Daimler AG v. Autohaus Schaefer
Claim Number: FA0812001239372
Complainant is Daimler AG (“Complainant”), represented by Jan
Zecher, of Fish & Richardson P.C.,
REGISTRAR
The domain name at issue is <daimlerdealer.com>, <daimler-dealer.com>,
<daimler-jahreswagen.com>, <daimler-jahreswagen.net>,
<daimler-jahreswagen.org>, <daimler-werkswagen.com>, <daimler-werkswagen.net>,
<daimlerchrysler-jahreswagen.org>, <mercedes-werkswagen.com>,
<smartjahreswagen.com> and <smartjahreswagen.net>,
registered with Cronon 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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On December
31, 2008, Cronon Ag Berlin, Niederlassung
Regensburg confirmed by e-mail to the National Arbitration Forum that
the <daimlerdealer.com>, <daimler-dealer.com>,
<daimler-jahreswagen.com>, <daimler-jahreswagen.net>, <daimler-jahreswagen.org>, <daimler-werkswagen.com>, <daimler-werkswagen.net>, <daimlerchrysler-jahreswagen.org>,
<mercedes-werkswagen.com>, <smartjahreswagen.com> and <smartjahreswagen.net> domain
name are registered with Cronon Ag Berlin,
Niederlassung Regensburg and that Respondent is the current registrant
of the names. Cronon Ag
On January
5, 2009, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
January 26, 2009
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@daimlerdealer.com, postmaster@daimler-dealer.com, postmaster@daimler-jahreswagen.com, postmaster@daimler-jahreswagen.net, postmaster@daimler-jahreswagen.org, postmaster@daimler-werkswagen.com, postmaster@daimler-werkswagen.net, postmaster@daimlerchrysler-jahreswagen.org, postmaster@mercedes-werkswagen.com, postmaster@smartjahreswagen.com, and postmaster@smartjahreswagen.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <daimlerdealer.com>, <daimler-dealer.com>, <daimler-jahreswagen.com>, <daimler-jahreswagen.net>, <daimler-jahreswagen.org>, <daimler-werkswagen.com>, <daimler-werkswagen.net>, <daimlerchrysler-jahreswagen.org>, <mercedes-werkswagen.com>, <smartjahreswagen.com> and <smartjahreswagen.net> domain names are confusingly similar to Complainant’s DAIMLER, DAIMLER-CHRYSLER, MERCEDES and SMART marks.
2. Respondent does not have any rights or legitimate interests in the <daimlerdealer.com>, <daimler-dealer.com>, <daimler-jahreswagen.com>, <daimler-jahreswagen.net>, <daimler-jahreswagen.org>, <daimler-werkswagen.com>, <daimler-werkswagen.net>, <daimlerchrysler-jahreswagen.org>, <mercedes-werkswagen.com>, <smartjahreswagen.com> and <smartjahreswagen.net> domain names.
3. Respondent registered and used the <daimlerdealer.com>, <daimler-dealer.com>, <daimler-jahreswagen.com>, <daimler-jahreswagen.net>, <daimler-jahreswagen.org>, <daimler-werkswagen.com>, <daimler-werkswagen.net>, <daimlerchrysler-jahreswagen.org>, <mercedes-werkswagen.com>, <smartjahreswagen.com> and <smartjahreswagen.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Daimler AG, is a worldwide leading producer of automobiles. Complainant owns a number of German trademark registrations for its family of marks including the DAIMLER mark (Reg. No. 41,127 issued September 29, 1899), the DAIMLER-CHRYSLER mark (Reg. No. 39,825,488 issued May 7, 1998), the MERCEDES mark (Reg. No. 151,574 issued June 16, 1911), and the SMART mark (Reg. No. 39,514,027 issued March 31, 1995).
Respondent registered the disputed domain names on
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 has established rights in
the DAIMLER, DAIMLER-CHRYSLER, MERCEDES and SMART marks for the purposes of
Policy ¶ 4(a)(i) through its trademark registrations
with the German Patent and Trademark Office.
