Daimler AG v. webritmo c/o Carlos Cavaleiro
Claim Number: FA1002001309424
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 <mercedes-sa.com>, registered with Everyones Internet, Ltd. d/b/a Resellone.net.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 23, 2010; the National Arbitration Forum received a hard copy of the Complaint on February 26, 2010.
On February 25, 2010, Everyones Internet, Ltd. d/b/a Resellone.net confirmed by e-mail to the National Arbitration Forum that the <mercedes-sa.com> domain name is registered with Everyones Internet, Ltd. d/b/a Resellone.net and that Respondent is the current registrant of the name. Everyones Internet, Ltd. d/b/a Resellone.net has verified that Respondent is bound by the Everyones Internet, Ltd. d/b/a Resellone.net 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 February 26, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 18, 2010 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@mercedes-sa.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 29, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <mercedes-sa.com> domain name is confusingly similar to Complainant’s MERCÉDÈS mark.
2. Respondent does not have any rights or legitimate interests in the <mercedes-sa.com> domain name.
3. Respondent registered and used the <mercedes-sa.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Daimler AG, is a
well-known dealer worldwide of both new and used automobiles. Complainant’s business is known and
recognized under the “Daimler AG” and “Mercedes” names. Complainant owns trademark registrations with
the German trademark authority (Reg. No. 151,574 issued Nov. 23, 1911), the
international trademark authority (Reg. No. 292,123) and the United States
Patent and Trademark Office (“USPTO”) (Reg. No. 41,127 issued Sept. 15, 1903).
Respondent, webritmo c/o Carlos Cavaleiro, registered the <mercedes-sa.com> domain name on September 10, 2008. The disputed domain name resolves to a website displaying the “Mercedes Star” and “Mercedes-Benz” marks, which are additional trademarks owned by Complainant. Respondent’s website offers automobiles for sale, including those of Complainant and Complainant’s competitors.
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.
Complainant owns trademark registrations with the German trademark authority (Reg. No. 151,574 issued Nov. 23, 1911), the international trademark authority (Reg. No. 292,123) and the United States Patent and Trademark Office (“USPTO”) (Reg. No. 41,127 issued Sept. 15, 1903). The Panel finds that a trademark registration with the USPTO conclusively proves Complainant’s rights in the mark, substantially predating Respondent’s registration of the disputed domain name, despite that Respondent may operate in a foreign country. See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”); see also 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).
Complainant argues that Respondent’s disputed domain name is
confusingly similar to Complainant’s MERCÉDÈS mark. Respondent’s disputed
domain name wholly appropriates Complainant’s mark, adds the generic descriptor
“sa” and a hyphen, removes the accent marks, and includes the generic top-level
domain ) (“gTLD”) “.com.” The Panel
finds that the addition of the generic descriptor “sa,” in this case the
abbreviation of the term “Sociedade Anónima” (Portuguese equivalent to a stock
corporation), to Complainant’s mark is insufficient to distinguish the disputed
domain name from Complainant’s mark. See Magnum Piering, Inc. v. Mudjackers,
D2000-1525 (WIPO Jan. 29, 2001) (finding that the generic term “INC” does not
change the confusing similarity); see
also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026
(WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in
dispute contains the identical mark of the complainant combined with a generic
word or term). The addition of a hyphen
and deletion of accent marks similarly do not prevent confusing similarity
because punctuation variances are not a significant factor under Policy ¶ 4(a)(i). See Florentine Caffe,
Inc. v. Pfeffer, FA 465152 (Nat. Arb. Forum June 3, 2005)
(finding that “[t]he removal of the accent is insignificant under the Policy
because it is not possible to reproduce such punctuation in a domain name”); see also Health Devices Corp. v.
The Panel finds Policy ¶
4(a)(i) has been satisfied.
