Daimler AG v. Ulf Luecking
Claim Number: FA1005001323951
PARTIES
Complainant is Daimler AG (“Complainant”), represented by Jan
Zecher of Fish & Richardson P.C.,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <mercedes-classic.com> and <mercedes-benz-classic.net>,
registered with KEY-SYSTEMS GMBH.
PANEL
The undersigned certifies that she has acted independently and
impartially and that to the best of her knowledge she has no known conflict in
serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as
Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically May 11, 2010.
On May 18, 2010, KEY-SYSTEMS GMBH confirmed by e-mail to the
National Arbitration Forum that the <mercedes-classic.com> and <mercedes-benz-classic.net>
domain names are registered with KEY-SYSTEMS
GMBH and that the Respondent is the current registrant of the
names. KEY-SYSTEMS
GMBH verified that Respondent is bound by the KEY-SYSTEMS GMBH registration agreement and thereby has agreed to
resolve domain-name disputes brought by third parties in accordance with
ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 27, 2010, the Forum served
the Complaint and all Annexes, including a Written Notice of the Complaint,
setting a deadline of June 16, 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
postmaster@mercedes-classic.com and
postmaster@mercedes-benz-classic.net by e-mail. Also on May
27, 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.
A timely Response was received and determined to be complete May 28, 2010.
Both Complainant and Respondent have agreed, in a submission to the
Forum dated May 24, 2010 and May 25, 2010, respectively, that the language of
this UDRP proceeding should be conducted in English.
On June 3, 2010, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Preliminary Issue:
Consent To Transfer
Respondent
notified the Forum that Respondent consents to transfer the <mercedes-classic.com>
and <mercedes-benz-classic.net> domain names to
Complainant. However, after the
initiation of this proceeding, KEY-SYSTEMS GMBH placed a hold on Respondent’s account and therefore Respondent cannot
transfer the disputed domain names while this proceeding is still pending. As a result, the Panel has reviewed the circumstances and finds that while the Panel
may forego the traditional UDRP analysis and order an immediate transfer of the
<mercedes-classic.com> and <mercedes-benz-classic.net> domain names, that
might not give the Complainant full relief in this case. See
Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625
(Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where
the respondent stipulated to the transfer); see also Malev Hungarian
Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13,
2004) (“In this case, the parties have both asked for the domain name to be
transferred to the Complainant . . . Since the requests of the parties in
this case are identical, the Panel has no scope to do anything other than to
recognize the common request, and it has no mandate to make findings of fact or
of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v.
Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such
circumstances, where Respondent has agreed to comply with Complainant’s
request, the Panel felt it to be expedient and judicial to forego the
traditional UDRP analysis and order the transfer of the domain names.”). Complainant has not implicitly consented in its
Complaint to the transfer of the disputed domain names without a decision on the
merits by the Panel. The Panel also
notes that the “consent-to-transfer” approach is but one way for cybersquatters
to avoid adverse findings against them. In Graebel Van Lines, Inc. v.
Respondent has admitted in his
response to the complaint of Complainant that it is ready to offer the transfer
without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel
is of the view that the transfer of the disputed domain name deserves to be
along with the findings in accordance with the Policy.
Therefore, the Panel finds that it is appropriate in this case for the Panel to resolve the case on the merits under the elements of the UDRP.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following contentions
in this proceeding:
1. Respondent registered two domain names <mercedes-classic.com>
and <mercedes-benz-classic.net> that are
confusingly similar to Complainant’s protected mark.
2. Respondent has no rights to or legitimate
interests in the disputed domain names containing Complainant’s protected mark.
3. Respondent registered and used the disputed domain
names in bad faith.
B. Respondent makes the following points in
Response:
1. Respondent agreed to transfer the two domain names to Complainant.
2. Respondent did not address the three prongs
alleged by Complainant that are required showings.
C. Neither party submitted Additional Submissions.
FINDINGS
The Panel finds that
Complainant has rights in its MERCEDES mark.
The Panel finds that
Complainant established that it has international rights in its MERCEDES-BENZ
mark.
The Panel finds that Respondent’s disputed domain
names are confusingly similar to Complainant’s MERCEDES and MERCEDES-BENZ marks.
The Panel finds that Respondent has no
rights to or legitimate interest in the disputed domain names.
The Panel finds that Respondent registered and used or registered and
passively held the disputed domain
names in bad faith.
