Daimler AG v. Dirk Bernau c/o Autohaus Kudrass
Claim Number: FA0903001252084
Complainant is Daimler AG (“Complainant”), represented by Jan
Zecher, of Fish & Richardson P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <jahreswagen-mercedes.net>, registered with Psi-Usa, Inc. d/b/a Domain Robot.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 12, 2009; the National Arbitration Forum received a hard copy of the Complaint on March 16, 2009.
On March 13, 2009, Psi-Usa, Inc. d/b/a Domain Robot confirmed by e-mail to the National Arbitration Forum that the <jahreswagen-mercedes.net> domain name is registered with Psi-Usa, Inc. d/b/a Domain Robot and that Respondent is the current registrant of the name. Psi-Usa, Inc. d/b/a Domain Robot has verified that Respondent is bound by the Psi-Usa, Inc. d/b/a Domain Robot 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 March 19, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 8, 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@jahreswagen-mercedes.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 16, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <jahreswagen-mercedes.net> domain name is confusingly similar to Complainant’s MERCEDES mark.
2. Respondent does not have any rights or legitimate interests in the <jahreswagen-mercedes.net> domain name.
3. Respondent registered and used the <jahreswagen-mercedes.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Daimler AG, is famous world-wide for the production of motor vehicles under its MERCEDES mark. Complainant has used its MERCEDES for over 100 years and holds a registration of this mark with the United States Patent Office (“USPTO”) (Reg. No. 41,127 issued September 15, 1903).
Respondent registered the <jahreswagen-mercedes.net> domain name on December 21, 2006. The disputed domain name resolves to a website that purports to sell Complainant’s products and Complainant’s competitor’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 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 sufficiently
established rights in the MERCEDES mark under Policy ¶ 4(a)(i) because it holds
a registration of the mark with the USPTO.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
At the outset, Complainant must make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain name. The burden then shifts to Respondent and Respondent must establish that it has rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has sufficiently made its prima facie showing under 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).”).
Respondent’s
<jahreswagen-mercedes.net> domain name resolves to a website that purports
to sell Complainant’s products and Complainant’s competitor’s products. The Panel finds that Respondent uses the
disputed domain name to divert Internet users to its competing website, and
this diversion is not a bona fide
offering of goods and services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that
the respondent was not using the domain name within the parameters of Policy ¶
4(c)(i) or (iii) because the respondent used the domain name to take advantage
of the complainant's mark by diverting Internet users to a competing commercial
site); see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb.
Forum Nov. 20, 2003) (finding that the respondent used a domain name for
commercial benefit by diverting Internet users to a website that sold goods and
services similar to those offered by the complainant and thus, was not using the
name in connection with a bona fide offering of goods or services nor a
legitimate noncommercial or fair use).
Furthermore, Respondent is listed in the WHOIS information
as “Dirk Bernau c/o Autohaus Kudrass,”
which does not indicate that Respondent is commonly known by the <jahreswagen-mercedes.net> domain name.
Respondent has not offered any evidence to indicate otherwise. The Panel finds that Respondent is not
commonly known by the disputed domain name 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 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that the aforementioned diversion of Internet users to Respondent’s competing website is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
Moreover, the Panel finds that Respondent is using the
confusingly similar <jahreswagen-mercedes.net>
domain name to sell products that
compete with Complainant, and thus is evidence of bad faith registration and
use under Policy ¶ 4(b)(iv) because Respondent is trading off the goodwill
surrounding Complainant’s mark. See
Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum
May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the
respondent was using the <dellcomputerssuck.com> domain name to divert
Internet users to respondent’s website offering competing computer products and
services); see also 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)).
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 <jahreswagen-mercedes.net> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: April 30, 2009
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