Daimler AG v. Ulrich Hofmann
Claim Number: FA0810001230468
Complainant is Daimler AG
The domain names at issue are <daimlerchrysler-jahreswagen.com>,
<daimlerchrysler-jahreswagen.net> registered with Cronon Ag
The undersigned certifies that he or she 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 October 22, 2008; the National Arbitration Forum received a hard copy of the Complaint on October 23, 2008.
On October 31, 2008, Cronon Ag
On November 5, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 25, 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, email@example.com and firstname.lastname@example.org. by e-mail.
A timely Response was received and determined to be complete on November 25, 2008.
On December 4, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
- Complainant, a German company, has manufactured and sold automobiles for more than 100 years. In the last ten years, Complainant has sold more than one million vehicles under the trademark, DAIMLERCHRYSLER, which is well-known worldwide.
- Complainant owns a German trademark registration for its mark, DAIMLERCHRYSLER (Reg. No. 39,825,488 issued May 7, 1998), as well as for DAIMLER (Reg. No. 41,127 issued September 29, 1899). Complainant has spent over one hundred million Euros in promoting the DAIMLERCHRYSLER mark in virtually all media. As a result, that mark enjoys a good reputation worldwide.
- Complainant deals not only in new cars, but used cars as well. The used car business has always been significant for Complainant because there has always been a good market for its used automobiles. Many buyers of luxury vehicles, such as those produced by Complainant, prefer to lease them, increasing the later availability for those vehicles on a used basis.
- The disputed domain names are confusingly similar to Complainant’s marks. They all contain full the marks, DAIMLER and DAIMLERCHRYSLER. The addition of the gTLDs, “.com,” “.net” and “.info,” are insignificant distinctions. Moreover, “jahreswagen,” or in English “used cars,” are precisely one of the products for which Complainant and its marks are famously known worldwide. Finally, the distinction between the lowercase “daimlerchrysler” found in the disputed domain names and the uppercase DAIMLERCHRYSLER found in Complainant’s mark is unimportant, because all domain names must employ lower case lettering whereas trademarks are commonly represented by uppercase lettering.
- Respondent has neither rights nor legitimate interests in the disputed domain names. Respondent is using the names to usurp Complainant’s rights, not for the bona fide offering of goods or services. Respondent is not commonly known by any of the disputed domain names. Respondent is not making legitimate noncommercial or fair use of the names.
- Having registered the disputed domain names on either February 9 or 10, 2006, Respondent uses them to sell used cars made by Complainant and Complainant’s competitors, who operate under trademarks such as CITROEN, DODGE, ISUZU, JEEP und KIA. Respondent’s website also gives the impression, falsely, that he is an authorized dealer of Complainant’s products. Respondent is an independent used car merchant, who has not been given any permission by Complainant to use Complainant’s trademarks in the disputed domain names.
- Respondent registered and is using the disputed domain names in bad faith. Respondent uses the names, which illegitimately bear Complainant’s mark, not only to refer to Complainant’s used cars, but also to promote the sale of used cars produced by Complainant’s competitors. Instead of making it clear that Respondent has no relation to Complainant, Respondent creates on his website the false impression for Internet users that he is akin to an authorized dealer of Complainant.
- Of all the domain names Respondent may have registered, Respondent chose to register the disputed domain names probably because he hoped to sell those names to Complainant, a bad faith motive for such registration. Respondent has made a practice of acquiring domain names that infringe on the rights of others. In a short time, Respondent registered three domain names with different gTLDs that all contained Complainant’s mark, DAIMLERCHRYLER, in an attempt to prevent Complainant from reflecting that mark in a domain name that relates to used cars.
- Respondent undoubtedly knew of
Complainant and its marks. He resides in
- Respondent agrees to discontinue use of the disputed domain names.
Complainant is a German company that is world-famous for the manufacture and sale of vehicles. For about ten years, Complainant has sold many automobiles under the trademark, DAIMLERCHRYSLER, for which it owns a valid German trademark registration (Reg. No. 39,825,488 issued May 7, 1998). Complainant has also held a valid German trademark registration for DAIMLER (Reg. No. 41,127 issued September 29, 1899) for over a century. Because of the renown and quality of its products, Complainant is also involved in the resale of its vehicles, which can be referred to otherwise as the “used vehicle market.”