DISCUSSION
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 Complainant to 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) 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 established that it owns trademark
registrations with the German Patent and Trademark Office (“GPTO”) (e.g., Reg. No. 151,574 issued November
23, 1911), with the Office of Harmonization for the Internal Market (“OHIM”)
(Reg. No. 139,998 issued March 11, 2000) and with the United States Patent and
Trademark Office ("USPTO") (e.g.,
Reg. No. 41,127 issued September 15, 1903) for its MERCEDES mark. The Panel finds that Complainant has rights
in its MERCEDES mark under Policy ¶ 4(a)(i) through its multiple trademark
registrations around the world. See Morgan Stanley v. Fitz-James,
FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the
evidence that the complainant had registered its mark with national trademark
authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights
in the mark for purposes of Policy ¶ 4(a)(i).”); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb.
Forum Aug. 4, 2004) (finding that the complainant had established rights in the
GOOGLE mark through its holding of numerous trademark registrations around the
world).
Complainant also established that it owns trademark
registrations with the GPTO (e.g.
Reg. No. 375,067 issued Octover 7, 1927), OHIM (Reg. No. 139,964 issued
February 2, 1999), and the USPTO (e.g.,
Reg. No. 657,386 issued January 21, 1958) for its MERCEDES-BENZ mark. The Panel finds that Complainant established
that it has international rights in its MERCEDES-BENZ mark under Policy ¶
4(a)(i). See supra Morgan Stanley; see also supra Google.
Complainant urges that the <mercedes-classic.com> domain name is confusingly similar to its
MERCEDES mark. Complainant contends that
the disputed domain name contains Complainant’s mark in its entirety while
adding a hyphen, the generic term “classic” and the generic top-level domain
(“gTLD”) “.com,” and that these changes are not sufficient to distinguish the
disputed domain name from Complainant’s mark.
The Panel finds that Respondent’s disputed domain name is confusingly
similar to Complainant’s MERCEDES mark pursuant to Policy ¶ 4(a)(i). See Health Devices Corp. v.
Complainant
further contends that the <mercedes-benz-classic.net>
domain name is confusingly similar to Complainant’s MERCEDES-BENZ
mark. Complainant notes that the
disputed domain name contains its mark in its entirety, adds a hyphen and the
generic term “classic” and includes the gTLD “.net.” Complainant contends that the noted additions
to its mark are also not sufficient to render the disputed domain name
distinctive from Complainant’s mark. The
Panel finds that Respondent’s disputed domain name is confusingly similar to
Complainant’s MERCEDES-BENZ mark under Policy ¶ 4(a)(i). See
supra Health Devices Corp.; see also supra Am. Express Co.; see also supra
Jerry Damson, Inc.
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The
Panel finds that the disputed domain names are confusingly similar to
Complainant’s protected marks; Complainant satisfied the elements of ICANN
Policy ¶ 4(a)(i).
Complainant must first make a prima
facie case that Respondent lacks rights and legitimate interests in the
disputed domain name under Policy ¶ 4(a)(ii). Once
Complainant does so, then the burden of proof shifts to Respondent to show it
does have such rights to or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum
Aug. 18, 2006) (holding that the complainant must first make a prima facie
case that the respondent lacks rights and legitimate interests in the disputed
domain name under UDRP ¶ 4(a)(ii) before the burden
shifts to the respondent to show that it does have rights or legitimate
interests in a domain name); see also AOL
LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant
must first make a prima facie showing that Respondent does not have rights or
legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the
burden shifts to Respondent to show that it does have rights or legitimate
interests in the subject domain names.”).
Complainant contends that it never authorized Respondent to use its protected mark and that Respondent is not a licensed dealer or a licensed garage of Complainant’s. Further, Complainant argues that Respondent is not commonly known by the disputed domain names. The WHOIS information for both of the disputed domain names identifies “Ulf Luecking” as the registrant. The Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). Where no evidence on record indicates that Respondent is commonly known by the disputed domain names; and where Respondent does not refute Complainant’s assertions that Respondent is not commonly know by the domain names, then the Panel appropriately finds that Respondent has no rights to or legitimate interests in the disputed domain names. See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Complainant also submits
evidence to show that Respondent is using the <mercedes-classic.com> domain name to operate a commercial hyperlink
directory that displays advertisements and third-party links to Complainant’s
competitors. Complainant argues that
such use is not a bona fide offering
of goods or services or a legitimate noncommercial or fair use of the disputed
domain name. The Panel finds that
Respondent’s use of the <mercedes-classic.com>
domain name to display third-party links for Complainant’s competitors is not a
use in connection with a bona fide
offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum
Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com>
domain name to redirect Internet users to a website featuring links to travel
services that competed with the complainant was not a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Tesco Pers. Fin. Ltd. v.
