DaimlerChrysler Corporation v. Asia
Ventures, Inc.
Claim
Number: FA0504000453735
Complainant is DaimlerChrysler Corporation (“Complainant”),
represented by George T. Schooff, 5445 Corporate Drive, Suite 400,
Troy, MI 48098. Respondent is Asia Ventures, Inc. (“Respondent”), GPO
11136, Central, 0000, HK.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <chryslercorporation.com>, registered with
The Registry At Info Avenue d/b/a IA Registry.
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.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on April
7, 2005; the National Arbitration Forum received a hard copy of the Complaint
on April 8, 2005.
On
April 14, 2005, The Registry At Info Avenue d/b/a IA Registry confirmed by e-mail
to the National Arbitration Forum that the domain name <chryslercorporation.com>
is registered with The Registry At Info Avenue d/b/a IA Registry and that
Respondent is the current registrant of the name. The Registry At Info Avenue d/b/a IA Registry has verified that
Respondent is bound by the The Registry At Info Avenue d/b/a IA Registry 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
April 15, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 5, 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@chryslercorporation.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
May 11, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Sandra Franklin
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 <chryslercorporation.com>
domain name is confusingly similar to Complainant’s CHRYSLER mark.
2. Respondent does not have any rights or
legitimate interests in the <chryslercorporation.com> domain name.
3. Respondent registered and used the <chryslercorporation.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, DaimlerChrysler Corporation, is in the
business of producing automobiles and their structural parts, servicing
automobiles, and providing automotive financing services.
Complainant
holds numerous registrations with the United States Patent and Trademark Office
for the CHRYSLER mark (Reg. No. 2,357,408 issued June 13, 2000; Reg. No.
1,263,266 issued January 3, 1984; and 1,513,942 issued November 22, 1988).
Respondent registered the <chryslercorporation.com> domain name March 19, 2003. Respondent is using the disputed domain name
to divert Internet users to a website displaying links to various webpages
related to automobiles, car loans, financial services and numerous other goods
and services.
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
established with extrinsic proof in this proceeding that it has rights in the
CHRYSLER mark through registration with the United States Patent and Trademark
Office. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb.
Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a
presumption that they are inherently distinctive and have acquired secondary
meaning.”); see also 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. The respondent has the burden of refuting this assumption).
The <chryslercorporation.com>
domain name that Respondent registered is confusingly similar to Complainant’s
CHRYSLER mark because the domain name incorporates Complainant’s mark in its
entirety, adding only the generic or descriptive term “Corporation” and the
generic top-level domain (gTLD) “.com.”
The addition of a generic or descriptive term and a gTLD to
Complainant’s registered mark is insufficient to distinguish a confusingly
similar domain name. See Arthur
Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar.
23, 2001) (finding confusing similarity where the domain name in dispute
contains the identical mark of the complainant combined with a generic word or
term); see also Sony Kabushiki
Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that
“[n]either the addition of an ordinary descriptive
word . . . nor the suffix ‘.com’ detract from the overall
impression of the dominant part of the name in each case, namely the trademark
SONY” and thus Policy ¶ 4(a)(i) is satisfied); 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).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
alleges that Respondent has no rights to or legitimate interests in the <chryslercorporation.com>
domain name, which includes Complainant’s CHRYSLER mark in its entirety. When Complainant has made a prima facie
case in support of its allegations, the burden shifts to Respondent to show
that it does have rights or legitimate interests pursuant to Policy ¶
4(a)(ii). Since Respondent has not
responded to the Complaint, the Panel assumes that Respondent does not have
rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where the complainant
has asserted that the respondent has no rights or legitimate interests with
respect to the domain name it is incumbent on the respondent to come forward
with concrete evidence rebutting this assertion because this information is
“uniquely within the knowledge and control of the respondent”); see also
Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000)
(finding that once the complainant asserts that the respondent has no rights or
legitimate interests with respect to the domain, the burden shifts to the
respondent to provide credible evidence that substantiates its claim of rights
and legitimate interests in the domain name); see also Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure
to respond can be construed as an admission that they have no legitimate
interest in the domain names).
