DaimlerChrysler AG v. Ling Shun Shing
Claim
Number: FA0502000417238
Complainant is DaimlerChrysler AG (“Complainant”),
represented by Jan Zecher, of Gleiss Lutz Rechtsanwaelte,
Maybachstr. 6, 70469, Stuttgart, Germany.
Respondent is Ling Shun Shing (“Respondent”),138
Yi Xue Yuan Road, 200032 Shanghai, P.R. China.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <daimlerchyrsler.com>, registered with Nameking.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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on February
8, 2005; the National Arbitration Forum received a hard copy of the Complaint
on February 14, 2005.
On
February 9, 2005, Nameking.com, Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <daimlerchyrsler.com> is registered
with Nameking.com, Inc. and that Respondent is the current registrant of the
name. Nameking.com, Inc. has verified that Respondent is bound by the Nameking.com,
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
February 17, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
March 9, 2005 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@daimlerchyrsler.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
March 17, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed the
Honorable Charles K. McCotter, Jr. (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." 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 <daimlerchyrsler.com>
domain name is confusingly similar to Complainant’s DAIMLERCHRYSLER mark.
2. Respondent does not have any rights or
legitimate interests in the <daimlerchyrsler.com> domain name.
3. Respondent registered and used the <daimlerchyrsler.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
DaimlerChrysler AG, is a world famous car manufacturer, retailer, and
automotive service provider. In the
last ten years, Complainant and its legal predecessors have sold annually over
1,000,000 automotive vehicles worldwide.
Complainant owns
100% of the shares of its subsidiary DaimlerChrysler China Ltd., incorporated
on January 18, 2001. Complainant’s
subsidiary sells and promotes Complainant’s cars throughout China, which is
Respondent’s purported country of residence.
Complainant
holds a registration for the DAIMLERCHRYSLER mark with the Deutsches Patent und
Markenamt (Reg. No. 39,825,488 with priority of May 7, 1998). In addition, Complainant holds a
registration for the DAIMLERCHRYSLER international trademark with the World
Intellectual Property Organization (No. 707,283 with priority of July 2, 1998),
used for automotive vehicles and claiming protection for, inter alia,
Austria, Benelux, China, Denmark, France, Great Britain, Italy, Norway, Poland,
Portugal, Romania, Russia, Sweden, Switzerland, and Spain.
Complainant has
used the element “Daimler” for automotive vehicles in its business and its
legal predecessors since 1886 and the element “Chrysler” since 1924.
Respondent
registered the <daimlerchyrsler.com> domain name on September 19,
2002. Respondent is using the disputed
domain name to redirect Internet users to a website entitled, “What you need,
when you need it.” In addition, the
website provides various links for vehicles and automotive-related resources
that are in competition with Complainant’s goods and services. Respondent presumably commercially benefits
by receiving pay-per-click fees from advertisers when Internet users follow the
links on the website located at the disputed domain name.
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
provided extrinsic evidence that it holds trademark registrations for the
DAIMLERCHRYSLER mark with the Deutsches Patent und Markenamt and the World
Intellectual Property Organization, respectively. In addition, Complainant established that it has rights in the
terms “Daimler” and “Chrysler” through continued use of them in commerce over
the last one hundred nineteen and eighty-one years, respectively. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption.); see also Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct.
18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not require complainant to
demonstrate ‘exclusive rights,’ but only that complainant has a bona fide basis
for making the Complaint in the first place).
Respondent’s <daimlerchyrsler.com>
domain name is confusingly similar to Complainant’s DAIMLERCHRYSLER mark
because the domain name incorporates the mark and simply transposes the “r” and
“y” and merely adds the generic top-level domain (“gTLD”) “.com.” The transposition of two letters and the
addition of a gTLD does not distinguish Respondent’s domain name from
Complainant’s marks. Thus, the Panel
concludes that Respondent’s minor alterations to Complainant’s marks is not
sufficient to differentiate Respondent’s domain name from Complainant’s marks
pursuant to Policy ¶ 4(a)(i). See
Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1146 (9th Cir.
2002) (“Internet users searching for a company’s Web site often assume, as a
rule of thumb, that the domain name of a particular company will be the company
name or trademark followed by ‘.com.’”); see also Elder Mfg. Co., Inc. v. Recker, FA 98414 (Nat. Arb. Forum Sept. 10,
2001) (“In the matter at bar it is beyond refute that Respondent’s domain names
are virtually identical, and thus confusingly similar to Elder’s trademarks.
Any superficial differences between the domain names and the Elder trademarks
are de minimis and of no legal consequence”); see also VeriSign, Inc. v. VeneSign C.A.,
D2000-0303 (WIPO June 28, 2000) (finding that the pronunciation and spelling
between the domain name <venesign.com> and Complainant’s mark, VERISIGN,
are so close that confusion can arise in the mind of the consumer); see also
Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding
<googel.com> to be confusingly similar to Complainant’s GOOGLE mark and
noting that “[t]he transposition of two letters does not create a distinct mark
capable of overcoming a claim of confusing similarity, as the result reflects a
very probable typographical error”).
The Panel finds
that Complainant satisfied Policy ¶ 4(a)(i).
Respondent
failed to contest Complainant’s assertion that Respondent lacks rights and
legitimate interests in the disputed domain name. Because Complainant’s evidence and arguments are unopposed, the
Panel is permitted to accept all reasonable inferences made in the Complaint as
true. 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 Bayerische Motoren Werke AG v. Bavarian AG,
FA 110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a
Response the Panel is free to make inferences from the very failure to respond
and assign greater weight to certain circumstances than it might otherwise do);
see also Desotec N.V. v. Jacobi
Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to
respond allows a presumption that complainant’s allegations are true unless
clearly contradicted by the evidence).
