Generic Top Level Domain Name (gTLD) Decisions

DECISION

Patrick Jaguar, LLC d/b/a Patrick Jaguar v. Alex Bruzas

Claim Number: FA0202000105182

PARTIES

The Complainant is Patrick Jaguar, LLC d/b/a Patrick Jaguar, Naperville, IL (“Complainant”) represented by Martin Stilwell, COO. The Respondent is Alex Bruzas, Elmhurst, IL  (“Respondent”).

           

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <patrickjaguar.com> registered with Network Solutions, Inc.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

            Judge Richard B. Wickersham, (Ret.) as Panelist

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) on February 26, 2002 and was received by the Forum that date.

On February 26, 2002, Network Solutions, Inc. confirmed to the Forum that it was the Registrar of the domain name <patrickjaguar.com>, that the Registrant of the same was Alex Bruzas, and the status of the domain name registration was Active.   Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions 5.0 Registration Agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’S  Uniform Domain Name Dispute Resolution Policy (“the Policy”).

In accordance with Rules Paragraph 4(c), the formal date of the commencement of the Administrative Proceeding is March 4, 2002.

Respondent was notified that within twenty calendar days from the commencement date the Forum must receive a Response and all exhibits according to the requirements that are described in The Rules, Paragraph 5 and the Supplemental Rules.   A timely Response was made by Respondent.

On April 1, 2002,  pursuant to Complainant’s request to have the dispute decided by a One Member Panel, the Forum appointed Judge Richard B. Wickersham, (Ret.), as Panelist.

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

           

PARTIES’ CONTENTIONS

A.   Complainant

Complainant alleges that it is an Illinois limited liability company, Patrick Jaguar, LLC, which does business under the trade name Patrick Jaguar.  Complainant alleges that they are the only Jaguar dealership in the United States authorized to use this name.  Complainant further alleges that the URL being used by this Registrant is identical to the name registered with the State of Illinois and Complainant’s registered trade name.  Complainant notes that the Registrant has no business with this name and “has bragged to us” that he has made a nice living by registering other businesses’ trade names and holding them for ransom.   Complainant further notes that the Registrant is a salesman for a competing Jaguar dealership, Westlake Jaguar in Elmhurst, Illinois.  Complainant alleges that “he heard through Jaguar that Patrick Dealer Group was awarded the Jaguar franchise for Naperville, Illinois, the market contiguous to the market of the dealership he is employed by.”  Complainant alleges that Respondent has no business whatsoever, let alone a business with anything close to the name Patrick Jaguar.  Complainant avers that Respondent registered the name “as soon as he heard we were awarded the franchise with the idea that we would have to purchase it from him.”   Complainant notes that Respondent makes no bona fide offering of goods or services whatsoever, let alone in conjunction with the domain name.  He has never been commercially known as “Patrick Jaguar.”  He is not making any commercial, non-commercial or any other use of the domain name other than preventing Complainant’s use of the name and trying to sell it to Complainant.         

B.   Respondent

Alex Bruzas provides a statement in his own behalf, stating that he has been the owner of <patrickjaguar.com> for “well over two years.”  He said he has never had a complaint from any outside party.  He said he purchased the site with the single intent being to generate revenue for him personally as a Jaguar salesman in the Chicago market, providing customers with simple alternatives to purchasing a jaguar automobile.   He said he believes that a Jaguar dealership named Patrick Jaguar opened in Naperville a suburb of Chicago, February 1, 2002.  Respondent notes that “the Patrick Auto Group may be licensed to do business in the State of Illinois under the name Patrick Jaguar but that is a name purchased after Respondent was the owner of patrickjaguar.com.”   He states “simply put they missed the boat in purchasing patrickjaguar.com, and that fact does not entitle them to strip me of the site I have owned and operated for well over two years without a drop of compensation.”

