Daimler AG v. Daniel Brian & Associates
Claim Number: FA0807001215206
Complainant is Daimler AG (“Complainant”), represented by Jan Zecher, of Fish &
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <daimler.tv>, registered with Domain Discover.
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 14, 2008; the National Arbitration Forum received a hard copy of the Complaint on July 16, 2008.
On July 16, 2008, Domain Discover confirmed by e-mail to the National Arbitration Forum that the <daimler.tv> domain name is registered with Domain Discover and that the Respondent is the current registrant of the name. Domain Discover has verified that Respondent is bound by the Domain Discover 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 July 17, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 6, 2008 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on August 5, 2008.
On August 7, 2008, Complainant submitted a timely Additional Submission
that was in compliance with the
On August 11, 2008, Respondent submitted a timely Additional Submission
that was in compliance with the
On August 13, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant says the domain name is identical to Complainant’s world-famous trademark DAIMLER, in which Complainant has both registered and common law rights, and that Respondent has no rights or legitimate interests in the domain name, which was registered and is being used in bad faith.
Complainant relies on numerous trademark registrations, including German trademark registration No. 41,127 “DAIMLER” (word mark) with priority of September 29, 1899, for, inter alia, “vehicles of any kind”.
As to legitimacy, Complainant says it did not know Respondent, never had a business relationship with Respondent and never instructed or authorized Respondent to register the domain name. Respondent has not used the domain name before notice of the dispute for a bona fide offering of goods or services, has not been commonly known by the domain name and has made no legitimate noncommercial or fair use of it.
Respondent uses the domain name for a web site with a search engine and sponsored links to other web sites, including sites offering products of competitors of Complainant, e.g., cars, car parts, car accessories and car-related financial services like the warranties of BMW, Chrysler, Chevrolet, General Motors, Volkswagen and Honda. Further, Respondent’s web site mentions Complainant and its trademarks “DAIMLER”, “DAIMLERCHRYSLER” and “MERCEDES-BENZ”, showing that Respondent is well aware of Complainant and its trademarks.
Following a cease and desist letter in October 24, 2007, requesting transfer of the domain name to Complainant, Respondent offered to do so on April 21, 2008 for USD 9,000.00. Complainant says this far exceeds the typical out-of-pockets costs incurred by registration and maintenance of a domain name. Respondent’ use of the domain name and its attempt to sell it are neither use for a bona fide offering of goods or services nor noncommercial or fair use.
Searches of several trademark offices produced no trademarks of Respondent. This alone allows the prima facie conclusion that Respondent has no rights or legitimate interests in the domain name.
As to bad faith, Complainant says Respondent, by using the domain name, has attempted to attract, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with Complainant’s trademark as to the source, affiliation or endorsement of Respondent’s web site. Respondent knew about Complainant’s trademark and tried unfairly and opportunistically to benefit from the goodwill associated with Complainant’s trademark by intercepting and siphoning off traffic from its intended destination.
Respondent registered the domain name primarily for the purpose of selling the domain name to Complainant for valuable consideration in excess of its out-of-pocket costs directly related to the domain name.
As the domain name is almost identical with Complainant’s famous trademark “DAIMLER”, it is inconceivable that Respondent could make any use of the domain name without creating a false impression of association with Complainant. As every use of the domain name would inevitably create confusion of the public, bad faith is present.
Respondent recognizes that the domain name is similar to a trademark or service mark in which Complainant has rights but asserts that Respondent has legitimate interests in the domain name and that it was not registered and is not being used in bad faith.
As to legitimacy, Respondent says that, before any notice to it of this dispute, it reserved the domain name with the intention of hosting a <daimler.tv> channel, to show videos concerning the history of Daimler and its product offerings. Demonstrable preparations to use the domain name for that purpose can be viewed online at three websites. Respondent says it will be making a legitimate noncommercial or fair use of the domain name, without intent, for commercial gain, misleadingly to divert consumers nor to tarnish the trademark or service mark at issue.
