain names rolls-royce.ca and rollsroyce.ca for its use.

The Complainant’s trade mark ROLLS ROYCE has been described in articles and textbooks by a number of intellectual property experts as a "famous" trade mark.

The Complainant states that the Respondent has not used the domain names in connection with the bona fide offering of goods and services.

The Complainant contends that the Respondent intended to divert persons looking for the Complainant’s Canadian website and to capitalize on the Complainant’s famous trade mark ROLLS-ROYCE.

The Complainant contends that the Respondent intended to tarnish the Complainant’s famous trade mark ROLLS-ROYCE. Until at least as late as September 29, 2000, the Respondent used the domain names in association with the superadultvideo.com website. The superadultvideo.com website is used for the advertisement, promotion, sale and delivery of pornographic videotapes, DVDs and sex products.

The Complainant alleges that the Respondent registered or acquired the domain names primarily for the purpose of selling the domain names to the Complainant for valuable consideration in excess of the domain name registrant’s out-of-pocket costs directly related to the domain names.

B. Respondent

A Mr Killger filed a short Response (purportedly on behalf of the Respondent) by email which was administratively deficient in a number of respects, including (i) the Response was not submitted in electronic format as required by ICANN Rule 5(b); (ii) the Response was not submitted in one original and four copies, as required by ICANN Rule 5(b) and Supplemental Rule 3(c); (iii) the Response did not specify a preferred address for case-related communications to the Respondent or its authorized representative as required by ICANN Rule 5(b)(ii); (iv) the Response does not specify a preferred method of communication for case-related communications to the Respondent or its authorized representative as required by ICANN Rule 5(b)(iii); (v) the Response does not contain the full statement specified in ICANN Rule 5(b)(viii); and (vi) the Response has not been signed by the Respondent or its authorized representative as required by ICANN Rule 5(b)(viii).

The Response alleged that a technical error on the part of the site(s) administrators caused the domain names to be "pointed" to superadultvideo.com. The Response states that this was a regrettable error which was rectified upon the Respondent’s knowledge at the time of the Complainant’s first contact with the Respondent.

The Response contends that the Complainant has no trade mark rights in relation to the words "rollsroycecanada".

The Response alleges that a disgruntled employee "took matters into their own hands" and offered to sell the domain names to the Complainant. The Response states that the disgruntled employee was disciplined accordingly. The Response is not clear which entity employed this employee. It is also not clear how Mr Killger is associated with the Respondent. The record is not clear as to what is the legal status or form of the Respondent.

The first issue is whether the panel will consider the administratively deficient Response of December 27, 2000. Under the Rules, the panel has the discretion of determining the admissibility, relevance, materiality and weight of the evidence. See ICANN Rules 10(a) and 10(d).

The Response does not contain the certification required by ICANN Rule 5(b)(viii). The Response has not been signed by the Respondent or its authorized representative, as required by ICANN Rule 5(b)(viii). Similar situations were addressed in Talk City, Inc. v. Michael Robertson Case No. D2000-0009 and InfoSpace.com v. Tenenbaum Ofer Case No. D2000-0075.

In Talk City Inc. v. Michael Robertson Case No. D2000-0009, the panel stated:

"After considering Respondent’s February 16 e-mail, the Panel has concluded that it will not accord any weight to the facts alleged in it. That is because Respondent’s e-mail did not contain any certification that the information contained in the e-mail was, ‘to the best of Respondent’s knowledge complete and accurate.’ Rule 5(b)(viii). Without the benefit of this certification, it is not appropriate to accept the factual assertions contained in the e-mail. Although the Panel is granted discretion to consider late responses, it is not granted similar discretion to waive the Rule 5(b)(viii) certification requirement. Moreover, given that we still are in the early stages of the ICANN uniform dispute resolution process, it is arguably even more important than usual to insist on strict compliance with the Rules. Inconsistent approaches to the Rules will only cause a loss in confidence in the Uniform Domain Name Dispute Resolution Policy (the ‘Policy’) and the Rules promulgated by ICANN."

ICANN Rule 10(d) gives the panel the discretion to determine the admissibility of evidence. The Respondent’s email could possibly be considered as evidence rather than a Response, and the panel could admit into evidence and consider this email pursuant to Rule 10(d).

In this case, the panel has determined that it will decide this case without reference to the uncertified Response as (i) the relationship between Mr Killger, the name at the foot of the uncertified Response, and the Respondent is unclear; (ii) the person who submitted the Response has not only failed to certify that the information contained in its Response is complete and accurate, but it has also failed to sign the Response; and (iii) the Provider gave the Respondent notice of the deficiencies and gave the Respondent additional time to rectify the deficiencies, but the Respondent chose not to rectify the deficiencies.

As the Respondent chose not to rectify the deficiencies in its Response after being given notice of those deficiencies, the panel has decided not to exercise its discretion to request further statements from the Respondent under ICANN Rule 12. The panel has also decided not to exercise its discretion to extend the deadline for a decision under ICANN Rule 15(b) as the panel does not consider the Respondent’s non-compliance with the administrative requirements to be exceptional circumstances warranting an extension of the deadline for a decision in this case.

In any event, the decision in this case would have been the same had the panel considered the uncertified Response when making its decision.

In order to qualify for a remedy, the Complainant must prove each of the three elements set out in Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 ("ICANN Policy"), namely:

(i) the domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

The onus of proving these elements is that of the Complainant.

