Daimler AG v. marco koop
Claim Number: FA1012001362436
Complainant is Daimler AG (“Complainant”), represented by Jan Bolt of Gleiss Lutz Rechtsanwaelte, Germany. Respondent is marco koop (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <4mercedes.com>, registered with GoDaddy.com, 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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 8, 2010; the National Arbitration Forum received payment on December 8, 2010.
On December 9, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <4mercedes.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 15, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 4, 2011 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@4mercedes.com. Also on December 15, 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 January 7, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.)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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <4mercedes.com> domain name is confusingly similar to Complainant’s MERCEDES mark.
2. Respondent does not have any rights or legitimate interests in the <4mercedes.com> domain name.
3. Respondent registered and used the <4mercedes.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Daimler AG, produces and sells Mercedes-Benz premium passenger cards, commercial vehicles, and parts. Complainant sells its products in nearly every country in the world and has production facilities on four continents. Complainant owns trademark registrations for the MERCEDES mark with the United States Patent and Trademark Office (“USPTO”) and the European Union Office for Harmonization in the Internal Market (“OHIM”):
USPTO
Reg. No. 100,958 issued November 3, 1914 and
OHIM
Reg. No. 000139998 registered March 11, 2000.
Respondent, marco koop, registered the <4mercedes.com> domain name on January 22, 2005. The disputed domain name resolved, until October 22, 2010, to a commercial website offering “Mercedes & BMW Parts and Service” and alleging that the parts offered were made of “non-genuine materials” because the non-genuine materials would be “of a higher quality than most original Mercedes electronics.” Some time after October, 22, 2010, Respondent deactivated the resolving 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 owns trademark registrations for the MERCEDES mark with the USPTO and the OHIM:
USPTO
Reg. No. 100,958 issued November 3, 1914 and
OHIM
Reg. No. 000139998 issued November 3, 2000.
The Panel finds that Complainant’s registration of its MERCEDES mark with both the USPTO and the OHIM conclusively establishes Complainant’s rights in the mark for the purposes of Policy ¶ 4(a)(i). 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 also Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).
Complainant argues that Respondent’s <4mercedes.com> domain name is confusingly similar to Complainant’s MERCEDES mark. The disputed domain name primarily consists of Complainant’s mark, combined with the number “4” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that merely adding a single numeral to Complainant’s mark is insufficient to differentiate Respondent’s disputed domain name from Complainant’s mark. See Am. Online, Inc. v. Oxford Univ., FA 104132 (Nat. Arb. Forum Mar. 19, 2002) (finding several domain names that added the numeral “7” or the term “seven” to the complainant’s AOL mark were confusingly similar to the mark under Policy ¶ 4(a)(i)); see also G.D. Searle & Co. v. MedScripts,LLC a/k/a Skinner, FA 126830 (Nat. Arb. Forum Dec. 2, 2002) (finding the <4-celebrex.com> domain name to be confusingly similar to the complainant’s CELEBREX mark). The Panel also finds that the addition of the gTLD does not distinguish the disputed domain name from Complainant’s mark. See 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.”). The Panel finds, therefore, that Respondent’s <4mercedes.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.
Under Policy ¶ 4(a)(ii), Complainant bears the burden of presenting a prima facie case against Respondent. After Complainant has put forth such a case, as the Panel finds has been done here, the burden to prove rights and legitimate interests transfers to Respondent. By defaulting on this obligation and not producing a Response, however, Respondent has not shown any rights and legitimate interests in the disputed domain name. The Panel accordingly concludes that Respondent does not possess rights and legitimate interests in the disputed domain names and that Complainant’s allegations may be taken as true. See Wild West Domains, Inc. v. Jung, D2004-0243 (WIPO May 18, 2004) (“It can be inferred that by defaulting Respondent showed nothing else but an absolute lack of interest in the Domain Name . . . . It is incumbent on Respondent to contribute to the fact-finding and if contrary to that, it rather incurs in default, there is nothing that the Panel could do to discuss in its benefit.”); see also 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). In the interest of fairness, however, the Panel will consider all the evidence in the record in light of the Policy ¶ 4(c) before making a determination on Respondent’s rights and legitimate interests.
