national arbitration forum




Daimler AG v. Bertram Schittenhelm

Claim Number: FA0808001219232



Complainant is Daimler AG (“Complainant”), represented by Jan Zecher, of Fish & Richardson P.C., Germany.  Respondent is Bertram Schittenhelm (“Respondent”), Germany.



The domain names at issue are <>, <>, <>, <> and <>, registered with 1 & 1 Internet 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.


Dennis A. Foster as Panelist.



Complainant submitted a Complaint to the National Arbitration Forum electronically on August 6, 2008; the National Arbitration Forum received a hard copy of the Complaint on August 8, 2008.  The Complaint was submitted in German.


On August 7, 2008, 1 & 1 Internet Ag confirmed by e-mail to the National Arbitration Forum that the <>, <>, <>, <> and <> domain names are registered with 1 & 1 Internet Ag and that Respondent is the current registrant of the names.  1 & 1 Internet Ag has verified that Respondent is bound by the 1 & 1 Internet 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 August 12, 2008, a German language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 2, 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,,, and by e-mail.


Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.


On September 11, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dennis A. Foster 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.


The Panel notes that while the Complaint materials are primarily in German, Rule 11 allows the Panel to determine the language of this Decision.  While the Panel has a good knowledge of German and can read all filings, the Panel prefers to write its Decision in English, in keeping with the Panel’s authority per paragraph 11 of the Rules.  The Panel finds Complainant to be English-capable.



Complainant requests that the domain names be transferred from Respondent to Complainant.



A.  Complainant makes the following assertions:


1.      Respondent’s <>, <>, <> and <> domain names are confusingly similar to Complainant’s MERCEDES mark.  Respondent’s <> domain name is confusingly similar to Complainant’s MB mark.


2.      Respondent does not have any rights or legitimate interests in the <>, <>, <>, <> and <> domain names.


3.      Respondent registered and used the <>, <>, <>, <> and <> domain names in bad faith.


B.  Respondent failed to submit a Response in this proceeding.



For more than a century, Complainant has produced and sold automobiles in Germany.  For most of that time, Complainant has also sold its products throughout the rest of the world.  The brand name, MERCEDES BENZ, is one of the most famous brands in the world.  Complainant has owned a valid German Patent and Trademark Office (the “GPTO”) trademark for the mark, MERCEDES, since 1911 (Reg. No. 151,574, June 16, 1911) as well as GPTO and European Union trademarks for the mark MB (respectively, Reg. No. 39,402,669, January 1, 1995; and Reg. No. 113,373, April 1, 1996).


Respondent registered the <>, <> and <> domain names on March 2, 2001;  the <> domain name on October 4, 2001; and the <> domain name on November 5, 2004.  Respondent is not currently using the first four disputed domain names cited above for any purpose.  He is using the <> domain name to resolve to a website that promotes links to third-party websites that offer various products, many of which compete directly with Complainant’s products.



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 will 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.


Identical and/or Confusingly Similar


Complainant has presented the Panel with clear evidence that Complainant holds valid registered GPTO trademarks for both MERCEDES (Exhibit 1) and MB (Exhibit 4).  That evidence is sufficient to establish Complainant’s rights in those marks with respect to Policy ¶ 4(a)(i).  See Spencer Douglass, MGA v. Bail Yes Bonding, D2004-0261 (WIPO June 1, 2004); see also Daimler AG v. Moench, FA 1118553 (Nat. Arb. Forum Jan. 15, 2008) (“Complainant has established sufficient rights in the DAIMLERBENZ mark through registration with the GPTO pursuant to Policy ¶ 4(a)(i)”).


None of the disputed domain names duplicate exactly any of Complainant’s marks.  However, the <>, <>, <> and <> domain names contain as their first element the full mark MERCEDES.  Moreover the additional element of each name, “jahreswagen” (effectively, “used car” in German), applies directly to Complainant’s business.  Therefore, the Panel has no doubt that those names would generate considerable confusion for internet users as to source or affiliation with respect to Complainant and its MERCEDES mark.  So, without hesitation, the Panel determines that those names are confusingly similar to that mark.  See Toyota Motor Sales, U.S.A., Inc. v. Indian Springs Motor, FA 157289 (Nat. Arb. Forum June 23, 2003) (where the panel found the disputed domain name <> to be confusingly similar to the trademarks TOYOTA and LEXUS.); see also Ryder Sys., Inc. v. Domain Asia Ventures, D2004-0389 (WIPO, Aug. 2, 2004) (holding the domain name <> to be confusinly similar to RYDER).