Respondent is a German citizen who registered the disputed domain names, <daimlerchrysler-jahreswagen.com>, <daimlerchrysler-jahreswagen.info> and <daimlerchrysler-jahreswagen.net>. The registration of the names occurred on February 10, 2006. Respondent has attached to the disputed domain names websites that offer for sale Complainant’s used products as well as other used products that compete directly with those offered by Complainant.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Based on the
evidence submitted by Complainant to the Panel (see Exhibit 1), there is no
question that Complainant owns a valid German trademark registration for
DAIMLERCHRYSLER and therefore possesses rights in the same. See
Daimler AG v Daniel Brian and Assoc.,
FA 1215206 (Nat. Arb. Fourm Aug. 24, 2008); see
also Bilfinger Berger AG v.
All three disputed domain names contain Complainant’s full trademark. Added to the mark are obligatory gTLDs and the German word, “jahreswagen.” The common translation for that word in English is “used car.” Since Complainant is world-renowned for the manufacture and sale of cars, the common term “used car” is highly descriptive of the products with which Complainant and its mark are associated. Thus, any normal Internet user would be confused by the similarity between all of the names and Complainant’s trademark, assuming erroneously but reasonably that those names would be directly connected with the mark and Complainant. Therefore, the Panel finds that all of the disputed domain names are at least confusingly similar to Complainant’s valid trademark. See Ryder Sys., Inc. v. Domain Asia Ventures, D2004-0389 (WIPO, Aug. 2, 2004) (holding the domain name, <usedtrucksryder.com>, to be confusinly similar to RYDER); see also Miller Brewing Co. v. Domain Active Pty. Ltd., FA 243606 (Nat. Arb. Forum Apr. 23, 2004).
In view of the above, the Panel decides that Complainant has succeeded in showing that the disputed domain names are identical or confusingly similar to a trademark in which it has rights.
Complainant disavows forthrightly any connection with Respondent by contract, authorization or otherwise. Given that the Panel has found that Complainant also possesses unassailable rights in a trademark that is at least confusingly similar to the disputed domain names, the onus is thus placed upon Respondent to come forward with evidence to establish its rights or legitimate interests in said names. See Hanna-Barbera Prod., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006); see also Go Daddy Software, Inc. v. Hadani, D2002-0568 (WIPO August 1, 2002) (“Once a complainant has made this prima facie showing, the burden shifts to the respondent to show that the respondent has a legitimate interest in the domain name.”).
Respondent’s threadbare Response does little to convince the Panel that he has any such rights or legitimate interests. Certainly, his name bears little resemblance to any of the disputed domain names, so the Panel is not persuaded that paragraph 4(c)(ii) of the Policy can be evoked on his behalf to establish those rights or interests. Furthermore, Complainant maintains, without contradiction from Respondent and convincingly to the Panel, that the websites employed by Respondent at the disputed domain names offer for sale goods (i.e., used cars) that are produced both by Complainant and Complainant’s direct competitors. The Panel notes that prior UDRP panels have made it abundantly clear that such action by a complainant in a Policy proceeding constitutes neither “a bona fide offering of goods and services” per Policy paragraph 4(c)(i) nor “a legitimate noncommercial or fair use” of a disputed domain name per paragraph 4(c)(iii). See Philip Morris Inc. v. Tsypkin, D2002-0946 (WIPO Feb. 13, 2003); see also Nikon, Inc. and Nikon Corp. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2001). The Panel agrees with this position and believes that it applies to the instant case.
As Complainant points out perceptively, Respondent is a German citizen living not far from the location of Complainant’s headquarters. Complainant is one of the most famous German companies and, of course, all Germans would be expected to know of it. Its mark, DAIMLER, was trademarked in that country over one hundred years ago. It is world-renowned for its manufacture of luxury vehicles, its principal product, the Mercedes Benz automobile, having become legendary. The Panel need not be a savant, need not consult paragraph 4(b) of the Policy, need not consider prior UDRP rulings, to determine that there are absolutely no circumstances under which a German citizen could in good faith register and use a domain name for commerce relating to vehicles—new or used—beginning with the name, Daimler, without express authorization from Complainant. The record in this case is bereft of any such authorization.
Therefore, the Panel finds that the disputed domain names were registered and are being used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <daimlerchrysler-jahreswagen.com>, <daimlerchrysler-jahreswagen.info> and <daimlerchrysler-jahreswagen.net> domain names be TRANSFERRED from Respondent to Complainant.
Dennis A. Foster,
Dated: December 18, 2008
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