FINDINGS

Complainant is an authorized dealer in Jaguar automobiles under the name Patrick Jaguar, LLC, d/b/a Patrick Jaguar.   Respondent, on the other hand, is a salesman for a competing Jaguar dealership and Respondent’s name is Alex Bruzas.   According to Whois, <patrickjaguar.com> was created on 30, January 2000.  The Record was last updated on 12, February, 2002 and the Record expires on 30, January 2004.  Patrick Dealer Group was awarded the Jaguar franchise for Naperville, Illinois, the market contiguous to the market of the dealership where Alex Bruzas is employed.   Complainant alleges that Respondent Alex Bruzas “registered the name as soon as he heard we were awarded the franchise with the idea  that we would have to purchase it from him.”   It is clear that Respondent Alex Bruzas makes no bona fide of goods or services whatsoever, let alone in conjunction with the domain name.  He has never been commonly known as “Patrick Jaguar.”  He is not  making any commercial, non-commercial, or any other use of the domain name other than preventing Patrick Dealer Group from using such name.  E-mail messages have been exchanged between Complainant and Respondent, including February 18, 2002, February 19, 2002 (twice).   In the message of Tuesday, February 19, 2002, Alex Bruzas e-mailed Complainant, Chief Operating Officer M. Stilwell, and advised that “Until such time as your group or other entity chooses to make a purchase bid, I solely retain the rights to the site and the ability to modify its appearance at my discretion.  The purchase option has been available to you and others for over two years and remains an option should you choose to make an offer.”

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

            (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.

            Identical and/or Confusingly Similar Policy ¶ 4(a)(i).

Complainant asserts that the disputed domain name <patrickjaguar.com> is confusingly similar, indeed exactly similar and identical to Complainant’s name registered with the State of Illinois and with Complainant’s registered trade name.  The Complainant alleges, and we agree, that the Registrant has no business with this name, and has bragged to Complainant that Registrant has made a nice living by registering other businesses’ trade names and holding them for ransom.  See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term).  Furthermore, the addition of “.com” is irrelevant when considering whether or not a mark is confusingly similar.  See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word...nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy 4(a)(i) is satisfied). 

            Rights or Legitimate Interests   Policy ¶ 4(a)(ii).

Complainant asserts that Respondent is using the disputed domain name in order to sell the same product sold by Patrick Dealer Group, i.e., Jaguar automobiles.   Complainant asserts that the use of <patrickjaguar.com> domain name to sell competing products is not a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i).  See Nat’l Collegiate Athletic Assoc. v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell complainant’s goods without complainant’s authority, as well as others’ goods is not bona fide use); see also Chip Merchant, Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to the Complainant’s mark and that the Repondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods).

The Panel finds that, due to the distinct nature of Complainant’s mark, it is not possible for Respondent to be commonly known as <patrickjaguar.com> pursuant to Policy ¶ 4(c)(ii).  See Nike, Inc. v. B.B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant’s distinct and famous NIKE trademark).

Complainant further asserts that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.  See Telstra Corp. Ltd. v. Nuclear Marshmallow, D2000-0003 (WIPO Feb. 18, 2000) (finding that (i) the fact that the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to apply for or use any domain name incorporating any of those marks, and (ii) the fact that the word <TELSTRA> appears to be an invented word, and as such is not one traders would legitimately choose unless seeking to create an impression of an association with the Complainant the Respondent lacks rights or legitimate interests in the domain name); see also Ullfrottré AB v. Bollnas Imp., D2000-1176 (WIPO Oct. 23, 2000) (finding that although the Respondent legitimately sells goods originating from the Complainant, this does not give him the right to register and to use the mark as a domain name without the consent of the holder of the trademark); see also Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (finding no rights or legitimate interests in the <pitneybowe.com> domain name where Respondent purports to resell original Pitney Bowes’ equipment on its website, as well as goods of other competitors of Complainant).

            Registration and Use in Bad Faith   Policy ¶ 4(a)(iii).

Complainant asserts that Respondent was on notice of Complainant’s mark when it registered the disputed domain name and therefore acted in bad faith.  See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration); see also Victoria’s Secret v. Hardin, FA 96694 (Nat. Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants’ famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constitutes bad faith).

Complainant asserts that Respondent’s <patrickjaguar.com> domain name is confusingly similar to Complainant’s mark and the Internet user will likely believe that there is an affiliation between Respondent and Complainant.  Registration of the confusingly similar <patrickjaguar.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).  See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that bad faith registration and use where it is ‘inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).  The Panel so finds.

Complainant further asserts that Respondent registered the disputed domain name in order to disrupt Complainant’s business because Respondent sells the same products as Complainant on its website.  See Southern Exposure v. Southern Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business).  The Panel so finds.

DECISION

I find that the domain name registered by the Respondent is identical or confusing similar to a trademark or service mark in which the Complainant has rights; further, that the Respondent has no rights or legitimate interests in respect of the domain name; and, the domain name has been registered and is being used in bad faith.   Further, I find that the request of the Complainant that the domain name be transferred from the Respondent to the Complainant be GRANTED.

                                   

                                                                       

                                                                        RICHARD B. WICKERSHAM, (Ret. Judge)

                                                                       

                                                                       

                                                                        Dated: April 12, 2002

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