Ford Motor Company, Jaguar Cars Ltd, Land Rover v Lee, Court of Appeal - Nominet UK Dispute Resolution Service, June 22, 2005, [2005] DRS 02520

Resolution Date:June 22, 2005
Issuing Organization:Nominet UK Dispute Resolution Service
Actores:Ford Motor Company, Jaguar Cars Ltd, Land Rover v Lee
 
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Ford Motor Company, Jaguar Cars Ltd, Land Rover v Lee [2005] DRS 2520 (22 June 2005)

Nominet UK Dispute Resolution Service

DRS Number 2520

Ford Motor Company, Jaguar Cars Limited, Land Rover

and

Mr Danny Lee

Decision of Independent Expert

  1. Parties:

    Complainants: Ford Motor Company

    Country: UK

    Jaguar Cars Limited

    Country: UK

    Land Rover

    Country: UK

    Respondent: Mr Danny Lee

    Country: UK

  2. Domain Names:

    fordevents.co.uk; jaguarevents.co.uk; landroverevents.co.uk; jaguarmaindealer.co.uk

  3. Procedural Background:

    05/04/2005 Dispute entered into system

    05/04/2005 New dispute manually created

    05/04/2005 Hardcopies received in full on: 01/04/2005

    05/04/2005 Complaint validated

    05/04/2005 Complaint documents generated

    28/04/2005 Response due date amended by 1 working days because Response submitted by fax 27/4

    03/05/2005 Response due date amended by 2 working days because response received electronically on the 27th but not imported

    03/05/2005 Electronic Response entered into system

    03/05/2005 Electronic Response matched

    03/05/2005 Response hardcopies received on: 03/05/2005

    03/05/2005 Forward response to complainant documents generated

    05/05/2005 Non-Std electronic reply received: Emailed version of form

    05/05/2005 Reply hardcopies received on: 05/05/2005

    05/05/2005 Reply received and Initiate mediation documents generated

    26/05/2005 Mediation documents generated

    01/06/2005 Fees received from complainant on 01/06/2005

    03/06/2005 Mr Chris Tulley selected as expert

  4. Outstanding Formal/Procedural Issues (if any):

    None

  5. The Facts:

    · All three Complainants, Ford, Jaguar and Land Rover are world famous car manufacturers.

    · The Respondent registered fordevents.co.uk, jaguarevents.co.uk and landroverevents.co.uk on 7 April 2002 and jaguarmaindealer.co.uk on 26 April 2003.

    · The Respondent's business offers services related to marketing and promotional events for car dealers via a website at www.showroomevent.co.uk. Two of the Domain Names, fordevents.co.uk and jaguarevents.co.uk link to that website, whereas landroverevents.co.uk and jaguarmaindealer.co.uk both link to a domain name registration website at www.ukreg.com.

    · The Respondent's business trades as "Showroom Events" and "Showroom Events & Promotions", the latter name being said to be a trading name of Automotive Events Limited.

    · The Respondent has registered numerous domain names which incorporate famous trade marks owned by car manufacturers around the world.

    · In 2003 their was an exchange of correspondence between the Complainants' solicitors and Mr Daniel Cushway on behalf of Automotive Events Limited trading as Showroom Events & Promotions in which an allegation of passing off was denied. The letters from the Complainants' solicitors referred to two of the Domain Names, (fordevents.co.uk and jaguarevents.co.uk) and also two others (mazdaevents.co.uk and volvoevents.co.uk) which are not the subject of this complaint. The Complainants' solicitors wrote to Mr Cushway offering to reimburse the Respondent for reasonable registration costs in exchange for the transfer of the relevant Domain Names to the Complainants. Mr Cushway replied saying that he wished to deal with the Complainants direct rather than through its solicitors.

    · Accordingly on 12 August 2003 Mr Bob Drakeford of the Complainants telephoned Mr Cushway to discuss the possible transfer of the relevant Domain Names during which Mr Cushway offered to transfer them to the Complainants for around £5,000 being the price of a new Fiesta car that Mr Cushway was considering buying for his wife. That suggestion was confirmed in a subsequent email from Automotive Events Ltd to Mr Drakeford sent 2 days later on 14 August 2003. A printout of the email has been provided by the Complainants. I note that the email refers to a fax from Mr Drakeford sent earlier that day and to attached documents from "the Nominet web site" but these documents have not been provided.

  6. The Parties' Contentions:

    Complainants:

    In summary the Complainants say that:

    · The Complainants have Rights in the marks FORD, JAGUAR and LAND ROVER, which are similar to the Domain Names, the words "events" and "main dealer" being merely descriptive.

    · The Domain Names are Abusive Registrations. In particular, the Complainant relies on several of the heads illustrated in paragraph 3 of the Policy.

    · Paragraph 3(a)(i)(A) - The Respondent's rejection of the Complainants' offer to reimburse reasonable registration costs, and the Respondent's subsequent offer to transfer/cancel the Domain Names in return for £5,000 or a new Fiesta car, strongly suggest that the Respondent registered the Domain Names for the purpose of selling or otherwise transferring the Domain Names to the Complainants for valuable consideration in excess of the Respondent's documented out-of-pocket costs.

    · Paragraph 3(a)(i)(B) - The Respondent has registered the Domain Names as a blocking registration against marks in which the Complainants have rights.

    · Paragraph 3(ii) - The Respondent is using the Domain Names in a way which is likely to confuse people or businesses into believing that it is authorised by or otherwise connected with the Complainants.

    · Paragraph 3(iii) - The Respondent has engaged in a pattern of registering a multitude of domain names which incorporate famous trade marks of car manufacturers around the world.

    · In view of the bad faith and knowledge of the Complainants' use of its Trade Marks the Respondent has not made use of the Domain Names in connection with a genuine offering of goods and services and due to the inclusion of the Complainants' marks, cannot be generic or descriptive or fair.

    · The Respondent has no legitimate connection with the names FORD EVENTS, LAND ROVER EVENTS, JAGUAR EVENTS or JAGUAR MAINDEALER.

    · The Respondent is using the Domain Names to promote and market its commercial services as a dealer event organiser. Accordingly the Respondent is not making a legitimate non-commercial use of the Domain Names.

    · In the circumstances, the Complainants...

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