DaimlerChrysler AG v. Andrew Bell
Claim Number: FA0709001081156
Complainant is DaimlerChrysler AG (“Complainant”), represented by Jan
Zecher, of Lovells LLP, Warburgstr. 55,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mercedesassyst.com>, registered with Schlund+Partner Ag.
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.
Honorable Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 21, 2007; the National Arbitration Forum received a hard copy of the Complaint on September 26, 2007.
On October 4, 2007, Schlund+Partner Ag confirmed by e-mail to the National Arbitration Forum that the <mercedesassyst.com> domain name is registered with Schlund+Partner Ag and that Respondent is the current registrant of the name. Schlund+Partner Ag has verified that Respondent is bound by the Schlund+Partner Ag 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").
On October 4, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 24, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 31, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <mercedesassyst.com> domain name is confusingly similar to Complainant’s MERCEDES and ASSYST marks.
2. Respondent does not have any rights or legitimate interests in the <mercedesassyst.com> domain name.
3. Respondent registered and used the <mercedesassyst.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, DaimlerChrysler AG, is a producer and seller of
various automobiles. Complainant markets
some of its products under the MERCEDES and ASSYST marks. Complainant holds several registrations for
the MERCEDES mark with various governmental organizations, including with the
Respondent registered the <mercedesassyst.com> domain name on April 30, 2006. Respondent’s disputed domain name resolves to a website that does not have an active use.
Paragraph 15(a) of 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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
The Panel finds that Complainant’s various trademark registrations for the MERCEDES and ASSYST marks adequately satisfies its burden for the purposes of Policy ¶ 4(a)(i). See Royal Bank of Scot. Group plc, Direct Line Ins. plc, & Privilege Ins. Co. Ltd. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (holding that registration of the PRIVILEGE mark with the United Kingdom trademark authority sufficiently establishes the complainant’s rights in the mark under the policy); see also Orange Glo Int’l v. Roswell Int’l Ltd, FA 440119 (Nat. Arb. Forum Apr. 21, 2005) (finding the complainant had established rights in the OXICLEAN mark by virtue of trademark registrations with entities including the Office for Harmonization in the Internal Market (“OHIM”)); see also UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (finding “no difficulty” in hold that the complainant had established rights in its asserted marks for the purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO).
Complainant has asserted that the <mercedesassyst.com>
domain name is confusingly similar to Complainant’s MERCEDES and ASSYST
marks. As the disputed domain name
combines Complainant’s two marks, together with the generic top-level domain
“.com,” the Panel agrees with Complainant’s assertion, and finds that the
disputed domain name is confusingly similar to Complainant’s marks for the
purposes of Policy ¶ 4(a)(i). See Nintendo of Am. Inc. v. Pokemon,
D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent
combined the complainant’s POKEMON and PIKACHU marks to form the
<pokemonpikachu.com> domain name); see
also G.D. Searle & Co. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant must establish a prima facie that Respondent lacks rights and legitimate interests in the <mercedesassyst.com> domain name under Policy ¶ 4(a)(ii). Once Complainant satisfies its burden, as the Panel determines Complainant to have done here, the burden shifts from Complainant to Respondent to demonstrate rights or legitimate interests in the disputed domain name. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
An examination of the evidence before the Panel reveals that the WHOIS information for the <mercedesassyst.com> domain name is “Andrew Bell,” and the Panel can find no other indication that Respondent is, or ever has been, commonly known by the disputed domain name. As Complainant has not authorized Respondent do use either of its MERCEDES or ASSYST marks, the Panel finds that Respondent is not commonly known by the <mercedesassyst.com> domain name under Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
Respondent has failed to make an active use of the website that resolves from the <mercedesassyst.com> domain name, or to present evidence to the Panel of any demonstrable preparations to use the disputed domain name in any manner. Thus, the Panel finds that Respondent has failed to make a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where the respondent has advanced no basis on which the panel could conclude that it has a right or legitimate interest in the domain names, and no commercial use of the domain names has been established).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
As discussed above, Respondent has failed, in the time since it registered the <mercedesassyst.com> domain name, to make an active use of the website that resolves from the disputed domain name. Thus, the Panel finds sufficient evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mercedesassyst.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: November 14, 2007
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