See Metropolitan
Life Ins. Co. v. Bonds, FA 873143
(Nat. Arb. Forum
Complainant argues that each of the disputed domain names are confusingly similar to one of Complainant’s registered marks pursuant to Policy ¶ 4(a)(i). Each of the eleven disputed domain names contains one of Complainant’s registered marks in its entirety and add a generic top-level domain (“gTLD”). A few of the disputed domain names include hyphens and others include a generic term with an obvious relationship to Complainant’s business. The Panel finds that generic terms, especially generic terms with an obvious relationship to a complainant’s business operation that are added to a complainant’s registered mark, create a confusing similarity between the disputed domain name and the mark. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Christie’s Inc. v. Tiffany’s Jewelry Auction, Inc., D2001-0075 (WIPO Mar. 6, 2001) (finding that the domain name <christiesauction.com> is confusingly similar to the complainant's mark because it merely adds the word “auction” used in its generic sense). In addition, the Panel finds that the additions of a gTLD and a hyphen are irrelevant in distinguishing a disputed domain name from a registered mark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). Therefore, Respondent’s disputed domain names are confusingly similar to Complainant’s registered marks pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant asserts that Respondent lacks all rights and legitimate interests in the disputed domain names. If Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that rights and legitimate interests exist pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has establised a prima facie case. 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).
By failing to respond to the Complaint, the Panel may assume
that Respondent is unable to meet its burden of establishing rights or
legitimate interests in the disputed domain names. See Broadcom Corp. v. Ibecom
Complainant contends that Respondent is neither commonly known by, nor licensed to register, the disputed domain names. Respondent’s WHOIS information identifies Respondent as “Autohaus Schaefer.” The Panel finds that Respondent’s failure to respond to the Complaint and the WHOIS information demonstrate that Respondent is not commonly known by the disputed domain names. Therefore, pursuant to Policy ¶ 4(c)(ii), Respondent lacks rights and legitimate interests in the disputed domain names. See G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).”); see also 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).
Complainant argues that Respondent lacks rights and
legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). Respondent’s
disputed domain names resolve to websites offering products in direct
competition with Complainant. The Panel
finds that the use of a confusingly similar disputed domain name to divert
consumers to a website offering products in direct competition with a
complainant is neither a bona fide
offering of goods and services pursuant to Policy ¶ 4(c)(i)
nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See DLJ Long Term Inv. Corp. v.
BargainDomainNames.com, FA 104580 (Nat.
Arb. Forum Apr. 9, 2002) (“Respondent
is not using the disputed domain name in connection with a bona fide offering
of goods and services because Respondent is using the domain name to divert
Internet users to <visual.com>, where services that compete with
Complainant are advertised.”); see also
Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27,
2003) (finding that the respondent's “use of the domain name (and
Complainant’s mark) to sell products in competition with Complainant
demonstrates neither a bona fide offering of goods or services nor a legitimate
noncommercial or fair use of the name”).
In addition, Respondent raises the misleading impression of being a licensed dealer or a licensed garage of Complainant The Panel finds Respondent’s attempt to hold itself out as a licensed seller of Complainant’s goods is further evidence that Respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors); see also National Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s use of the disputed domain names to
disrupt Complainant’s business by offering products in direction competition
with Complainant is further evidence of bad faith registration and use pursuant
to Policy ¶ 4(b)(iii). See Travant
Solutions, Inc. v. Cole, FA 203177 (Nat. Arb. Forum Dec. 6, 2003) (“Respondent registered and used the
domain name in bad faith, pursuant to Policy ¶ 4(b)(iii), because it is
operating on behalf of a competitor of Complainant . . .”); see also 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).”).
In addition, Complainant argues
that Respondent’s use of the disputed domain names to commercially benefit by
creating a likelihood of confusion by offering Complainant’s automobiles in direct
competition with Complainant for sale is evidence of bad faith. The Panel finds that such registration and
use of the disputed domain names is evidence of bad faith pursuant to Policy ¶
4(b)(iv). See Computerized Sec. Sys.,
Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the
respondent’s use of the <saflock.com> domain name to offer goods
competing with the complainant’s illustrates the respondent’s bad faith
registration and use of the domain name, evidence of bad faith registration and
use pursuant to Policy ¶ 4(b)(iv)); see
also Nokia Corp. v. Private,
D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant
to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered
similar products as those sold under the complainant’s famous mark).
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 <daimlerdealer.com>, <daimler-dealer.com>, <daimler-jahreswagen.com>, <daimler-jahreswagen.net>, <daimler-jahreswagen.org>, <daimler-werkswagen.com>, <daimler-werkswagen.net>, <daimlerchrysler-jahreswagen.org>, <mercedes-werkswagen.com>, <smartjahreswagen.com> and <smartjahreswagen.net> domain names be TRANSFERRED from Respondent to Complainant.
Dated: February 13, 2009
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