As to bad faith, Respondent denies registration primarily for the purpose of selling, renting or otherwise transferring the registration to Complainant. Respondent made no attempts to sell the domain name prior to being contacted by Complainant. The domain name has never and will never be posted on a website for sale. It was intended for end use by Respondent. In fact, registration by Respondent has prevented misuse by parties not as reputable as Respondent.
Respondent evaluated the total cost of ownership of the domain name and arrived at $9,000. This included not only hosting, domain registration and administration but also development time spent in demonstrable preparations for use.
Respondent says it did not set up any sponsored links on the web site and is not responsible for any references to Complainant’s competitors. Respondent has not benefited from any possible commercial gain from the links.
C. Additional Submissions
Paragraph 12 of the Rules does not
contemplate unsolicited submissions after the Complaint and Response and gives
the Panel the "sole discretion" as to acceptance and consideration of
additional submissions. The overriding principle of Rule 12 enables the Panel
both to disregard unsolicited submissions received within the time limits
contemplated by the Forum’s Supplemental Rule 7 and to take into account
unsolicited submissions received outside those time limits. See
In this case the Panel exercises its discretion to admit both Additional Submissions.
Complainant says the domain name was registered to be sold to Complainant as part of an unsolicited advertising campaign. Complainant submits a copy of an email from Respondent dated January 30, 2008 in which Respondent says the domain name “was purchased as part of a pitch to various dealers and automotive clients as part of a campaign that has not been sold yet….We would be happy to establish terms for the sale of the domain…”
Complainant says Respondent has not established demonstrable preparations to host a TV channel about the history of Complainant and its products. The three web sites mentioned by Respondent are not under the <daimler.tv> domain name and do not show the DAIMLER trademark.
Complainant says Respondent was well aware of the DAIMLER mark when registering the domain name and admits it planned to sell it to Complainant as part of an unsolicited advertising campaign. The sum of $9,000 clearly exceeds Respondent’s documented out-of-pocket expenses directly related to the domain name. Respondent’s allegation that it registered the domain name to prevent deliberate misuse by others is implausible and an absurd distortion of the facts. Respondent used the domain name for a web site with sponsored links to Complainant’s competitors. A more severe misuse of the domain name is hardly imaginable. As domain name owner, Respondent had full control of the domain name and the content of the web site.
Respondent says Complainant has not proved Respondent’s intent at registration was sale to Complainant. What was offered for sale was the campaign, not the domain name itself. Respondent attaches screen shots to support its demonstrable preparations for use.
Respondent says that any business decision made by Respondent to sell the domain name to Complainant after being contacted by Complainant is not related to the business decision made at the time of purchase of the domain name, where it was not considered for sale as a separate item.
Of the $9,000, about $500 was spent of registration and subsequent renewals. The additional $8,500 is a small percentage of total monies spent on the project.
Respondent says Complainant has failed to prove that Respondent has received any monies from the hosting company for the links on the web site. Respondent says it has received no monies from the sponsored links. Respondent did not choose to place those links on the web site. This was done by the hosting company for its business purposes, not those of Respondent.
Complainant has established all the elements necessary to entitle it to the relief it seeks.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), which applies to disputes over “.tv” domain names, 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.”
Paragraph 4(a) of the Policy requires that the 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;
(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.
It is common ground that the disputed domain name, which was registered on June 20, 2005, is similar to Complainant’s DAIMLER mark, first registered in 1899. The Panel finds the domain name to be identical and confusingly similar to that mark, the ccTLD “.tv” being inconsequential: see Clairol Inc. v. Fux, DTV2001-0006 (WIPO May 7, 2001) (finding the domain name <clairol.tv> identical to complainant’s CLAIROL marks).
Complainant has established this element of its case.
