Daimler AG v.
Claim Number: FA0809001223613
Complainant is Daimler AG (“Complainant”), represented by Jan
Zecher of Fish & Richardson P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <daimler-vans.com> and <mercedes-benzvans.com>, registered with Godaddy.com, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically September 9, 2008; the National Arbitration Forum received a hard copy of the Complaint September 10, 2008.
On September 9, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <daimler-vans.com> and <mercedes-benzvans.com> domain names are registered with Godaddy.Com, Inc. and that Respondent is the current registrant of the names. Godaddy.com, Inc. verified that Respondent is bound by the Godaddy.com, Inc. 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 September 15, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 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 postmaster@daimler-vans.com and postmaster@mercedes-benzvans.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 15, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson, to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <daimler-vans.com> and <mercedes-benzvans.com> domain names are confusingly similar to Complainant’s DAIMLER and MERCEDES-BENZ marks.
2. Respondent has no rights to or legitimate interests in the <daimler-vans.com> and <mercedes-benzvans.com> domain names.
3. Respondent registered and used the <daimler-vans.com> and <mercedes-benzvans.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Daimler AG, is a worldwide company in the business of making and selling automobiles. Complainant holds a registration for its DAIMLER mark (Reg. No. 41,127 issued December 4, 1899) and for its MERCEDES-BENZ mark (Reg. No. 375,067 issued October 7, 1927) with the German Patent and Trademark Office.
Respondent registered the <daimler-vans.com> domain name on September 17, 2007, and the <mercedes-benzvans.com> domain name on October 12, 2007. Both the <daimler-vans.com> domain name and the <mercedes-benzvans.com> domain name resolve to a respective corresponding websites that display various hyperlinks to several third-party websites, some of which are in direct competition with Complainant. Respondent has attempted to sell the disputed domain names for $50,000 each.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 established rights in the DAIMLER and MERCEDES-BENZ marks under Policy ¶ 4(a)(i) because it holds registrations for these two marks with the German Patent and Trademark Office. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
The disputed domain names that Respondent registered, <daimler-vans.com> and <mercedes-benzvans.com>,
each contains one of
Complainant’s entire marks, DAIMLER and MERCEDES-BENZ, respectively, and merely
adds the generic term “vans” to each mark.
In addition, the <daimler-vans.com> domain name adds a hyphen. The Panel finds that adding this generic term
and hyphen does not distinguish either disputed domain name from its respective
mark for purposes of confusing similarity under Policy ¶ 4(a)(i). See Oki
Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact
that a domain name wholly incorporates a Complainant’s registered mark is
sufficient to establish identity [sic] or confusing similarity for purposes of
the Policy despite the addition of other words to such marks”); see also Arthur
Guinness Son & Co. (
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant must make a prima facie showing that Respondent has no rights and legitimate interests in the <daimler-vans.com> and <mercedes-benzvans.com> domain names. Thereafter, the burden shifts to Respondent and Respondent must establish that it has rights or legitimate interests in the disputed domain names. The Panel finds that Complainant made a prima facie showing pursuant to Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); 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).”).
Each disputed website resolves from its corresponding domain
name and displays a list of hyperlinks to third-party websites, some of which seek
to compete directly with Complainant.
The Panel accordingly infers that Respondent collects click-through for
these links. In addition, Respondent
made an offer of sale of the disputed domain names for $50,000 each. The Panel finds that both the commercial gain
and attempt to sell the disputed domain names are not a bona fide offering of goods and services under Policy ¶ 4(c)(i) and are not a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's
demonstrated intent to divert Internet users seeking Complainant's website to a
website of Respondent and for Respondent's benefit is not a bona fide offering
of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also WeddingChannel.com Inc. v. Vasiliev, FA
156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users
to websites unrelated to the complainant’s mark, websites where the respondent
presumably receives a referral fee for each misdirected Internet user, was not
a bona fide offering of goods or services as contemplated by the Policy); see also Mothers
Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27,
2003) (holding that under the circumstances, 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).
Furthermore, Respondent’s WHOIS information does not indicate that it is commonly known by either the <daimler-vans.com> or <mercedes-benzvans.com> domain names and Respondent has not provided any information to suggest otherwise. Thus, the Panel finds that Respondent is not commonly known by either of the disputed domain names under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
The Panel finds that Complainant satisfied the elements of
ICANN Policy ¶ 4(a)(ii).
The Panel finds that Respondent registered and used the
disputed domains in bad faith because Respondent has attempted to sell the
disputed domain names for $50,000 each under Policy ¶ 4(b)(i). See Neiman Marcus Group, Inc. v.
AchievementTec, Inc., FA 192316 (Nat. Arb.
Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name
for $2,000 sufficient evidence of bad faith registration and use under Policy ¶
4(b)(i)); see also Bank of Am. Corp. v. Nw. Free Cmty. Access,
FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the
disputed domain name registration for sale establishes that the domain name was
registered in bad faith under Policy ¶ 4(b)(i).”).
In addition, both of Respondent’s websites resolve from their respective confusingly similar disputed domain names and contain hyperlinks to third-party websites, some of which seek to compete directly with Complainant. The Panel finds that these activities disrupt Complainant’s business and constitute bad faith registration and use under Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the complainant's marks suggests that the respondent, the complainant’s competitor, registered the names primarily for the purpose of disrupting the complainant's business).
Finally, Respondent receives click-through fees for the
hyperlinks displayed on each website resolving from the <daimler-vans.com> and <mercedes-benzvans.com>
domain names. The Panel finds that this
commercial gain from confusingly similar domain names creates a likelihood of
confusion and constitutes bad faith registration and use under Policy ¶
4(b)(iv). See Qwest Comm’ns
Int’l Inc. v. Ling Shun Shing, FA 187431
(Nat. Arb. Forum Oct. 6, 2003) (“Respondent has attempted to
commercially benefit from the misleading <qwestwirless.com> domain name
by linking the domain name to adult oriented websites, gambling websites, and
websites in competition with Complainant.
Respondent’s attempt to commercially benefit from the misleading domain
name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”); see also Drs. Foster & Smith, Inc. v.
Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where
the respondent directed Internet users seeking the complainant’s site to its
own website for commercial gain).
The Panel finds that Complainant
satisfied the elements of ICANN Policy ¶ 4(a)(iii).
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-vans.com> and <mercedes-benzvans.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: October 28, 2008.
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