Daimler AG v. L B RAJU
Claim Number: FA1007001337619
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 <bharatbenz.com>, registered with Ascio Technologies, Inc.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 27, 2010.
On July 28, 2010, Ascio Technologies, Inc. confirmed by e-mail to the National Arbitration Forum that the <bharatbenz.com> domain name is registered with Ascio Technologies, Inc. and that Respondent is the current registrant of the name. Ascio Technologies, Inc. has verified that Respondent is bound by the Ascio Technologies, Inc. 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 August 2, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 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 postmaster@bharatbenz.com by e-mail. Also on August 2, 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 September 1, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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:
Complainant owns, inter alia,
the following registered trademarks:
-
European Community trademark registration no. 139,964
“Mercedes-Benz” (word mark) with priority of April 1st, 1996, registered
and used for, i.a., “vehicles”;
-
Indian trademark
registration no. 170,268 “Mercedes-Benz” (word mark) with registration date of
August 2nd, 1955 , registered and used for, i.a. “vehicles”;
-
European Community trademark registration no. 140,087
“BENZ” (word mark) with priority of April 1st, 1996, registered and
used for, i.a., “vehicles”;
-
Indian trademark
registration no. 459,712 “BENZ” (word mark) with registration date of September
5, 1986, registered and used for, i.a. “vehicles;
-
European
Community trademark registration no. 8,785,743 “BHARATBENZ” (word mark) with
priority of December 28, 2009, registered i.a. for “automobiles“ (still protected regardless of use).
The trademark “MERCEDES-BENZ” is a world-wide famous trademark. The trademark has been used by Complainant and its legal predecessors for more than a century. In the last ten years, Complainant and its legal predecessors have sold annually millions of automobiles under the trademark world-wide. In the same time, Complainant spent hundreds of millions of US-dollars on advertising and promoting products bearing its trademark in a wide range of media, including print, radio, television and the Internet throughout the world. The trademark “Mercedes-Benz” enjoys world-wide reputation. This has been confirmed by court decisions around the world. See DaimlerChrysler AG v. mercedesbenzpromo, FA271201 (NAF June 30, 2004)(finding the trademark “MERCEDES-BENZ” being famous). See also DaimlerChrysler AG v. SAS P Parly, FA280477 (NAF July 14, 2004)(finding the trademark “MERCEDES-BENZ” being well-known). See also DaimlerChrysler AG v Gary Viar, FA 1080832 (NAF September 26, 2007)(confirming a good reputation of Complainant’s mark).
In
many countries around the world, Complainant and its products are also known
under the trademark “BENZ”. As the mark “MERCEDES-BENZ” is rather long,
Complainant’s products traditionally are often referred to as “BENZ” products.
This is not only true in
“… BENZ is a name given to a very high priced and extremely well engineered product. In my view, the defendant cannot dilute that by user of the name ‘Benz’ with respect to products like underwear.”
See
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal
grounds:
[a.] The domain name “bharatbenz.com” is confusingly similar to the trademark “BENZ” of Complainant.
[i.] The domain name “bharatbenz.com” consists of the elements “bharat”, “benz” and “com” . The characteristic element of the domain “bharat” is the element “benz”.
[ii.] [The element “com” is irrelevant when
comparing domain names to trademarks. See
Nevada State Bank v. Modern Ltd., FA204063 (NAF December 6, 2003)(holding that generic top-level domains are irrelevant when
considering a domain name is identical or confusingly similar).
[iii.] The element “bharat” is a merely
descriptive geographical indication and therefore irrelevant. “Bharat” is Hindi
and means “
[iv.] The element “benz” is phonetically
identical and orthographically very similar to the trademark “BENZ”. There are
only small differences in capitalization and spelling. The element “benz” does
not use capitals, the trademark “BENZ” does use
capitals. However, this does not make a real difference as the Internet Domain
Name System (DNS) does not allow for capitalization of domain names. See Central Pacific Bank v. ansony, FA99379
(NAF October 15, 2001) (stating that capitalization is not considered when
addressing the similarities between domain names and marks contained within
them)
[b.] Respondent has neither rights nor legitimate interests in respect of the domain name. Neither has Respondent used the domain name before notice of the dispute for a bona fide offering of goods or services, nor has he been commonly known by the domain name, nor has he a legitimate noncommercial or fair use of the domain name.
[i.] Respondent’s domain name was registered on May 5, 2008 . Since then, Respondent has not used the domain name for a web site. This can also be seen by the Internet Archive, the so-called “Wayback Machine” (www.archive.org). The domain name has been lying idle for more than two years.
[ii.] Respondent’
failure to use the domain name
is not a bona fide offering of goods or services pursuant to Policy ¶4(c) (i)
or a legitimate non-commercial or fair use of the domain name pursuant to
Policy ¶4 (c) (iii). See Disney
Enterprises, Inc. v.
