national arbitration forum

 

DECISION

 

Daimler AG v. ZHANGXIANQIONG

Claim Number: FA1110001412263

 

PARTIES

Complainant is Daimler AG (“Complainant”), represented by Jan Zecher of Fish & Richardson P.C., Germany.  Respondent is ZHANGXIANQIONG (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <byddaimler.com> and <byd-daimler.com>, registered with GoDaddy.com, Inc.

 

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 October 20, 2011; the National Arbitration Forum received payment October 20, 2011.

 

On October 20, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <byddaimler.com> and <byd-daimler.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names.  GoDaddy.com, Inc. verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On October 20, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 9, 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@byddaimler.com and postmaster@byd-daimler.com.  Also on October 20, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 November 16, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson sits 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 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    The domain names that Respondent registered, <byddaimler.com> and <byd-daimler.com>, are confusingly similar to Complainant’s DAIMLER mark.

 

2.    Respondent has no rights to or legitimate interests in the <byddaimler.com> and <byd-daimler.com> domain names.

 

3.    Respondent registered and used the <byddaimler.com> and <byd-daimler.com> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Daimler AG, sells vehicles under its DAIMLER mark.  Complainant provides evidence of its trademark registrations with the German Patent and Trade Mark Office (“DPMA”), the Office of Harmonization for the Internal Market (“OHIM”), and with the World Intellectual Property Organization (“WIPO”):

 

Trademark Agency              Reg. No.                    Registration Date

DPMA                                                41,127                        December 4, 1899

DPMA                                                30,731,467                June 28, 2007

OHIM                                      140,012                      January 12, 1998

WIPO                                     951,383                      October 19, 2007

 

Respondent, ZHANGXIANQIONG, registered the <byddaimler.com> and <byd-daimler.com> domain names May 27, 2010.  The disputed domain names resolve to identical websites that state, in English and Chinese, “This domain is for sale” and “You could buy this domain name in the way below.”

 

Respondent has been a respondent in a previous UDRP case in which the disputed domain name was transferred to the respective complainant.  See Morgan Stanley v. Zhangxianqiong, FA 1378439 (Nat. Arb. Forum April 20, 2011).

 

DISCUSSION

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.

 

Identical to and/or Confusingly Similar

 

Complainant asserts rights in its DAIMLER mark and provides evidence of its trademark registrations with national trademark authorities:

 

Trademark Agency              Reg. No.                    Registration Date

DPMA                                                41,127                        December 4, 1899

DPMA                                                30,731,467                June 28, 2007

OHIM                                      140,012                      January 12, 1998

WIPO                                     951,383                      October 19, 2007

 

The Panel finds that Complainant established rights in its DAIMLER mark under Policy ¶ 4(a)(i), although Respondent lives in China because the Policy does not require that a mark be registered in the area of Respondent’s residency.  See 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); 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)); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).

 

Respondent’s <byddaimler.com> and <byd-daimler.com> domain names contain Complainant’s DAIMLER mark and combine the mark with the term “byd,” which refers to BYD Co. Ltd., a company that Complainant owns a joint-venture with, and the generic top-level domain (“gTLD”) “.com.”  The <byd-daimler.com> domain name also contains a hyphen.  The Panel finds that these additions fail to differentiate the disputed domain names from Complainant’s mark and, therefore, the Panel finds that Respondent’s <byddaimler.com> and <byd-daimler.com> domain names are confusingly similar to Complainant’s DAIMLER mark for the purposes of Policy ¶ 4(a)(i).  See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).

 

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).