Additionally,
Complainant has submitted a prima facie case to the Panel that
Respondent lacks rights and legitimate interests in the domain name, thereby
shifting the burden to Respondent.
Respondent’s failure to fulfill its burden means that Respondent has
failed to invoke any circumstances that could demonstrate rights or legitimate
interests in the domain name. See Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000)
(finding that once complainant asserts that respondent has no rights or
legitimate interests with respect to the domain, the burden shifts to
respondent to provide credible evidence that substantiates its claim of rights
and legitimate interests in the domain name); see also Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response,
respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name); see also Geocities v. Geociites.com, D2000-0326
(WIPO June 19, 2000) (finding that respondent has no rights or legitimate
interests in the domain name because respondent never submitted a response or
provided the Panel with evidence to suggest otherwise).
Respondent is
not authorized or licensed by Complainant to use the DAIMLERCHRYSLER mark in
the domain name. Moreover, no evidence
before the Panel suggests that Respondent is commonly known by the domain name
pursuant to Policy ¶ 4(c)(ii).
Therefore, Respondent has no rights or legitimate interests in the
domain name pursuant 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 Compagnie
de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000)
(finding no rights or legitimate interests where respondent was not commonly
known by the mark and never applied for a license or permission from
complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests
where (1) respondent is not a licensee of complainant; (2) complainant’s rights
in the mark precede respondent’s registration; (3) respondent is not commonly
known by the domain name in question).
Respondent’s use
of the infringing domain name to offer and advertise vehicles and
automotive-related resources, which are similar to goods and services that
Complainant offers, is not a bona fide offering of goods or services pursuant
to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iii). See TM
Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec.
31, 2002) (finding that respondent’s diversionary use of complainant’s marks to
send Internet users to a website which displayed a series of links, some of
which linked to competitors of complainant, was not a bona fide offering of goods
or services); see also Computer
Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum
Sept. 8, 2000) (finding that respondent’s website, which is blank but for links
to other websites, is not a legitimate use of the domain names); see also
Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23,
2003) (holding that respondent’s appropriation of complainant’s mark to market
products that compete with complainant’s goods does not constitute a bona fide
offering of goods and services).
The Panel finds
that Complainant satisfied Policy ¶ 4(a)(ii).
Respondent’s
registration of the disputed domain name, a domain name that incorporates
Complainant’s mark and deviates only with the transposition of two letters and
the addition of a gTLD, suggests that Respondent knew of Complainant’s rights
in the DAIMLERCHRYSLER mark. Moreover,
the Panel infers that Respondent had actual knowledge of Complainant’s rights
in the mark due to the obvious connection between the content advertised on
Respondent’s website and Complainant’s business. Thus, the Panel concludes that Respondent chose the <daimlerchyrsler.com>
domain name based on its knowledge of Complainant’s
mark, and thus registered and used the domain name in bad faith pursuant to
Policy ¶ 4(a)(iii). See Digi
Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002)
(“[T]here is a legal presumption of bad faith, when Respondent reasonably
should have been aware of Complainant’s trademarks, actually or
constructively”); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135,
1148 (9th
Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be
similar to another, one can infer an intent to confuse"); see also Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Pfizer, Inc. v. Papol Suger, D2002-0187 (WIPO
Apr. 24, 2002) (finding that because the link between complainant’s mark and
the content advertised on respondent’s website was obvious, respondent “must
have known about the complainant’s mark when it registered the subject domain
name”).
Respondent is
using the <daimlerchyrsler.com> domain name to advertise and offer
vehicles and automotive-related resources.
Complainant’s business manufactures and sells automobiles and offers
automotive-related products and services.
The Panel finds that, by creating confusion around Complainant’s
DAIMLERCHRYSLER mark, Respondent is attempting to disrupt the business of a
competitor. Respondent’s use of a
domain name that is confusingly similar to Complainant’s mark to sell goods and
services similar to those offered by Complainant is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) (finding respondent acted in bad faith by attracting
Internet users to a website that competes with complainant’s business); see
also EthnicGrocer.com, Inc. v.
Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation
from complainant's marks suggests that respondent, complainant’s competitor,
registered the names primarily for the purpose of disrupting complainant's
business).
Respondent
registered and used the <daimlerchyrsler.com> domain name in bad
faith pursuant to Policy ¶ 4(b)(iv).
Specifically, uncontested evidence indicates that the subject domain
name earns referral fee revenue for Respondent through click-through
advertising. Thus, the Panel infers
that Respondent commercially benefits from its use of Complainant’s
DAIMLERCHRYSLER mark in the domain name.
See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002)
(finding that if respondent profits from its diversionary use of complainant's
mark when the domain name resolves to commercial websites and respondent fails
to contest the Complaint, it may be concluded that respondent is using the
domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli,
FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where respondent
directed Internet users seeking complainant’s site to its own website for
commercial gain); see also H-D Michigan, Inc. v. Petersons Auto., FA
135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name
was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through
respondent’s registration and use of the infringing domain name to
intentionally attempt to attract Internet users to its fraudulent website by
using complainant’s famous marks and likeness).
The Panel finds
that Complainant satisfied Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <daimlerchyrsler.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
March 31, 2005
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