Furthermore,
since Complainant made the prima facie showing and Respondent failed to
respond, the Panel is entitled to accept all reasonable allegations and inferences
in the Complaint as true. 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 Ziegenfelder Co.
v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (drawing two
inferences based on the respondent’s failure to respond: (1) The respondent
does not deny the facts asserted by complainant, and (2) The respondent does
not deny conclusions which complainant asserts can be drawn from the facts).
Respondent is
using the <chryslercorporation.com> domain name to divert Internet
users to a website displaying links to various webpages related to automobiles,
car loans, financial services and numerous other goods and services, presumably
with the purpose of earning a commission or pay-per-click referral fee. The Panel finds that Respondent’s use of a
domain name that is confusingly similar to Complainant’s registered mark to
redirect Internet users interested in Complainant’s products and services to a
website containing links to websites that offer similar products and services
is not in connection with a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair
use pursuant to Policy ¶ 4(c)(iii). See
Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17,
2003) (finding that the respondent’s diversionary use of the complainant’s mark
to attract Internet users to its own website, which contained a series of
hyperlinks to unrelated websites, was neither a bona fide offering of
goods or services nor a legitimate noncommercial or fair use of the disputed
domain names); see also Black & Decker Corp. v. Clinical
Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the
respondent’s use of the disputed domain name to redirect Internet users to
commercial websites, unrelated to the complainant and presumably with the
purpose of earning a commission or pay-per-click referral fee did not evidence
rights or legitimate interests in the domain name); see also Computer Doctor Franchise Sys., Inc. v.
Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the
respondent’s website, which is blank but for links to other websites, is not a
legitimate use of the domain names).
Nothing in the
record suggests that Respondent is commonly known by the <chryslercorporation.com>
domain name and Respondent has provided no evidence to prove that it was
commonly known by the disputed domain name.
Therefore, the Panel finds that Respondent has not established rights to
or legitimate interests in the disputed 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 Broadcom Corp. v. Intellifone
Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or
legitimate interests because the respondent is not commonly known by the
disputed domain name or using the domain name in connection with a legitimate
or fair use).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <chryslercorporation.com> domain name to attract
Internet users seeking goods and services under Complainant’s CHRYSLER mark to
Respondent’s commercial website by creating a likelihood of confusion between
Complainant’s registered mark and the content of Respondent’s website. Respondent presumably earns pay-per-click
fees for this website. The Panel finds
that Respondent’s practice of diversion for commercial gain is evidence of bad
faith registration and use pursuant to Policy ¶ 4(b)(iv). See 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 the respondent’s registration and use of the infringing domain name to
intentionally attempt to attract Internet users to its fraudulent website by
using the complainant’s famous marks and likeness); see also G.D.
Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21,
2002) (finding that the respondent registered and used the domain name in bad
faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the
confusingly similar domain name to attract Internet users to its commercial
website); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov.
22, 2002) (finding that if the respondent profits from its diversionary use of
the complainant's mark when the domain name resolves to commercial websites and
the respondent fails to contest the complaint, it may be concluded that the
respondent is using the domain name in bad faith pursuant to Policy ¶
4(b)(iv)).
Furthermore,
while each of the four circumstances listed under Policy ¶ 4(b), if proven,
evidences bad faith use and registration of a domain name, additional factors
can also be used to support findings of bad faith registration and use. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb.
Forum May 18, 2000) (finding that in determining if a domain name has been
registered in bad faith, the Panel must look at the “totality of
circumstances”); see also Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph
4(b) are intended to be illustrative, rather than exclusive.”).
Respondent’s
registration of the <chryslercorporation.com> domain name, which
incorporates Complainant’s CHRYSLER mark in its entirety, adding only a generic
or descriptive term, suggests that Respondent knew of Complainant’s rights in
the CHRYSLER mark. The disputed domain
name registered by Respondent leads Internet users to a website offering
services similar to Complainant’s products and services. Therefore, the Panel concludes that
Respondent chose the <chryslercorporation.com> domain name based
on the distinctive and well-known qualities of Complainant’s mark. 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 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
Exxon Mobil Corp. v. Fisher,
D2000-1412 (WIPO Dec. 18. 2000) (finding that the respondent had actual and
constructive knowledge of the complainant’s EXXON mark given the worldwide
prominence of the mark and thus the respondent registered the domain name in
bad faith).
The Panel finds
that 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 <chryslercorporation.com> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
May 17, 2005
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