Jaguar Land Rover has recovered 174 infringing domain names and one other has been cancelled in a World Intellectual Property Organization (WIPO) Arbitration and Mediation Center ruling.
The domain names contained various Jaguar Land Rover trademarks, including ‘Land Rover’, ‘Range Rover’ and ‘Jaguar’, coupled with various descriptive or geographical terms and belonged to a single registrant.
The registrant registered the domain names on behalf of Mr J Trivett, who argued that there is “no use of each disputed domain name such as would constitute trademark infringement” and that there is “no misleading or deceptive conduct.”
He said: “A reasonable and fair-minded member of the public would exercise independent thought and apply common sense when considering whether a particular disputed domain name or page is affiliated or endorsed by a trademark owner or a particular brand.”
Further, Trivett argued that there was a legitimate commercial purpose for its registration of each of the disputed domain names. They were supposedly used for the purpose of the MaintainMy web platform, which connects consumers to a range of service providers, including manufacturers of both genuine and non-genuine automotive spare parts.
But sole panelist Alistair Payne said that it was clear that the registrant “who has many years’ experience as a car dealer across Australia for a whole range of brands of motor vehicle, were well aware of the [Jaguar Land Rover’s] trademarks at the date of registration of each of the disputed domain names”.
Payne said that Trivett “has in fact confirmed in his declaration that he is very cognizant of the intellectual property rights of vehicle manufacturers and that he will need the involvement and support of every manufacturer of any vehicle brand involved in his MaintainMy project concerning in particular parts, compliance and up to date servicing information.”
“In this light it is extremely surprising that the registrant, at Mr Trivett’s direction, sought to register 175 domain names that wholly incorporate Jaguar Land Rover’s very well-known trademarks without first seeking authority.”
Payne ruled that 174 of the domains be returned to Jaguar Land Rover, and that the 175th, which contains the family name Trivett be cancelled.
You can read the entire decision here