Complainant alleges that it has not authorized Respondent to use Complainant’s mark in the <4mercedes.com> domain name. The WHOIS information for the disputed domain name indicates that the registrant is “marco koop.” Complainant asserts that, more than a year after the registration of the disputed domain name, an entity named CBS Specialties Inc. filed a registration for a fictitious name “4Mercedes.com” with the Florida Department of State on July 10, 2006. Complainant argues, however, that this registration with the Florida Department of State simply shows that Respondent named its business after its illegitimate domain name. The Panel finds, additionally, that there is no evidence showing any connection between the named individual in the WHOIS information, Marco Koop, and the entity that registered the “4Mercedes.com” name with the Florida Department of State, CBS Specialties Inc. In any case, Complainant contends that such minor evidence linking Respondent to the disputed domain name is insufficient to establish that Respondent is commonly known by the disputed domain name. The Panel finds that Respondent is not commonly known by the disputed domain name and lacks rights and legitimate interests in the <4mercedes.com> domain name according to Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); 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 asserts that, as late as October 22, 2010, Respondent used its <4mercedes.com> domain name to sell non-genuine Mercedes automobile parts, boasting that these non-genuine parts were of higher quality than genuine products. Complainant alleges that Respondent used the disputed domain name to support its business of “rebuilding” used, defective and very complicated Mercedes-Benz automotive electronic parts. Complainant argues that because these non-genuine parts were not authorized or tested by Complainant, they could be unsafe as they were not evaluated by Complainant’s quality standards. Complainant asserts that the commercial sale of non-authentic and unauthorized products under the MERCEDES mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that the respondent's “use of the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name”).
Complainant argues that some time after October 22, 2010, Respondent deactivated the website resolving from the <4mercedes.com> domain name. The Panel finds that failure to make active use of the disputed domain name is a further indication of Respondent’s lack of rights and legitimate interest pursuant to Policy ¶ 4(a)(ii). See TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”); see also Nike, Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001) (finding no rights or legitimate interests where the respondent made no use of the infringing domain names).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that as late as October 22, 2010, Respondent used the <4mercedes.com> domain name to offer for sale non-genuine automobile parts for use in Complainant’s vehicles. Complainant argues that these non-genuine parts competed with Complainant’s genuine products. Complainant asserts that Respondent’s assertion on the resolving website that these non-genuine parts were of higher quality than Complainant’s authentic parts further shows Respondent’s intention to compete with and disrupt Complainant’s business. The Panel thus finds that Respondent’s registration and use of the disputed domain name shows bad faith registration and use under Policy ¶ 4(b)(iii). See Caterpillar Inc. v. Vine, FA 97097 (Nat. Arb. Forum June 22, 2001) (“Respondent registered each of the disputed domain names in order to gain customers and to disrupt Complainant's business of authorizing dealers to sell its CATERPILLAR equipment.”); 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 alleges that Respondent includes the MERCEDES mark in the <4mercedes.com> domain name in order to attract Complainant’s customers seeking MERCEDES parts or automobiles. Complainant argues that Respondent uses Complainant’s mark to create the impression and mislead Internet users into believing that Respondent is affiliated with or endorsed by Complainant. Complainant contends that Respondent receives commercial benefits from the confusion the disputed domain name creates because Respondent sells products advertised to Complainant’s customers. The Panel finds that Respondent’s intention to profit from its misleading use of Complainant’s mark in the <4mercedes.com> domain names shows bad faith registration and use under Policy ¶ 4(b)(iv). See Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services); see also 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)).
Complainant asserts that some time after October 22, 2010, Respondent deactivated the website at the <4mercedes.com> domain name. The Panel finds that Respondent’s failure to actively use the disputed domain name is evidence of bad faith registration and use according to Policy ¶ 4(a)(iii). See 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); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
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 <4mercedes.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.),Panelist
Dated: January 24, 2011
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