Daimler AG v. Noori net
Claim Number: FA1005001323972
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 <mercedesclassics.com>, registered with Korea Information Certificate Authority Inc d/b/a Domainca.com.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically May 11, 2010.
On May 13, 2010, Korea Information Certificate Authority Inc d/b/a Domainca.com confirmed by e-mail to the National Arbitration Forum that the <mercedesclassics.com> domain name is registered with Korea Information Certificate Authority Inc d/b/a Domainca.com and that Respondent is the current registrant of the name. Korea Information Certificate Authority Inc d/b/a Domainca.com verified that Respondent is bound by the Korea Information Certificate Authority Inc d/b/a Domainca.com 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 14, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 3, 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@mercedesclassics.com. Also on May 14, 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 9, 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.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <mercedesclassics.com>, is confusingly similar to Complainant’s MERCEDES mark.
2. Respondent has no rights to or legitimate interests in the <mercedesclassics.com> domain name.
3. Respondent registered and used the <mercedesclassics.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Daimler AG, is a
manufacturer and seller of new and used cars.
Complainant owns multiple trademark registrations for the MERCEDES mark
in countries around the world, including:
German Patent and Trademark
Office (“GPTO”) (Reg. No. 151,574 issued Nov. 23, 1911);
Office for Harmonization in
the Internal Market (“OHIM”) (Reg. No. 000,139,998 issued Mar. 11, 2000);
Korean Intellectual Property
Office (“KIPO”) (Reg. No. 4,001,330,690,000 issued Nov. 1, 1986); and
United States Patent and
Trademark Office (“USPTO”) (Reg. No. 41,127 issued Oct. 20, 1902).
Respondent, Noori net, registered the <mercedesclassics.com> domain name September 4, 2008. The disputed domain name resolves to a webpage displaying sponsored links. Respondent has also publicly offered the domain name for sale.
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."
Given 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 will draw such inferences as the Panel 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 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 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 in multiple countries and/or regions around
the world, including
GPTO Reg. No. 151,574 issued
Nov. 23, 1911;
OHIM Reg. No. 000,139,998 issued
Mar. 11, 2000;
KIPO Reg. No. 4,001,330,690,000 issued Nov. 1, 1986; and the
USPTO Reg. No. 41,127 issued
Oct. 20, 1902.
The Panel finds that Complainant’s registration of its MERCEDES mark with national trademark authorities around the world, including with the USPTO, is conclusive evidence of Complainant’s rights in the MERCEDES mark for the purposes of Policy ¶ 4(a)(i). 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 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’)”).
Complainant alleges that Respondent’s <mercedesclassics.com> domain name is confusingly similar to Complainant’s MERCEDES mark because the disputed domain name appropriates Complainant’s full mark, adding only the descriptive term “classics” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that addition of the descriptive term “classics,” which relates to Complainant’s sale of its vintage cars, does not distinguish the disputed domain name from being confusingly similar to Complainant’s protected mark under Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”). The Panel also finds that the gTLD “.com” does not prevent a finding of confusing similarity between the disputed domain name and the mark pursuant to Policy ¶ 4(a)(i). See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel finds, therefore, that Respondent’s <mercedesclassics.com> domain name is confusingly similar to Complainant’s MERCEDES mark.
The Panel finds that Complainant satisfied the elements of
ICANN Policy ¶ 4(a)(i).
Complainant must make a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name containing Complainant’s protected mark before the burden of proof to demonstrate rights and legitimate interests is transferred to Respondent. See Policy ¶ 4(a)(ii). The Panel finds that Complainant presented such a prima facie case. Respondent, however, failed to meet the burden of demonstrating rights and legitimate interests because Respondent has not submitted a Response. As a result of this failure to respond, the Panel may make an inference that Respondent lacks rights and legitimate interests in the disputed domain name because it accepts Complainant’s allegations as true. See Branco do Brasil S.A. v. Sync Tech., D2000-0727 (WIPO Sept. 1, 2000) (“By its default, Respondent has not contested the allegation . . . that the Respondent lacks any rights or legitimate interests in the domain name. The Panel thus assumes that there was no other reason for the Respondent having registered <bancodobrasil.com> but the presumably known existence of the Complainant’s mark BANCO DO BRASIL”); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the panel and the respondent did not come forward to suggest any right or interest it may have possessed).
This Panel also elects, however, to consider all of the evidence presented in light of the Policy ¶ 4(c) factors before making the determination as to whether Respondent has such rights and legitimate interests in the disputed domain name.
Complainant asserts that Respondent is not commonly known by
the <mercedesclassics.com>
domain name and that Complainant has not licensed or authorized Respondent to
use Complainant’s MERCEDES mark. As the
WHOIS information for the disputed domain name identifies the registrant as
“Noori net,” the Panel finds no apparent association between Respondent and the
disputed domain name. Therefore no basis is shown for a finding that Respondent
has rights and legitimate interests in the disputed domain name according to
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
Complainant contends as well that Respondent’s <mercedesclassics.com> domain name
redirects Internet users to a webpage filled with sponsored links. The Panel finds that using a disputed domain
name for no purpose other than advertising links sponsored by third-parties is
not the bona fide offering of goods
that is required by Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use as required by Policy ¶ 4(c)(iii). See Bank of Am. Fork v. Shen,
FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s
use of a domain name to redirect Internet users to websites unrelated to a
complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also Constellation Wines
Complainant alleges that Respondent has made a public offer
to sell the <mercedesclassics.com>
domain name for an amount that exceeds Respondent’s out-of-pocket registration
costs. The Panel finds that offers to
sell the disputed domain name permit a finding that Respondent lacks rights and
legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Mothers
Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum
May 27, 2003) (holding that under the circumstances, the respondent’s apparent
willingness to dispose of its rights in the disputed domain name
suggested that it lacked rights or legitimate interests in the domain name); see also Skipton Bldg. Soc’y v. Colman,
D2000-1217 (WIPO Dec. 1, 2000) (finding no rights in a domain name where the
respondent offered the infringing domain name for sale and the evidence
suggests that anyone approaching this domain name through the worldwide web
would be "misleadingly" diverted to other sites).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant alleges that Respondent has offered the <mercedesclassics.com> domain name
for sale to the public for an amount that exceeds Respondent’s out-of-pocket
registration costs. Complainant argues
that Respondent registered the disputed domain name primarily with the intent
to sell the disputed domain name for a profit.
The Panel finds that an offer to sell the disputed domain supporting
findings of bad faith registration and use according to Policy ¶ 4(b)(i). See Banca Popolare Friuladria S.p.A. v. Zago,
D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where the respondent offered
the domain names for sale); see also Bank of Am. Corp. v.
Nw. Free Cmty. Access, FA
180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's
general offer of the disputed domain name registration for sale establishes
that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
Complainant asserts as well that
Respondent’s use of the <mercedesclassics.com>
domain name to advertise sponsored links, which are presumably pay-per-click
links, is an attempt by Respondent to attract Internet users to Respondent’s
resolving website, to create confusion as to any affiliation between
Complainant and the displayed links, and to profit from the pay-per-click
revenue. The Panel finds that such
activities on the part of Respondent demonstrate bad faith registration and use
for the purposes of Policy ¶ 4(b)(iv). See
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mercedesclassics.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 23, 2010
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