 

Rights to or Legitimate Interests

 

Complainant alleged that Respondent has no rights to or legitimate interests in the <byddaimler.com> and <byd-daimler.com> domain names.  Once Complainant makes a prima facie case to support its allegations, the burden of proof shifts to Respondent to prove that it does have such rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  The Panel finds that Complainant made a prima facie case.  Given Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain names.  However, the Panel still examines the record to determine whether evidence there suggests that Respondent has such rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).  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 Law Soc’y of Hong Kong v. Domain Strategy, Inc., HK-0200015 (ADNDRC Feb. 12, 2003) (“A respondent is not obligated to participate in a domain name dispute . . . but the failure to participate leaves a respondent vulnerable to the inferences that flow naturally from the assertions of the complainant and the tribunal will accept as established assertions by the complainant that are not unreasonable.”).

 

Respondent provided no evidence, and the Panel fails to find any evidence in the record, that Respondent is commonly known by the <byddaimler.com> and <byd-daimler.com> domain names.  The WHOIS information lists “ZHANGXIANQIONG” as the registrant of the disputed domain names, which the Panel finds is not nominally similar to the disputed domain names.  Based on the evidence in the record, the Panel finds that Respondent is not commonly known by the <byddaimler.com> and <byd-daimler.com> domain names pursuant to Policy ¶ 4(c)(ii) and cannot claim rights under that section of the Policy.  See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).

 

Respondent’s <byddaimler.com> and <byd-daimler.com> domain names resolve to websites that state: “This domain is for sale” and “You could buy this domain name in the way below.”  Respondent’s resolving websites also contain contact information for Internet users who might be interested in purchasing the disputed domain names.  The Panel finds that Respondent’s attempt to sell the disputed domain names is not a Policy ¶ 4(c)(i) bona fide offering of goods or services and it is not a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <byddaimler.com> and <byd-daimler.com> domain names.  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 Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the respondent registered the domain name with the intention of selling its rights).

 

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).

 

Registration and Use in Bad Faith

 

Respondent states on its website that the <byddaimler.com> and <byd-daimler.com> domain names are for sale.  The Panel holds that this evidence is sufficient to prove that Respondent registered and uses the disputed domain names in bad faith under a Policy ¶ 4(b)(i) analysis.  See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding that the attempted sale of a domain name is evidence of bad faith); 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).”).

 

Respondent has been a respondent in a previous UDRP case in which the disputed domain name was transferred to the respective complainant.  See Morgan Stanley v. Zhangxianqiong, FA 1378439 (Nat. Arb. Forum April 20, 2011).  The Panel finds that this prior case and Respondent’s registration and use of the disputed domain names in this case are evidence to support findings that Respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(ii).  See Albertson's, Inc. v. Bennett, FA 117013 (Nat. Arb. Forum Sept. 5, 2002) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) in the respondent’s registration of the <albertsonscoupons.com> and <albertsons-coupons.com> domain names because the respondent “registered the domain names in order to prevent Complainant from registering its common law ALBERTSON’S COUPON mark in a corresponding domain name”); see also Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005) (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another UDRP proceeding against the respondent to find that “this is part of a pattern of such registrations”).

 

Finally, Respondent registered the <byddaimler.com> and <byd-daimler.com> domain names May 27, 2010, which is the day that Complainant announced its joint venture with BYD Co. Ltd.  Complainant asserts that the news was widely reported.  Therefore, the Panel finds that Respondent’s registration and use of the disputed domain names is evidence of opportunistic bad faith under Policy ¶ 4(a)(iii).  See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (“If there had been any doubt as to bad faith, the fact that registration was on the same day the news leaked about the merger, which was put in evidence, is a compelling indication of bad faith that [the] respondent has to refute and which he has failed to do.  The panel finds a negative inference from this.”); see also 3M Co. v. Jeong, FA 505494 (Nat. Arb. Forum Aug. 11, 2005) (“Respondent’s registration of the disputed domain name the same day that Complainant issued the press release regarding the acquisition constitutes opportunistic bad faith.”).

 

The Panel finds that Respondent registered and used 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 <byddaimler.com> and <byd-daimler.com> domain names be TRANSFERRED from Respondent to Complainant.

 

Hon. Carolyn Marks Johnson, Panelist

Dated: November 22, 2011.

 

 

 

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