A UDRP complaint was filed with the NAF yesterday over the domain name www.mountainrovers.com. It appears that the action was brought by Land Rover, Co. owners of the LAND ROVER names or marks. Interestingly, the website at www.mountainrovers.com goes to a site that looks like a legitimate business located in Billings, Montana that is engaged in the customization/import of Land Rover vehicles.
Based on a search that we did, the domain at issue does not appear to be covered by a registered U.S. trademark – unless the allegation is that the term ROVER in this context is sufficient for the purposes of assessing similarity.
Land Rover has brought similar types of actions against parties that have registered domain names that use their marks. However, in the cases that we looked at the registered domains used more than just the term “rover” as part of the domain name. There is a strong line of cases which says that unauthorized distributors/parts sellers cannot use brand name/marks to sell their services where the domain name does not distinguish itself from the trademark.
See, e.g., Caterpillar Inc. v. Huth, FA 169056 (Nat. Arb. Forum Sept. 2, 2003): “Respondent lacks rights in the disputed domain names because Respondent competes with Complainant by selling Complainant’s used parts without a license from Complainant to do so.”
However, where there is a basis to distinguish the mark at issue, panels have found that a trademarked name can be used if it is clear that the domain is not affiliated with the trademark. See Caterpillar Inc. v. McKean, FA 97302 (Nat. Arb. Forum Aug. 6, 2001). In this case, the finding for <used-caterpillars.com>, <used-caterpillar.com>, <usedcaterpillars.com>, <caterpillarsused.com> and <used-cats.com> was that domain names were not confusingly similar because the disputed domain names described Respondent’s business and word “used” distinguishes the domain names from the marks)
Here, it will be interesting to see if the added (descriptive) term “mountain” and the fact that the respondent’s website does not appear to be attempting to confuse users or affiliate itself with Land Rover, other than to simply explain what it does in terms of customizing old Land Rover vehicles, will cut against complainant’s arguments.
“Mountain Rovers is a company located in Billings, Montana and we maintain a limited number of completed and vehicles as well as repair parts on premises. We provide full vehicle service and repairs, complete refurbishment and restoration services and engine/drive train conversions on site to your specifications. We design, build and install custom accessories such as roof racks, bullbars, external protection devices, electric and hydraulic winches and perform final service on all vehicles in Billings.”