The remaining <> domain name incorporates Complainant’s mark MB.  The Panel notes that combining this mark with the English word “car” would likely generate internet user confusion, because cars are precisely the products for which Complainant and its mark are famously known.  Thus, the Panel concludes that this disputed domain name is confusingly similar to Complainant’s MB mark.  Again, see the reasoning applied in Toyota supra and Ryder supra.


The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).


Rights or Legitimate Interests


Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain names.  When Complainant has established a prima facie case supporting its contentions, as it has in this case, the burden shifts to Respondent to put forward evidence that it does have rights or legitimate interests per Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to a disputed domain name, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Clerical Med. Inv. Group Ltd. v., D2000-1228 (WIPO Nov. 28, 2000).


From the uncontested record in this case, the Panel discerns that Respondent is either failing to use the disputed domain names for any purpose or, in the case of <>, is using it to resolve to a website that features links to various websites that offer products that compete directly with products offered by Complainant.  In the latter circumstance, presumably Respondent receives referral fees from the third-parties listed on Respondent’s website.  The Panel concludes that neither such non-use nor such linkage-use of the disputed domain names constitutes a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii).  See Pharmacia & Upjohn AB v. Dario H. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding that the respondent’s failure to use the disputed domain name, <>, commercially or noncommercially, did not satisfy the requirements of Policy paragraph 4(c)); and also North Coast Medical, Inc. v. Allegro Medical, FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (where the panel held that using the disputed domain name, <>, to divert internet users to the respondent’s website was neither a bona fide offering of goods or services nor noncommercial or fair use, as thoses terms are contemplated in paragraph 4(c) of the Policy).


Finally, there is simply no evidence whatsoever in the record that Respondent, or a company owned by Respondent, is commonly known by any of the disputed domain names pursuant to Policy ¶ 4(c)(ii).


The Panel finds that Complainant has satisfied paragraph 4(a)(ii).


Registration and Use in Bad Faith


Complainant’s MERCEDES mark without doubt is one of the most famous trademarks in the world.  Many prior panels have concluded that confusing similarity between a disputed domain name and a mark that has achieved worldwide fame is, in and of itself, sufficient evidence to establish that the domain name was registered and is being used in bad faith.  See, e.g. Chanel, Inc. v., D2000-1126 (WIPO Nov. 22, 2000); see also NIKE, Inc. v. Jung, D2000-1471 (WIPO Dec. 30, 2000) (“… millions (if not billions) of dollars have been spent establishing the brand. It is one of the most recognizable brands on the planet. Unless the Respondent can establish that it has some legitimate interest in the names, it beggars belief that the registrations of the domain names could have been in good faith.”).  The Panel finds that such reasoning should be applied in this case to the <>, <>, <> and <> domain names.


With respect to the remaining <> domain name, it resolves to a website which links various third-party websites that offer products in direct competition with Complainant’s products.  The Panel has little doubt that Respondent receives referral fees from advertisers listed on its website.  This use is an intentional attempt by Respondent to deceptively attract internet users for commercial gain by creating a likelihood of confusion with Complainant’s MB mark as to the source, sponsorship, and affiliation of Respondent’s website and disputed domain name.  Thus, the Panel finds that Respondent has engaged in bad faith registration and use of that name pursuant to Policy ¶ 4(b)(iv).  See American Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Inc. v. Xianqing Zhu, FA 424540 (Nat. Arb. Forum Apr. 11, 2005).


The Panel finds that Complainant has satisfied paragraph 4(a)(iii) of the Policy by showing bad faith registration and use.



Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.


Accordingly, it is Ordered that the <>, <>, <>, <> and <> domain names be TRANSFERRED from Respondent to Complainant.




Dennis A. Foster, Panelist

Dated:  September 25, 2008



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