Domain Name Abuse: The Exotic Caribbean Island of Anguilla, James Bond 007`s iconic sports car and AI & Domain Names

Aston Martin Lagonda Limited v. DNS Admin, Kindpedia 

WIPO Case No. DAI2023-0014

by Ivan Lipshitz, Adv., JMB Davis Ben-David

 

You will be forgiven for thinking that this article is a travelogue on idyllic and exotic island getaways in the Caribbean, a preview for a new blockbuster James Bond movie,  or a road report on the new  Aston Martin DB12; but you would be wrong! 

Sports car enthusiasts will be familiar with the distinctive engine sound and familiar roar of an Aston Martin sports car. Its fame and renown as James Bond 007`s car of choice is well known.  James Bond is well-known for driving around in his open Aston Martin sports car at break-neck speed in typical James Bond style in exotic locations with a beautiful damsel -in- distress seated next to him with flowing scarf, as portrayed in blockbuster 007 movies, from “Goldfinger” to “No time to Die”.

As reported by The New York Times, Anguilla, a small Caribbean Island east of Puerto Rico has, as a result of the AI boom, recently experienced a remarkable economic bonanza and uptick in its good fortune. As the designated domain name for the island, “.ai” has become highly sought-after by companies seeking to showcase their involvement in the AI industry,  and which are desirous of having an internet address that communicates that they are at the forefront of the A.I. boom. Elon Musk’s X.ai website for his AI company is one such example. Anguilla has recently received a huge influx in requests for domain names. Antigua’s government`s  profits from registration fees for “.ai” domain names have skyrocketed, ranging from $140 to thousands of dollars per registration, including proceeds from website names sold at auctions. Last year alone , Anguilla’s government made about $32 million from those fees. That amounted to more than 10 percent of gross domestic product for the territory of almost 16,000 people and 35 square miles.

It is no wonder that cybersquatters have targeted, among other famous brands, the eponymous British luxury sports car manufacturer,  Aston Martin Lagonda Ltd, and its  ASTON MARTIN® brand.

Asserted Trademark: ASTON MARTIN

Domain Name at Issue: <astonmartin.ai> (the “disputed domain name”)

Panelist: Fabrice Bircker, Sole Panelist 

Date: February 23, 2024

The disputed domain name was ordered to be transferred to the Complainant.

Relevant Facts:

The Complainant, Aston Martin Lagonda Ltd, is a worldwide U.K. luxury sport car manufacturer with a history of more than a century. The Complainant’s sportscars are sold under the ASTON MARTIN® brand which is also a protected registered trademark in numerous countries and jurisdictions, including in the European Union, Germany, Italy, the United States and elsewhere covering products and services in various classes.  The ASTON MARTIN® brand and its sports cars have been featured in numerous James Bond movies. Complainant’s brand is also involved in sponsoring a Formula 1 sports car racing team and in participating in the Formula 1 grand prix. The Complainant’s ASTON MARTIN® brand is also reflected in its domain name <astonmartin.com> which was registered on June 15, 1995, and which resolves to its official website. Respondent registered the disputed domain name on September 2, 2022. The disputed domain name resolves to a website offering it for sale and which has also been listed for sale on several domain names marketplaces. Based on information disclosed by the domain name registrar, Respondent is apparently located in the United States.

Parties’ Arguments

Complainant:

The Complainant contends that the disputed domain name is confusingly similar to its well-known and distinctive trademark ASTON MARTIN® because it consists of the mere reproduction of its eponymous name and trademark in its entirety.  It therefore contends that it has satisfied each of the three elements required under paragraph 4(a) of the Uniform Domain-Name Dispute Resolution Policy ( the “UDRP” or the “Policy”) for a transfer of the disputed domain name. (See in this regard my earlier article in this series, which can be found here in which I summarize the three elements required to be proved to succeed in a UDRP complaint).

Specifically, the Complainant submitted that:

  1. the relevant dispute ruleset to the “.ai” country code Top-Level-Domain (“ccTLD”) domain names disputes is the UDRP, under which there is no requirement for a complainant to own registered trademark rights in a specific jurisdiction and covering specific goods or services.
  2. the Respondent has no rights or legitimate interests in respect to the disputed domain name because the Respondent is not authorized by the Complainant to use the ASTON MARTIN® trademark and is not affiliated or otherwise known to the Complainant;  there is no evidence suggesting that the Respondent is commonly known by the disputed domain name or has acquired any trademark rights corresponding to same;  the disputed domain name is listed for sale on several domain names marketplaces; and the Complainant has contacted the Respondent in an attempt to seek the voluntary transfer of the  disputed domain name and received no response.
  3. the disputed domain name has been registered and is being used in bad faith.  Indicative of bad faith use and registration the Complainant contends, inter alia, that:
  • the only plausible explanation for the Respondent’s choice of the “.ai” ccTLD when registering the disputed domain name is an expectation that, given its popularity, the Respondent would likely be able to profit from the Complainant’s reputation in its famous and distinctive trademark by selling the disputed domain name; 
  • it is inconceivable that the Respondent would not be aware of the Complainant given the fame, history and longevity of its brand;
  • as the Respondent is located in the United States, the Respondent had constructive notice of Complainant’s rights in ASTON MARTIN® as the Complainant had already obtained prior corresponding federal trademark registration in the US;
  • by registering the disputed domain name and immediately offering it for sale, the Respondent seeks to utilize and capitalize on the reputation and goodwill of the Complainant’s ASTON MARTIN® mark for commercial gain and to take unfair advantage of, abuse, or otherwise engage in behavior detrimental to the Complainant;
  • the Respondent tried to use an unconventional proxy service in the form of a virtual office service address to intentionally delay disclosure of the identity of the actual underlying registrant;
  • the Respondent’s registration of the disputed domain name prevents the Complainant from reflecting its ASTON MARTIN® mark in similar corresponding domain names; and
  • the disputed domain name has since the day after its registration been listed for sale on various domain names marketplaces and has been used to redirect to these listings and the Respondent has not apparently otherwise used the disputed domain name for any content. Therefore, the Respondent’s lack of use of the disputed domain name is indicative of bad faith under the doctrine of passive holding.

Respondent: 

Respondent`s main argument was that Complainant has failed to fulfil the first element of the Policy because the Complainant lacks any substantive trademark in the country of Anguilla to which the “.ai” ccTLD pertains and does not operate in the realm of artificial intelligence, which it alleged undermined its claims. It alleged Complainant failed to demonstrate any nexus between its trademark and the field of AI. The Respondent also argued that the Complainant should have tried to resolve the case without first filing a cybersquatting dispute, contending that Complainant “has brazenly sidestepped any attempt at amicable resolution by blindsiding the Respondent with baseless claims and a malicious attempt to wrest control of a domain name to which it holds no legitimate entitlement under the Policy. This Machiavellian manoeuvre is a clear indicator of the Complainant’s nefarious intent to harass and intimidate the Respondent through underhanded means.” It also refuted Complainant’s assertions regarding passive holding of the disputed domain name and contended that there was insufficient evidence on the record before the Panel to show that the Respondent was targeting any specific rights holder by way of that process.

Respondent denied Complainant’s allegations as to its absence of rights and of legitimate interests in respect of the disputed domain name and vehemently rebutted Complainant`s claim regarding confusion or misleading consumers as utterly baseless and bereft of any factual foundation. Finally, it submitted that the registration of the disputed domain name was not orchestrated with the intent to disrupt the Complainant’s business operations. Such allegations, it contended, were nothing short of egregious attempts to malign the Respondent’s character and were categorically refuted. The Respondent also denied the Complainant’s allegations as to the registration and use of the disputed domain name in bad faith, contending that Respondent’s acquisition of the domain name was conducted through entirely legal means, devoid of any ulterior motives aimed at disrupting the Complainant’s business or exploiting their trademark for commercial gain. Complainant’s failure to establish the distinctiveness and widespread recognition of their mark in the AI sector, submitted Respondent, renders their assertions of bad faith registration utterly baseless and devoid of merit. The Respondent’s lack of any intent to sell, rent, or otherwise transfer the disputed domain to the Complainant further underscores the absence of bad faith. In short, Respondent contended that Complainant had not satisfied all three of the elements required under the Policy for a transfer of the disputed domain name and submitted that the Complaint should be denied.

Panel’s Finding:

The Panel unsurprisingly found in favour of Aston Martin and ordered the domain transferred.  On the “Identical or Confusingly Similar” element, the panel found that the Complainant as the owner of trademark registrations for ASTON MARTIN® had shown rights in respect of a trademark or service mark in which it had rights for the purposes of the Policy. The Panel ruled that contrary to the Respondent’s contentions, having rights in a trademark protected in Anguilla and/or in the field of artificial intelligence, is not required to satisfy the first element in the UDRP procedure. It held that disputes involving domain names registered in the “.ai” ccTLD are subject to the Policy. As such, the jurisdiction where the asserted trademark is valid is therefore not considered relevant to the assessment under the first element test. Moreover, the goods and/or services for which the mark is registered or used in commerce are also not considered relevant to this first element test. As the entirety of the ASTON MARTIN® mark was reproduced within the disputed domain name, and the disputed domain name is identical to the asserted mark for the purposes of the Policy, the Panel found the first element of the Policy had been established. Turning to the second element of the Policy, having reviewed the available record, the Panel found the Complainant had established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Respondent had not been authorized by the Complainant to register and to use the disputed domain name. It is not commonly known by the disputed domain name and the disputed domain name was listed for sale on several domain names marketplaces. While affirming that selling domain names is not forbidden per se, the Panel found that the offering for sale of the disputed domain name, which consists in the mere reproduction in the ASTON MARTIN® trademark in the “.ai” ccTLD, amounts to capitalizing, not to say  speculating, on the value of the Complainant’s trademark and, therefore, cannot be considered as a legitimate commercial use, and cannot give rise to rights or legitimate interests in the disputed domain name. Most importantly, the Panel found that the composition of the disputed domain name insofar as it consists in the mere reproduction of the ASTON MARTIN® trademark, carries a high risk of implied affiliation and suggested sponsorship or endorsement by the ASTON MARTIN® trademark, when this was not the case at all. Consequently, the  Panel found that the Respondent had not rebutted the Complainant’s prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain

 As regards registration & use in bad faith, the Panel noted that the disputed domain name consists in the mere reproduction of the Complainant’s ASTON MARTIN® mark, and the use of this trademark by Complainant  predates the registration of the disputed domain names by decades, even probably by more than a century. Since the ASTON MARTIN® trademark is globally well-known, iconic and enjoys significant reputation worldwide, the mere registration of a domain name that is identical or confusingly similar to a famous or widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith. In light of the above, the Panel found that on the balance of probabilities the Respondent could not reasonably have been unaware of the Complainant’s ASTON MARTIN® trademark when it registered the disputed domain name. The Panel therefore considered that the Respondent fully appreciated that the value of the disputed domain name lay in its identity to the Complainant’s trademark. The Panel also found that Complainant had demonstrated (through the results of Google searches in annexures to its Complainant) that its ASTON MARTIN® brand was indeed associated with “artificial intelligence” or “AI”, and in the panel’s view Complainant was indeed using AI in the field of automotive technology. In the Panel’s view all these elements established the Respondent’s bad faith use and that it was using the disputed domain name to capitalize on the value of the Complainant’s trademark. As a consequence, the disputed domain name was found to have been registered and used in bad faith.

Complainant was accordingly found  to have established  all three elements of the Policy and the disputed domain was therefore ordered to be transferred to the Complainant.

Final Thoughts:

In this case, Respondent put up a spirited and feisty rebuttal and mounted a serious challenge against Complainant`s UDRP complaint. It made out some forceful rebuttal arguments, however they were doomed to failure. The following are some lessons to be learnt from this decision.

Clear-Cut Case of Cybersquatting

This case is a clearcut case of cybersquatting; the advent of which is precisely the reason for the establishment of the UDRP. Despite the gallant efforts of Respondent`s counsel, their arguments of lack of trademark registration in the island of Anguilla to which the “.ai” ccTLD pertains, and Complainant `s lack of relatedness to the realm of AI were unfounded and baseless. They proved to be futile in Respondent`s attempts to overcome the complaint. The Panel `s well considered analysis and eventual finding that the disputed domain was ordered to remain with Respondent is to be commended.  In the words of the Panellist: 

“At last, and for sake of completeness, this Panel considers that the mere detention of the disputed domain name, in as far as it impersonates a globally very well-known and intrinsically distinctive trademark, in the hands of a third party having no relationship with the Complainant and, furthermore, having immediately offered it for sale after its registration, represents an unbearable threat over the head of the Complainant, all the more that on the contrary to the Respondent’s contentions, the field of artificial intelligence, evoked by the “.ai” ccTLD, is not unrelated with the Complainant”.

Proving Awareness of Trademark & Reputation

This case also demonstrates the importance of proving reputation if you are a Complainant. Having a trademark alone is insufficient. A Complainant must prove targeting, which generally means awareness of a trademark, and that in turn means that the Complainant must prove that its reputation extended to the Respondent and that the primary reason for the registration of the disputed domain was to utilize the reputation and goodwill of the Complainant’s mark for commercial gain and  to take unfair advantage of the mark rather than some other factor.

As the power of AI as a new digital phenomenon has burst widely onto the tech scene in recent times and has captured the attention of the internet using public worldwide, we can expect many more domain name disputes involving “.ai” ccTLD`s in the future . Your domain name, certainly your most important digital asset,  can be targeted too. 

Are you ready to withstand the challenge of cybersquatters stealing your domain name in the .ai space? 

If any of your trademarks may be subjected to domain name abuse and you need assistance to file a domain name dispute resolution complaint to secure or enforce your digital brand, or need assistance in developing an enforcement strategy to safeguard your digital assets from all forms of infringement, violation and abuse,or where a trademark holder is challenging your domain name, please email Ivan Lipshitz at: Ivan.Lipshitz@jmbdavis.com or JMBmail@jmbdavis.com.

More Posts You May Find Interesting