Daimler AG v. Trevor Scroggie c/o Domain Contact
Claim Number: FA1005001323955
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 <mercedesbenzclassics.com>, registered with FREEPARKING DOMAIN REGISTRARS, INC.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 11, 2010.
After numerous requests, the Registrar, FREEPARKING DOMAIN REGISTRARS, INC, has not confirmed to the National Arbitration that the <mercedesbenzclassics.com> domain name is registered with FREEPARKING DOMAIN REGISTRARS, INC or that the Respondent is the current registrant of the name. Registrar’s non-compliance has been reported to ICANN. The FORUM’s standing instructions are to proceed with this dispute.
On June 16, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 6, 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@mercedesbenzclassics.com. Also on June 16, 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 July 12, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 "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 <mercedesbenzclassics.com> domain name is confusingly similar to Complainant’s MERCEDES-BENZ mark.
2. Respondent does not have any rights or legitimate interests in the <mercedesbenzclassics.com> domain name.
3. Respondent registered and used the <mercedesbenzclassics.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Daimler AG, holds multiple trademark registrations for its MERCEDES-BENZ mark with governmental agencies throughout the world including Germany’s Deutsches Patent- und Markenamt (“DPMA”) (Reg. No. 375,067 issued October 7, 1927), the European Union Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 000139964 issued February 2, 1999), and the United States Patent and Trademark Office (“USPTO”) (Reg. No. 657,386 issued January 21, 1958). Complainant annually sells millions of automobiles worldwide under its MECEDES-BENZ mark. Complainant also sells old models of its cars through its operation of several “Mercedes-Benz Classic Centers” in different countries worldwide where carefully restored vintage cars produced by Complainant are offered.
Respondent registered the disputed domain name on December 12, 2009. The disputed domain name does not resolve to an active website.
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 asserts rights in its MERCEDES-BENZ mark due to its registration of the mark with multiple governmental trademark authorities worldwide including the DPMA (Reg. No. 375,067 issued October 7, 1927), the OHIM (Reg. No. 000139964 issued February 2, 1999) and the USPTO (Reg. No. 657,386 issued January 21, 1958). The Panel finds that Complainant has established rights in the mark under Policy ¶ 4(a)(i) through its extensive and long standing trademark registrations. 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 argues that Respondent’s <mercedesbenzclassics.com>
domain name is confusingly similar
to Complainant’s MERCEDES-BENZ mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name is
confusingly similar to Complainant’s mark as it merely deletes the hyphen, adds
the descriptive term “classics” and the generic top-level domain (“gTLD”)
“.com.” The Panel finds that these
alterations do not sufficiently distinguish the disputed domain name from
Complainant’s mark. See Nat’l Cable Satellite Corp. v. Black Sun Surf
Co., FA 94738 (Nat. Arb. Forum
June 19, 2000) (holding that the domain name <cspan.net>, which omitted
the hyphen from the trademark spelling, C-SPAN, is confusingly similar to the
complainant's mark); 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)); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs.,
FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic
top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the
Domain Name from the mark.”). Therefore,
pursuant to Policy ¶ 4(a)(i), the Panel finds that
Respondent’s <mercedesbenzclassics.com> domain name is confusingly similar to Complainant’s MERCEDES-BENZ mark.
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
Complainant alleges that Respondent lacks rights and
legitimate interests in the disputed domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts
to Respondent to prove it has rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(a)(ii). Based on the arguments made in the Complaint,
the Panel finds that Complainant has established a prima facie case in support of its contentions and Respondent has
failed to submit a Response to these proceedings. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum
Apr. 26, 2006) (finding the “complainant must first make a prima facie case
that [the] respondent lacks rights and legitimate interests in the disputed
domain names under Policy ¶ 4(a)(ii), and then the
burden shifts to [the] respondent to show it does have rights or legitimate
interests.”); see also 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 Policy ¶ 4(a)(ii) before the burden
shifts to the respondent to show that it does have rights or legitimate
interests in a domain name).
Nevertheless, the Panel will examine the record to determine whether
Complainant has rights or legitimate interests in the disputed domain name
pursuant to the factors outlined in Policy ¶ 4(c).
The WHOIS information lists the registrant of the disputed domain name as “Trevor Scroggie c/o Domain Contact.” Complainant contends that Respondent is neither a licensed dealer nor a licensed garage of Complainant and that Complainant has never instructed or authorized Respondent to register the domain name. The Panel finds that Complainant’s contentions, coupled with the WHOIS information, indicate that Respondent is not commonly known by the disputed domain name for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant argues that Respondent’s disputed domain name fails to resolve to an active website and merely displays the phrase “Under Construction.” The Panel finds that Respondent’s failure to make an active use of the disputed domain name is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the respondent lacked rights or legitimate interests in a confusingly similar domain name that it had not made demonstrable preparations to use since its registration seven months prior to the complaint); 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).
The Panel finds that Policy ¶ 4(a)(ii) is satisfied.
The Panel finds that it may consider the totality of the
circumstances when conducting a Policy ¶ 4(a)(iii) analysis,
and that it is not limited to the enumerated factors in Policy ¶ 4(b). 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.”).
Respondent’s disputed domain name fails to resolve to an active website and merely displays language indicating that the site is “under construction.” The Panel finds that Respondent’s failure to make an active use of the disputed domain name is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith).
The Panel finds that Policy ¶ 4(a)(iii) is satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <mercedesbenzclassics.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: July 20, 2010
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