The DAIMLER mark is famous. Complainant has not authorized Respondent to use it in any manner. Respondent, shown in the WHOIS information as “Daniel Brian and Associates,” is not commonly known by the disputed domain name and does not claim to be so known. These circumstances constitute a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. Accordingly the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
Respondent disclaims responsibility for the sponsored links of Complainant’s competitors (of the kind which the Panel finds typically generate “click-through” revenue) displayed on the website resolving from the disputed domain name. However, the registrant of a domain name has power to decide what use to make of it, including what use to allow others to make of it. On the principle Qui facit per alium facit per se, Respondent is responsible for the content of the web site resolving from the disputed domain name. See XM Satellite Radio Inc. v. Kennedy, FA 796199 (Nat. Arb. Forum Nov. 7, 2006) (“While Respondent undoubtedly parked the domain names with GoDaddy, he is responsible for the content he allows GoDaddy to put on his domains. Respondent could have equally well set up his own ‘parked’ page without any inappropriate content.”).
Accordingly, the Panel finds Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Lockheed Martin Corp. v. Extraordinary Things LLC, FA 1117826 (Nat. Arb. Forum Jan. 23, 2008) (“Respondent’s…domain names all resolve to parked websites featuring links to third-party venture capital and financial websites that offer services in competition with Complainant, and Respondent accrues click-through fees from these links. The Panel finds that such use does not constitute either 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)”).
Respondent asserts that before any notice to it of the dispute it made demonstrable preparations to use the domain name in a noncommercial manner. However, this is not established through Respondent’s use of three websites resolving from other domain names. Further, the material exhibited to Respondent’s Additional Submission bears a 2008 copyright notice, thus constituting no proof of preparations prior to Complainant’s cease and desist letter of October 2007. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that when the respondent declares its intent to develop a website, “[Policy ¶] 4(c)(i) requires Respondent to show 1) ‘demonstrable’ evidence of such preparations to use the domain name, and 2) that such preparations were undertaken ‘before any notice to [Respondent] of the dispute’”).
Respondent’s attempt to sell the domain name to Complainant was, on Respondent’s own evidence, for an amount in excess of its out-of-pocket expenses directly referable to the domain name, since the amount of $9,000 included the value of time spent on his claimed project. Thus Respondent’s offer to sell the disputed domain name to Complainant is inconsistent with Respondent having rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has established this element of its case.
It is clear from Respondent’s email to Complainant dated January 30, 2008 in which Respondent said the domain name “was purchased as part of a pitch to various dealers and automotive clients as part of a campaign that has not been sold yet” that Respondent was fully aware of the significance in the automotive industry of the DAIMLER trademark when it registered the disputed domain name. Respondent thereby intended to attract Internet users seeking Complainant or its products to Respondent’s web site. Since the domain name was registered in 2005, the only web site to which the domain name has resolved has been a parking page displaying sponsored links, of the kind which typically generate “pay-per-click” revenue, to the products of Complainant’s competitors.
Under these circumstances the Panel cannot accept Respondent’s assertion that its use of the domain name in this way has not been for commercial gain. The Panel finds that Respondent, by using the domain name, has attempted to attract, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with Complainant’s trademark as to the source, affiliation or endorsement of Respondent’s web site. This constitutes evidence of both bad faith registration and bad faith use pursuant to Policy ¶4(b)(iv).
It is unnecessary to decide whether Respondent’s offer to sell the domain name to Complainant for $9,000 in April, 2008 demonstrates that sale at a profit to Complainant was Respondent’s primary purpose in registering the domain name in June 2005.
As to Respondent’s assertion that registration by Respondent has prevented misuse by parties not as reputable as Respondent, in Sydney Opera House Trust v. Trilynx Pty. Limited, D2000-1224 (WIPO Oct. 31, 2000) a similar contention was held by the present panelist to demonstrate bad faith use, in words that are applicable here:
“In order that the respondent’s protective role might be effective, that use of the domain name must have been intended by the respondent to create the impression that the respondent was the ‘official’ protector of the name of the opera house and thus to give the false impression of an authorized association between the complainant and the respondent which the respondent knew did not exist. The panel finds this to constitute use in bad faith.”
The Panel finds that the disputed domain name was registered and is being used in bad faith.
Complainant has established this element of its case.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <daimler.tv> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: August 24, 2008
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