Mercedes Homes, Inc. v. Ricana Pty. Ltd.
Claim Number: FA0301000142322
PARTIES
Complainant is
Mercedes Homes, Inc., Melbourne, FL (“Complainant”) represented
by Patrick F. Roche, of Frese, Nash & Hansen, P.A.. Respondent
is Ricana Pty. Ltd., Perth, WA (“Respondent”).
REGISTRAR AND DISPUTED
DOMAIN NAME
The domain name at issue
is <mercedeshomestexas.com>, registered with Tucows, 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.
Honorable Paul A. Dorf
(Ret.) as Panelist.
Complainant submitted a
Complaint to the National Arbitration Forum (the "Forum")
electronically on January 20, 2003; the Forum received a hard copy of the
Complaint on January 21, 2003.
On January 20, 2003, Tucows,
Inc. confirmed by e-mail to the Forum that the domain name <mercedeshomestexas.com>
is registered with Tucows, Inc. and that Respondent is the current registrant
of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows,
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 January 22, 2003, a
Notification of Complaint and Commencement of Administrative Proceeding (the
"Commencement Notification"), setting a deadline of February 11, 2003
by which Respondent could file a Response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent's registration as technical, administrative and billing contacts,
and to postmaster@mercedeshomestexas.com by e-mail.
Having received no
Response from Respondent, using the same contact details and methods as were
used for the Commencement Notification, the Forum transmitted to the parties a
Notification of Respondent Default.
On February 19, 2003,
pursuant to Complainant's request to have the dispute decided by a
single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) as
Panelist.
Having reviewed the
communications records, the Administrative Panel (the "Panel") finds
that the 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." Therefore, the
Panel may issue its decision based on the documents submitted and in accordance
with the ICANN Policy, ICANN Rules, the 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 <mercedeshomestexas.com>
domain name is confusingly similar to Complainant’s MERCEDES HOMES mark.
2. Respondent does not have
any rights or legitimate interests in the <mercedeshomestexas.com>
domain name.
3. Respondent registered
and used the <mercedeshomestexas.com> domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
owns a registered trademark with the United States Patent and Trademark Office
for the MERCEDES HOMES mark (Reg. No. 2495868). Complainant’s MERCEDES HOMES mark was registered on October 9,
2001.
Complainant
uses the MERCEDES HOMES mark in connection with building construction services,
namely, residential building developments.
Complainant has used the mark in connection with its construction
services since 1985.
Respondent
registered the domain name on December 13, 2002. Respondent uses the domain name to link to a variety of
adult-oriented websites, including <pantyhosecafe.com>,
<neteetimes.net>, <wwffullyloaded.com>, <emuevents.com>,
<ddbras.net>, and <boobs-breasts.com>.
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.
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 has demonstrated its rights in the MERCEDES HOMES mark
through proof of trademark registration with the U. S. Patent and Trademark
Office.
Respondent’s
<mercedeshomestexas.com> domain name incorporates Complainant’s
entire MERCEDES HOMES mark along with the addition of the word “texas.” Consistent precedent has held that the
addition of a geographic qualifier does not sufficiently differentiate a domain
name from the trademark in question. At
present, the MERCEDES HOMES mark remains the dominant feature and is the only
thing in the second level domain capable of identifying a source. Therefore, Respondent’s <mercedeshomestexas.com>
domain name is confusingly similar to Complainant’s mark. See Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000)
(finding that the domain name, <walmartcanada.com> is confusingly similar
to Complainant’s famous mark); see also JVC Americas Corp. v. Macafee,
CPR006 (CPR Nov. 10, 2000) (finding that the domain name registered by
Respondent, <jvc-america.com>, is substantially similar to, and nearly
identical to Complainant's JVC mark).
The Panel
finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent
has not contested Complainant’s allegations, including the allegation that
Respondent has no rights or legitimate interests in the <mercedeshomestexas.com>
domain name. Respondent’s failure to
challenge the Complaint allows the Panel to accept all allegations as true,
absent any evidence to the contrary, and draw all reasonable inferences in
Complainant’s favor. See 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”); see also
Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat.
Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows
all reasonable inferences of fact in the allegations of Complainant to be
deemed true).
Respondent
uses the <mercedeshomestexas.com> domain name to divert to various
websites that contain adult content.
Most of the websites contain pornographic images, including
<pantyhosecafe.com>, <wwffullyloaded.com> and
<boobs-breast.com>. Such use is
presumed to be commercial as Respondent is likely to profit from the increased
hits generated by the disputed domain name.
Respondent’s use of the <mercedeshomestexas.com> domain
name only serves to tarnish Complainant’s MERCEDES HOMES mark and thus
Respondent has no rights or legitimate interests in the domain name pursuant to
Policy ¶ 4(c)(i) or (iii). See Nat’l
Football League Prop., Inc. v. One Sex Entm’t Co., D2000-0118 (WIPO Apr.
17, 2000) (finding that the Respondent had no rights or legitimate interests in
the domain names <chargergirls.com> and <chargergirls.net> where
the Respondent linked these domain names to its pornographic website); see
also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat.
Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the
domain name to confuse and divert Internet traffic is not a legitimate use of
the domain name).
Respondent
has not come forward to present any evidence that would warrant a finding that
Respondent is commonly known by the <mercedeshomestexas.com>
domain name. Respondent is only known
to this Panel as Ricana Pty. Ltd., as gleaned from the WHOIS information. Therefore, Respondent has no rights or
legitimate interests in the <mercedeshomestexas.com> domain name
pursuant to Policy ¶ 4(c)(ii). See
Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23,
2001) (finding that Respondent does not have rights in a domain name when
Respondent is not known by the mark).
Accordingly,
the Panel finds that Respondent has no rights or legitimate interests in the <mercedeshomestexas.com>
domain name and Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s commercial use of the <mercedeshomestexas.com>
domain name to redirect Internet users to adult-oriented websites is likely to
confuse Internet users as to Complainant’s affiliation. The confusion is likely because the <mercedeshomestexas.com>
domain name prominently displays Complainant’s MERCEDES HOMES trademark and
those typing the domain name into a web-browser are presumably searching for
information about Complainant’s home building services, not pornographic
websites. Therefore, Respondent’s
diversionary use of the <mercedeshomestexas.com> domain name represents
bad faith registration and use under Policy ¶ 4(b)(iv). See Geocities v. Geociites.com,
D2000-0326 (WIPO June 19, 2000) (finding bad faith where the Respondent linked
the domain name in question to websites displaying banner advertisements and
pornographic material); see also MatchNet plc. v. MAC Trading,
D2000-0205 (WIPO May 11, 2000) (finding that the association of a confusingly
similar domain name with a pornographic website can constitute bad faith); see
also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000)
(finding that absent contrary evidence, linking the domain names in question to
graphic, adult-oriented websites is evidence of bad faith).
The Panel
finds that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly,
it is Ordered that the <mercedeshomestexas.com> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable
Paul A. Dorf (Ret.) Panelist
Dated: March 4, 2003
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