According to the requirements of Policy ¶ 4(a)(ii), Complainant has the burden of presenting a prima facie case against Respondent in these proceedings. After such a prima facie case has been established, Respondent must bear the burden of proving its rights and legitimate interests in the disputed domains. After Complainant established a sufficient prima facie case, however, Respondent failed to respond. Respondent’s silence allows the Panel to make the inferences that Complainant’s allegations are true and Respondent accordingly lacks rights and legitimate interests in the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). The Panel elects, however, to consider the evidence presented in light of the Policy ¶ 4(c) factors to determine whether Respondent possesses rights and legitimate interests in the disputed domain name.
Complainant alleges that the WHOIS information for the disputed domain name is evidence that Respondent lacks rights and legitimate interests in the disputed domain name. The WHOIS information lists the registrant of the disputed domain name as “webritmo.” Further, Respondent is not licensed or authorized by Complainant to use Complainant’s mark. The Panel finds that, as there is no nominal link between the Respondent and the disputed domain name, the WHOIS information serves as evidence that Respondent is not commonly known by the disputed domain name. The Panel also finds, therefore, that Respondent consequently has no rights and legitimate interests in the disputed domain name. 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 IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Complainant contends that Respondent also fails to show rights and legitimate interests in the disputed domain name because it does not use the disputed domain name for a bona fide offering or goods or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii). Respondent uses the disputed domain name to direct Internet users to a site appearing to be an affiliated with Complainant and offering both Complainant’s products and products of Complainant’s competitors. The Panel finds that appropriating Complainant’s mark in the disputed domain name to operate a website selling Complainant’s products without authorization, as well as competing products, is not in accordance with a bona fide offering of goods or services or a legitimate noncommercial or fair use required by Policy ¶ 4(c)(i) or ¶ 4(c)(iii). 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 Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (Panelist Tyrus R. Atkinson, Jr., dissenting) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
The Panel finds Policy ¶ 4(a)(ii)
has been satisfied.
Respondent uses the disputed domain name to direct Internet users to its own website, which appears to be associated with Complainant and offers Complainant’s goods along with competitors’ goods. Respondent’s use of Complainant’s mark in the disputed domain name disrupts Complainant’s business because Internet users may be confused by the use of Complainant’s mark in the disputed domain name and on Respondent’s web page, believing that Respondent’s site is actually affiliated with Complainant. These misdirected customers may decide to buy one of Complainant’s products from Respondent or buy a competitor’s product also advertised and sold by Respondent. As Respondent is clearly a competitor of Complainant in this instance and endeavors to disrupt Complainant’s business through the use of the disputed domain name, the Panel finds that Respondent’s activities indicate bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion); see also Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii).”).
Respondent’s use of Complainant’s well-known and well-respected mark in the disputed domain name is intended to attract potential customers to Respondent’s site for Respondent’s own commercial gain. Because the disputed domain name is so similar to Complainant’s mark and Respondent’s website displays some of Complainant’s other distinctive marks, Complainant’s potential customers may feel no hesitation in buying from Respondent once they arrive at Respondent’s site. Respondent is clearly using Complainant’s mark to financially benefit from its fame and consumer following, which, the Panel finds, reveals bad faith registration and use under Policy ¶ 4(b)(iv). See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (concluding that the respondent registered and used the <wwfauction.com> domain name in bad faith because the name resolved to a commercial website that the complainant’s customers were likely to confuse with the source of the complainant’s products, especially because of the respondent’s prominent use of the complainant’s logo on the site); see also Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods).
Respondent’s inclusion of Complainant’s MERCÉDÈS mark in the
disputed domain name, along with the presence of Complainant’s other marks on
Respondent’s website without Complainant’s
authorization, indicates that Respondent is attempting to pass-off its site as
being Complainant’s site. The Panel
finds that these efforts to pass-off Respondent’s own site as Complainant’s are
further evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum
Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to
misrepresent itself as the complainant and to provide misleading
information to the public supported a finding of bad faith);
see also Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31,
2002) (“Respondent is using the domain name at issue to resolve to a website at
which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge
of Complainant’s business and trademarks. The Panel finds that this conduct is
that which is prohibited by Paragraph 4(b)(iv) of the
Policy.”).
The Panel finds 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 <mercedes-sa.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: April 12, 2010
National
Arbitration Forum
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