Daimler AG v. Specialist Engineers
Claim Number: FA1111001416509
Complainant is Daimler AG (“Complainant”), represented by Jan Zecher of Fish & Richardson P.C., Germany. Respondent is Specialist Engineers (“Respondent”), Cyprus, represented by Pat Scully.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mercedes-cyprus.com>, registered with GoDaddy.com, 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.
Michael A. Albert as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 21, 2011; the National Arbitration Forum received payment on November 21, 2011.
On November 21, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <mercedes-cyprus.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 November 22, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 12, 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@mercedes-cyprus.com. Also on November 22, 2011, the Written Notice of the Complaint notifying Respondent of the e-mail addresses was 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.
A timely Response was received and determined to be complete on November 22, 2011.
On November 30, 2011 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Michael A. Albert as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
With respect to Policy ¶ 4(a)(i), Complainant contends that the <mercedes-cyprus.com> domain name is confusingly similar to Complainant’s MERCEDES mark.
With respect to Policy ¶ 4(a)(ii), Complainant alleges that Respondent is “neither a licensed dealer nor a licensed garage of Complainant. Complainant never had a business relation [sic] with Respondent.” Further, Complainant notes that it never instructed Respondent to register the domain name.
Complainant states that Respondent is using the domain name to promote Respondent’s automobile maintenance and repair garage. Complainant notes that Respondent repairs several brands of vehicles, including Aston Martin, BMW, Ferrari, Jaguar, Lamborghini, and Porsche. Complainant notes that Respondent’s website prominently displays Complainant’s MERCEDES mark and logo as well as a photograph of one of Complainant’s cars. Complainant argues that, regardless of whether Respondent works on its automobiles as well, using the MERCEDES trademark to market competing maintenance and repair services is not a bona fide offering of goods or services. Complainant also addresses the criteria established by the panel in Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) case. The Oki Data Americas, Inc. panel held that an authorized dealer may use the complainant’s trademark if the respondent is: 1) selling the products at issue; 2) selling only the complainant’s products; 3) accurately disclosing the relationship between the complainant and the respondent; and 4) has not attempted to register all domain names incorporating the complainant’s mark, thus preventing the complainant from reflecting its mark in a domain name. Complainant contends that Oki Data Americas, Inc. applies only to goods and not to services, but that even if that test applied here, Respondent fails to meet it because Respondent offers the goods and services of numerous other manufacturers on its website.
Complainant also argues that Respondent’s website “does not contain a readable disclaimer stating that Respondent is neither a licensed dealer nor a licensed garage of Complainant.”
Complainant contends that Respondent is engaging in a pattern of bad faith registration and use under Policy ¶ 4(b)(iii). Complainant claims that Respondent registered multiple other domain names that contain third-party trademarks, such as “ASTON MARTIN,” “BMW,” “FERRARI,” “JAGUAR,” “LAMBORGHINI,” and “PORSCHE.” Complainant provides evidence that Respondent owns these domain names by including the WHOIS information. See Complainant’s Attachment 10.
Complainant maintains that Respondent is using the disputed domain name to offer competing automobile maintenance and repair services.
Complainant contends that Respondent has intentionally created a likelihood of confusion between Respondent’s website and Complainant’s mark in order to profit by offering competing services.
B. Respondent
Respondent makes no contentions regarding Policy ¶ 4(a)(i).
With respect to Policy ¶ 4(a)(ii), Respondent asserts that it is a “Mercedes trained specialist” that is merely trying to make MERCEDES owners aware that it offers a servicing facility for their cars. Respondent contends that it runs a “small family garage in Cyprus” that services “many makes of car, including Mercedes and [it] is not in any respect affiliated to Mercedes.” Respondent asserts that it does not represent itself as a MERCEDES dealer, affiliate, or partner in any way. Respondent believes that it is not competing with Complainant in any way and states that no one could confuse its business with that of MERCEDES.
Further, Respondent asserts that “there is a clear disclaimer displayed on the HOME page” of the website. As noted above, the alleged disclaimer reads: “Specialist Engineers recognizes that ‘Mercedes’, the Mercedes logo and various model numbers and cars are or may be registered trademarks of Mercedes. These terms and images are used for identification and artistic purposes only. Specialist Engineers are not affiliated in any way with Mercedes.”
Finally, with respect to Policy ¶ 4(a)(iii), Respondent states that it did not register or use the domain name for any purpose other than to make consumers aware that its services were available in the geographic area of Cyprus. Respondent disagrees that it is in competition with Complainant and that anyone would actually be confused as to its affiliation with Complainant.
Respondent also emphasizes that it has placed a valid disclaimer upon its website to clear up any confusion that may have existed.
For the reasons set forth below, the Panel finds Complainant has proven that the domain names should be transferred.
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."
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.
As an initial matter, the Panel finds that Complainant’s trademark registrations establish its rights in the MERCEDES mark under Policy ¶ 4(a)(i). 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)).
The domain name at issue contains Complainant’s entire mark while adding a hyphen, the geographic term “cyprus,” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the disputed domain is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i), despite the additions Respondent has made. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); see also Laboratoires De Biologie Vegetale Yves Rocher v. Choi, FA 104201 (Nat. Arb. Forum Mar. 22, 2002) (holding that the <yveskorea.com> domain name was confusingly similar to the complainant’s YVES ROCHER mark even though the domain name was only similar in part); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Based on the foregoing, the Claimant has proven the first element of the policy.
The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See 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 UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
After reviewing the WHOIS information for the disputed domain name, the panel notes that the registrant is identified as “Specialist Engineers.” The Panel finds that 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 Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
The Panel agrees with Complainant that the criteria established in Oki Data Americas, Inc., do not apply here because the Respondent does not sell trademarked goods. The Panel finds that Respondent has not demonstrated that it owns rights and legitimate interests in the disputed domain name by being a distributor of Complainant. Moreover, the Panel finds that Respondent’s use of the disputed domain name to market its own competing automobile service garage is not 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 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 Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
The Panel notes that Complainant’s evidence in Attachment 8 shows Respondent’s website and that, at the bottom of the page in small print, appears the following language, “Specialist Engineers recognizes that ‘Mercedes’, the Mercedes logo and various model numbers and cars are or may be registered trademarks of Mercedes. These terms and images are used for identification and artistic purposes only. Specialist Engineers are not affiliated in any way with Mercedes.” Notwithstanding this disclaimer, the Panel concludes that Respondent does not have rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii). See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that addition of a disclaimer, when the domain name consists of the complainant’s well-known trademark, does not counter the expectation of Internet users that the domain name is sponsored by the complainant); see also Las Vegas Sands, Inc. v. Red Group, D2001-1057 (WIPO Dec. 6, 2001) (justifying the conclusion that the respondent wishes to trade on the fame of the complainant’s trademark, regardless of the presence of a small-print disclaimer that is unavailable to Internet users until they have already entered the gambling site, because the disclaimer fails to remedy initial confusion).
Based on the foregoing, Complainant has proven the second element of the Policy.
The Panel agrees with Complainant that Respondent has intentionally created a likelihood of confusion between Respondent’s website and Complainant’s mark in order to profit by offering services that compete with services offered by Complainant. The Panel therefore finds that Respondent registered and is using the domain name in bad faith under Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered services similar to those offered by the complainant under its mark); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mercedes-cyprus.com> domain name be TRANSFERRED from Respondent to Complainant.
Michael A. Albert, Panelist
Dated: December 13, 2011
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