6.1 Identical or confusingly similar to a trade mark or service mark

The panel finds that the Complainant is the owner of the registered Canadian trade marks ROLLS-ROYCE and ROLLS ROYCE. These are well-known, famous marks.

The only differences between the contested domain names and the trade marks is (i) the deletion of a hyphen or space; (ii) the addition of the country name "canada" and (iii) the addition of the suffixes ".com" and ".net".

The use or absence of punctuation marks, such as hyphens and spaces, does not alter the fact that a domain name is identical to a mark: Chernow Communications, Inc. v. Jonathon D. Kimball, Case No. D2000-0119; The Channel Tunnel Group Ltd v. Powell, Case No. D2000-0038; SeekAmerica Networks, Inc. v. Tariq Masood and Solo Signs, Case No. D2000-0131; Hewlett-Packard Company v. Cupcake City, Case No. FA0002000093562; InfoSpace.com, Inc. v. Tenenbaum Ofer, Case No. D2000-0075; EFG Bank European Financial Group SA v. Jacob Foundation, Case No. D2000-0036; Colgate-Palmolive Company v. Charles Kasinga, Case No. FA0002000094203; AT&T Corp v. WorldclassMedia.com, Case No. D2000-0553.

The addition of the name of a place to a trade mark, such as the addition of the word "Canada" to "ROLLSROYCE", is a common method for specifying the location of business services provided under the trade mark. The addition of the geographical location to a trade mark does not prevent the domain name from being confusingly similar to the trade mark: America Online, Inc. v. Asian On-Line This Domain For Sale Case No. FA0004000094636; The Prudential Insurance Company of America v. J. J. Corp Case No. FA 0008000095509; America Online, Inc. v. Dolphin@Heart Case No. D2000-0713; Texaco, Inc. v. Texaco Domain Canada, Case No. FA0005000094869.

The addition of the suffix ".com" or ".net" is an irrelevant distinction which does not change the likelihood for confusion: Microsoft Corporation v. Amit Mehrotra WIPO Case No. D2000-0053 and InfoSpace.com, Inc. v. Tenenbaum Ofer, Case No. D2000-0075.

As a result, the panel finds that the contested domain names are confusingly similar to the trade marks owned by the Complainant.

6.2 Illegitimacy

Paragraph 4(a)(ii) of the ICANN Policy requires the Complainant to prove a negative.

The Complainant contends that the Respondent has no legitimate interest in the use of the contested domain names, as the Respondent:

(a) has not used the domain names in connection with the bona fide offering of goods and services. Instead, the Respondent intended to divert persons looking for the Complainant’s Canadian website and to tarnish the Complainant’s famous trade mark "ROLLS-ROYCE";

(b) is not commonly known by the domain names; and

(c) is not making a legitimate non-commercial or fair use of the domain names.

The panel agrees with the Complainant’s assertions above.

There is no apparent association between the Respondent’s name, HALLOFPAIN, and the name ROLLSROYCECANADA.

Paragraph 4(c) of the ICANN Policy sets out three elements, any of which shall demonstrate the Respondent’s legitimate rights in the contested domain names. The Respondent does not meet any of the three elements set out in this paragraph.

Accordingly, the panel finds that the Respondent has no rights or legitimate interests in respect of the domain names.

6.3 Bad Faith

The Complainant contends that the Respondent registered and is using the domain names in bad faith as:

(a) the domain names were used to tarnish the Complainant’s trade mark ROLLS-ROYCE. Until at least as late as September 29, 2000, the Respondent used the domain names in association with the superadultvideo.com website; and

(b) the domain names were registered or acquired primarily for the purpose of selling the domain name registrations to the Complainant for valuable consideration in excess of the domain name registrant’s out-of-pocket costs directly related to the domain names.

On October 11, 2000, the Complainant’s attorney sent a letter to Mr Kilger Minziga, the administrative, technical, and zone and billing contact for the Respondent, objecting to the Respondent’s registration of the contested domain names. A written response to that letter was never received.

On October 30, 2000, the Complainant’s attorney telephoned the Respondent to discuss the Complainant’s attorney’s letter. An individual named Carlo Foster answered the call and advised that the letter had been received by Mr Minziga and that the domain names were for sale. Two emails were sent to the Complainant by Carlo Foster confirming that the domain names were for sale by Mr Minziga for US$6000 for rollsroycecanada.com and US$4,000 for rollsroycecanada.net. A third email (purportedly from the Respondent) was received by the Complainant stating that any agreement by and between the Complainant and the Respondent’s business colleagues is cancelled.

The circumstances listed in Paragraph 4(b) of the ICANN Policy are examples of registration and use of a domain name in bad faith. Paragraph 4(a)(iii) of the ICANN Policy is not limited to these examples. Here, the panel considers that using domain names that is confusingly similar to a famous registered trade mark to redirect Internet users to a pornographic website is strong evidence that the domain names have been registered and is being used in bad faith.

Additionally, the panel finds that the Complainant has provided sufficient evidence to satisfy Paragraphs 4(b)(i) and (iv) of the ICANN Policy.

The panel finds that the Complainant has established the element set out in Paragraph 4(a)(iii) of the ICANN Policy.

For the reasons set forth above and pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the contested domain names be transferred to the Complainant.

John Swinson
Presiding Panelist