AG v. Classic Cars (
Claim Number: FA1005001323948
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 <mercedesclassic.com>, registered with Group NBT PLC a/k/a Netnames.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 11, 2010.
After numerous requests, the registrar, Group NBT PLC a/k/a Netnames, has not confirmed to the National Arbitration Forum that the <mercedesclassic.com> domain name is registered with Group NBT PLC a/k/a Netnames or that the Respondent is the current registrant of the name. Group NBT PLC a/k/a/ Netnames’ non-compliance has been reported to ICANN. The FORUM’s standing instructions are to proceed with this dispute.
On June 3, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 23, 2010 by which Respondent could file a response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to firstname.lastname@example.org. Also on June 3, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 29, 2010 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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" through submission of a Written Notice, as defined in Rule 1. 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 <mercedesclassic.com> domain name is confusingly similar to Complainant’s MERCEDES mark.
2. Respondent does not have any rights or legitimate interests in the <mercedesclassic.com> domain name.
3. Respondent registered and used the <mercedesclassic.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Daimler AG, is a manufacturer of automobiles that sells new, pre-owned, and classic Mercedes vehicles. Complainant owns trademark registrations for the MERCEDES mark with the German Patent and Trade Mark Office (“GPTMO”) (e.g., Reg. No. 151,574 issued November 23, 1911), the European Union Office of Harmonization for the Internal Market (“OHIM”) (e.g., Reg. No. 000139998 issued November 3, 2000), and the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 41,127 issued September 15, 1903).
Respondent, Classic Cars (UK) Limited, registered the <mercedesclassic.com> domain name on June 29, 2002. The disputed domain name resolves to Respondent’s website offering used cars of different competing manufacturers for sale, along with maintenance and repair services, car financing, and rental services.
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 for the MERCEDES mark with the GPTMO (e.g., Reg. No. 151,574 issued November 23, 1911), the European Union OHIM (e.g., Reg. No. 000139998 issued November 3, 2000), and the USPTO (e.g., Reg. No. 41,127 issued September 15, 1903). The Panel finds that registering a trademark with national trademark authorities grants Complainant rights in the MERCEDES mark sufficient for the purposes of Policy ¶ 4(a)(i), even if the Respondent lives or operates in a country outside where the mark is registered. 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 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 alleges that Respondent’s <mercedesclassic.com> domain name is confusingly similar to Complainant’s MERCEDES mark. The disputed domain name contains Complainant’s full mark, coupled with the descriptive term “classic” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that adding a descriptive term which relates to Complainant’s business fails to distinguish the disputed domain name according to Policy ¶ 4(a)(i). 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 Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)). The Panel also finds that the addition of a gTLD is irrelevant for a Policy ¶ 4(a)(i) analysis because it is a required element of domain names. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). The Panel therefore determines that Respondent’s <mercedesclassic.com> domain name is confusingly similar to Complainant’s MERCEDES mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent does not possess rights and legitimate interests in the disputed domain names. Policy ¶ 4(a)(ii) requires that Complainant present a prima facie case against Respondent in support of this assertion, which the Panel determines Complainant has done in this instance. The burden therefore shifts to Respondent to demonstrate its rights and legitimate interests in the disputed domain name. The Panel views Respondent’s failure to respond as a failure to refute Complainant’s allegations, indicating that Respondent consequently lacks rights and legitimate interests in the disputed domain name. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also Eroski, So. Coop. v. Getdomains Ishowflat Ltd., D2003-0209 (WIPO July 28, 2003) (“It can be inferred that by defaulting Respondent showed nothing else but an absolute lack of interest on the domain name.”). In order to make a complete determination on the issue, however, the Panel elects to consider all the evidence presented in light of the Policy ¶ 4(c) factors.
Complainant contends that Respondent does not possess rights
and legitimate interests in the <mercedesclassic.com>
domain name as Respondent is not commonly known by the disputed domain name and
is not licensed by Complainant to sell Complainant’s automobiles or use its
MERCEDES mark. The Panel finds that the
WHOIS information that lists the registrant of the disputed domain name as
“CLASSIC CARS (UK) LIMITED,” along with the lack of other evidence showing
nominal association between Respondent and the disputed domain name, is
sufficient to support a finding that Respondent is not commonly known by the
disputed domain name and thus lacks rights and legitimate interests in the
disputed domain name according to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v.
740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not
commonly known by the <cigaraficionada.com> domain name under Policy ¶
4(c)(ii) based on the WHOIS information and other evidence in the record); see also
Complainant asserts that Respondent’s <mercedesclassic.com> domain name resolves to a website offering many different brands of automobiles for sale, including Complainant’s vehicles and vehicles manufactured by Complainant’s competitors. Complainant contends that Respondent’s website also offers other services provided by Complainant, including vehicle maintenance and repair, financing, and car rentals. Complainant argues that Respondent is neither a licensed dealer of Complainant’s automobiles nor a licensed garage, but that Respondent’s resolving web page misleadingly gives Internet users the impression that Respondent is affiliated with Complainant. The Panel finds that Respondent’s use of Complainant’s mark to sell Complainant’s cars, and cars manufactured by Complainant’s competitors, without Complainant’s authorization is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use according to Policy ¶¶ 4(c)(i) or 4(c)(iii). See G.D. Searle & Co. v. Mahony, FA 112559 (Nat. Arb. Forum June 12, 2002) (finding the respondent’s use of the disputed domain name to solicit pharmaceutical orders without a license or authorization from the complainant does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i)); see also Nat’l 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 Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent is a competing automobile seller who is offering Complainant’s own vehicles, as well as competing manufacturers’ vehicles, for sale at the <mercedesclassic.com> domain name. Complainant asserts that this use of the disputed domain name disrupts Complainant’s business because Respondent aims to sell competing goods using Complainant’s mark. The Panel finds that Respondent’s efforts to disrupt Complainant’s business by offering competitors’ goods for sale at the disputed domain name indicates bad faith registration and use under 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 Lambros v. Brown, FA 198963 (Nat. Arb. Forum Nov. 19, 2003) (finding that the respondent registered a domain name primarily to disrupt its competitor when it sold similar goods as those offered by the complainant and “even included Complainant's personal name on the website, leaving Internet users with the assumption that it was Complainant's business they were doing business with”).
Complainant contends that Respondent appropriated Complainant’s MERCEDES mark in the <mercedesclassic.com> domain name in an attempt to commercially profit from the fame of Complainant’s mark in the auto sales industry. Complainant argues that Respondent knew that use of Complainant’s mark in the disputed domain name would attract customers seeking Complainant’s products and that use of the mark in the domain name and on the resolving website would likely confuse Internet users and lead them to believe they were at a site affiliated with or sponsored by Complainant. The Panel finds that Respondent’s activities in attracting Complainant’s customers with the misleading use of Complainant’s mark for Respondent’s profit signals bad faith registration and use 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 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).
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 <mercedesclassic.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: July 1, 2010
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