[iii.] Respondent is neither a licensed dealer nor a licensed garage of Complainant. Complainant never had a business relation with Respondent. Complainant did not even know about Respondent. Complainant never instructed or authorized Respondent to register the domain name.
[iv.] A search in the
trademark registers of the
[c.] Respondent
acted in bad faith when registering and using the domain name.
[i.] As the domain name incorporates Complainant’s famous trademark “BENZ” and merely adds a geographical indication, it is inconceivable that Respondent could make any use of the disputed domain name without creating a false impression of association with Complainant. As every use of the domain name would inevitably create a confusion of the public, bad faith under Policy ¶4 (a) (iii) is on hand. See State Farm Mutual Automobile Insurance Company v. Darrin Bagnuolo, FA399349 (NAF February 21, 2005)(finding bad faith in an unused domain when it was inconceivable that respondent could make any use of the disputed domain name without creating a false impression of association with complainant). See also Phat Fashions v. Kruger, FA96193 (NAF December 29, 2000) (finding bad faith even though respondent had not used the domain name because every use of the domain name would inevitably have created a confusion of the public).
[ii.] Respondent registered
a domain name that incorporates Complainant’s famous trademarks “BENZ” and
failed to market any bona fide goods or
services since the domain name was registered. Respondent’s passive holding of
a domain name that is confusingly similar to Complainant’s famous trademark
“BENZ” evidences bad faith. See Disney Enterprises, Inc. v.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Daimler AG, operates under its MERCEDES-BENZ and BENZ marks to design, manufacture and distribute automobiles with those names. Complainant owns several trademark registrations with the European Union’s Office for Harmonization in the Internal Market (“OHIM”) for its BENZ (e.g., Reg. No. 140,087 issued March 29, 2001) and BHARATBENZ marks (Reg. No. 8,784,743 filed December 28, 2009; issued June 22, 2010).
Respondent, L B RAJU, registered the <bharatbenz.com> domain name on May 5, 2008. Respondent’s disputed domain name does not resolve to an active website and does not appear to be used.
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 submits evidence to show it owns trademark registrations with the OHIM for its BENZ mark (e.g., Reg. No. 140,087 issued March 29, 2001). Therefore, the Panel finds Complainant has established rights in its BENZ mark that predate Respondent’s domain name registration and Complainant argues only under the BENZ mark for purposes of Policy ¶4(a)(i) in the instant proceeding. Therefore, the Panel finds Respondent has established rights in its BENZ mark under Policy ¶4(a)(i) through its trademark registrations with the OHIM. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority); see also 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).”).
Complainant contends Respondent’s <bharatbenz.com> domain name is confusingly similar to
its BENZ mark under Policy ¶4(a)(i). Complainant alleges the term “bharat” is a
Hindi term for the
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant contends Respondent does not have rights and legitimate interests in the <bharatbenz.com> domain name pursuant to Policy ¶4(a)(ii). Complainant is required to make a prima facie case in support of its allegations before the burden of proof shifts to Respondent. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶4(c)). The Panel finds Complainant has established a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. The Panel finds that due to Respondent’s failure to respond to these proceedings the Panel may accept as true Complainant’s allegations unless they are clearly contradicted by the evidence on record. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”). Out of an abundance of caution, the Panel will evaluate the evidence on record to determine if Respondent possesses rights and legitimate interests in the domain name.
Complainant asserts Respondent is not commonly known by the <bharatbenz.com> domain name and Complainant has not authorized Respondent to use Complainant’s BENZ mark. The WHOIS information for the disputed domain name identifies “L B RAJU” as the registrant, and Respondent has not submitted evidence to counter Complainant’s arguments. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under 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 further claims Respondent registered the <bharatbenz.com> domain name on May
5, 2008 and the domain name has not been connected to an active website. Complainant contends Respondent’s failure to
make an active use of the disputed domain name for over two years is not a bona fide offering of goods or services
or a legitimate noncommercial or fair use.
The Panel agrees (although a domain name could be used other than for
hosting a web site, such as an email portal) and finds Respondent’s failure to
connect the disputed domain name to an active website for more than two years
after registering such does not evince 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 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); see
also 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).
The Panel finds Policy ¶4(a)(ii) satisfied.
The Panel may consider 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). 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 has alleged, and submitted evidence to show, Respondent has not connected the disputed domain name to an active website since registering the domain name on May 5, 2008. Complainant contends Respondent’s failure to make an active use of the disputed domain name constitutes bad faith registration and use. Previous panels have found that a respondent that fails to make an active use of a disputed domain name has registered and used the disputed domain name in bad faith 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 DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶4(a)(iii) of the Policy). While a domain name can be used for purposes other than hosting a web site, Respondent has failed to make such a claim here. Therefore, the Panel finds Respondent has registered and used the <bharatbenz.com> domain name in bad faith under Policy ¶4(a)(iii) where it has failed to make an active use of the domain name for more than two years since registering the domain name.
The Panel finds Policy ¶4(a)(iii)
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 <bharatbenz.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: September 9, 2010
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