Domain Mgmt. Servs., FA
877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not
using the <tesco-finance.com> domain name in connection with a bona
fide offering of goods or services or a legitimate noncommercial or fair
use by maintaining a web page with misleading links to the complainant’s
competitors in the financial services industry).
Complainant further alleges that
Respondent’s <mercedes-benz-classic.net> domain name is not being used in connection with
an active website. Complainant submits a
screen shot of Respondent’s disputed domain name that displays the following:
“Gallery is currently offline – check back soon.” The Panel finds that Respondent’s failure to
use the <mercedes-benz-classic.net>
domain name as an active website is evidence that Respondent is not using
the disputed domain name in connection with 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). See
Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000)
(finding that when the respondent declares its intent to develop a website,
“[Policy ¶] 4(c)(i) requires Respondent to show 1) ‘demonstrable’ evidence of
such preparations to use the domain name, and 2) that such preparations were
undertaken ‘before any notice to [Respondent] of the dispute’”); see also George Weston Bakeries Inc. v. McBroom, FA 933276
(Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or
legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶
4(c)(iii) where it failed to make any active use of the domain name).
Respondent made no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or
legitimate interests in the disputed domain names; Complainant satisfied the
elements of ICANN Policy ¶ 4(a)(ii).
Lastly, Complainant urges that
Respondent registered and used the two disputed domain names in bad faith.
Respondent’s use of the <mercedes-classic.com> domain name to operate a directory that displays
advertisements and third-party links to Complainant’s competitors
disrupts Complainant’s business. The
Panel finds that Respondent disrupted Complainant’s business under Policy ¶ 4(b)(iii) and therefore registered the <mercedes-classic.com> domain name in bad faith. See Tesco Pers. Fin. Ltd. v.
Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the
use of a confusingly similar domain name to attract Internet users to a
directory website containing commercial links to the websites of a
complainant’s competitors represents bad faith registration and use under
Policy ¶ 4(b)(iii)); see also Persohn v.
Lim, FA 874447 (Nat. Arb. Forum Feb.
19, 2007) (finding bad faith registration and use pursuant to Policy ¶
4(b)(iii) where a respondent used the disputed domain name to operate a
commercial search engine with links to the complainant’s competitors).
Complainant further contends that Respondent registered and used the <mercedes-classic.com> domain name in bad faith because Respondent attempted to intentionally attract Internet users to its confusingly similar domain name to collect click-through fees. Complainant argues that Respondent receives compensation for the third-party links displayed on its website, and that such use is evidence of bad faith. The Panel finds that Respondent registered the <mercedes-classic.com> domain name in bad faith under Policy ¶ 4(b)(iv) where Respondent has maintained a commercial links page and presumably collects click-through fees for the links displayed on its website. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
The Panel further finds that the Panel considers
the totality of the circumstances when conducting a Policy ¶ 4(a)(iii)
analysis, and that the review is not limited to the enumerated factors in
Policy ¶ 4(b), but to the totality of the circumstances and particular facts of
the current dispute. See Do The Hustle,
LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad
faith] in Paragraph 4(b) are intended to be illustrative, rather than
exclusive.”); see also Twentieth Century
Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (“The
requirement in the ICANN Policy that a complainant prove that domain names are
being used in bad faith does not require that it prove in every instance that a
respondent is taking positive action. Use in bad faith can be inferred from the
totality of the circumstances even when the registrant has done nothing more
than register the names.”).
Complainant also argues that Respondent is not actively using the <mercedes-benz-classic.net> domain name, and that such inactivity is evidence of bad faith registration and use. Complainant submits a screen shot of Respondent’s website that shows a heading that states: “Gallery is currently offline – Check back soon.” The Panel finds that Respondent’s failure to make an active use of the <mercedes-benz-classic.net> domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the respondent made no use of the domain name in question and there are no other indications that the respondent could have registered and used the domain name in question for any non-infringing purpose); see also Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”).
Respondent made no contentions relative to Policy ¶ 4(a)(iii).
The
Panel finds that Respondent registered and used and/or registered and passively
held the disputed domain names in bad faith; Complainant satisfied the elements
of ICANN Policy ¶ 4(a)(iii).
DECISION
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-classic.com> and <mercedes-benz-classic.net>
domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: June 14, 2010.
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