DaimlerChrysler AG v. Hammond c/o Olu
Hammond
Claim
Number: FA0505000470923
Complainant is DaimlerChrysler AG (“Complainant”),
represented by Jan Zecher of Gleiss Lutz Rechtsanwaelte, Maybachstr. 6, Stuttgart, 70469,
Germany. Respondent is Hammond c/o Olu Hammond (“Respondent”), 805 S. Wheatly, Suite 160, Ridgeland, MS, 39157.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <mercedesbenzpromo.net>, registered with Tucows
Inc.
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.
Complainant
submitted a Complaint to the National Arbitration Forum electronically May 2,
2005; the National Arbitration Forum received a hard copy of the Complaint May
4, 2005.
On
May 2, 2005, Tucows Inc. confirmed by e-mail to the National Arbitration Forum
that the domain name <mercedesbenzpromo.net> is registered with Tucows
Inc. and that Respondent is the current registrant of the name. Tucows Inc.
verified that Respondent is bound by the Tucows Inc. registration agreement and
thereby has agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
May 6, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 26, 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@mercedesbenzpromo.net 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 31, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn
Marks Johnson 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."
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. The domain name that Respondent
registered, <mercedesbenzpromo.net>, is confusingly similar to
Complainant’s MERCEDES BENZ mark.
2. Respondent has no rights to or legitimate
interests in the <mercedesbenzpromo.net> domain name.
3. Respondent registered and used the <mercedesbenzpromo.net>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
DaimlerChrysler AG, is a famous automotive manufacturer known worldwide. In the
past ten years Complainant has sold some 1,000,000 automotive vehicles annually
throughout the world. Complainant has used the MERCEDES BENZ mark in commerce
since 1900 and has spent billions of dollars on advertising and promoting its
MERCEDES BENZ mark internationally.
Complainant
registered the MERCEDES BENZ mark with the United States Patent and Trademark
Office (“USPTO”) (Reg. No. 285,557 issued August 21, 1926).
Respondent
registered the <mercedesbenzpromo.net> domain name August
27, 2004. The disputed domain name does not resolve to an active website and
has not been used by Respondent to market bona fide goods or 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
will draw such inferences as the Panel considers appropriate pursuant to
paragraph 14(b) of the Rules.
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.
Complainant
established using extrinsic proof in this proceeding that it has rights in the
MERCEDES BENZ mark through registration of the mark with the USPTO. 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 domain name
that Respondent registered, <mercedesbenzpromo.net>, is
confusingly similar to Complainant’s MERCEDES BENZ mark. The disputed domain
name <mercedesbenzpromo.net> incorporates Complainant’s MERCEDES
BENZ mark in its entirety and merely adds the generic term “promo.” The
disputed domain name <mercedesbenzpromo.net> deletes the space
between the words of Complainant’s MERCEDES BENZ mark and adds the generic term
“promo” which the Panel assumes was meant to be an abbreviation for
“promotion.” Such changes are not enough to overcome a finding of confusing
similarity pursuant to Policy ¶ 4(a)(i). 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 Tech. Props., Inc. v. Burris, FA 94424
(Nat. Arb. Forum May 9, 2000) (finding that the domain name
<radioshack.net> is identical to Complainant’s mark, RADIO SHACK).
Furthermore, the
addition of the generic top-level domain “.net” is insufficient to negate the
confusing similarity between Respondent’s domain name and Complainant’s mark
pursuant to Policy ¶ 4(a)(i). See Little
Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001)
(finding that <mysticlake.net> is plainly identical to Complainant’s
MYSTIC LAKE trademark and service mark); see also Kabushiki Kaisha Toshiba v. Shan Computers, D2000-0325 (WIPO June
27, 2000) (finding that the domain name <toshiba.net> is identical to
Complainant’s trademark TOSHIBA); see also Nike, Inc. v. Coleman, D2000-1120 (WIPO Nov. 6, 2000) (finding that
the domain name <nike.net> is identical to Complainant’s famous NIKE
mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
established its rights and legitimate interests and alleges that Respondent has
no such rights and interests.
Respondent failed to respond to the Complaint. Thus, the Panel accepts
all reasonable allegations and assertions set forth by Complainant as true and
accurate. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug.
21, 2000) (“Failure of a respondent to come forward to [contest complainant’s
allegations] is tantamount to admitting the truth of complainant’s assertion in
this regard”); see also Vertical Solutions Mgmt., Inc. v. webnet-Mktg., 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).
Complainant
assertion that Respondent has no rights or legitimate interests in the disputed
domain name is sufficient to require Respondent to come forward with proof to
the contrary. Respondent did not submit
a response and therefore has failed to rebut this allegation and the Panel
interprets Respondent’s failure to respond as evidence that Respondent lacks
rights and legitimate interests in the <mercedesbenzpromo.net>
domain name pursuant to Policy ¶ 4(a)(ii). See 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 Bank
of Am. Corp. v. McCall,
FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not
only results in its failure to meet its burden, but also will be viewed as
evidence itself that Respondent lacks rights and legitimate interests in the
disputed domain name.”).
Respondent
registered the <mercedesbenzpromo.net> domain name August 27,
2004, and has not made any use of the disputed domain name. This period of
inactivity is sufficient to establish that Respondent has no rights or
legitimate interests in the domain name pursuant to Policy ¶¶ 4(c)(i) and
(iii). See Vestel Elektronik
Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding
that “merely registering the domain name is not sufficient to establish rights
or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”); see
also Chanel, Inc. v. Heyward,
D2000-1802 (WIPO Feb. 23, 2001) (finding no rights or legitimate interests
where “Respondent registered the domain name and did nothing with it”); see
also Ziegenfelder Co. v. VMH Enter.,
Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a
product or service or develop the site demonstrates that Respondents have not
established any rights or legitimate interests in the domain name).
Furthermore,
nothing in the record indicates that Respondent is either commonly known by the
disputed domain name or authorized to register domain names featuring
Complainant’s famous mark. Thus, the Panel finds that Respondent has not
established rights or legitimate interests in the <mercedesbenzpromo.net>
domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc.
v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in the
respondent’s WHOIS information implies that the respondent is ‘commonly known
by’ the disputed domain name” as one factor in determining that Policy ¶
4(c)(ii) does not apply); see also Compagnie de Saint Gobain
v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests
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 finds
that Policy ¶ 4(a)(ii) has been satisfied.
Complainant
alleges that Respondent acted in bad faith in registering and holding the
disputed domain name. Respondent
registered and used the <mercedesbenzpromo.net> domain name in bad
faith pursuant to Policy ¶ 4(a)(iii) by failing to market any bona fide goods
or services since the date that Respondent registered the domain name.
Respondent’s passive holding of the <mercedesbenzpromo.net> domain
name, which is confusingly similar to Complainant’s MERCEDES BENZ mark,
evidences bad faith. See Compagnie Generale des Matieres Nucleaires v.
Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (holding that, despite
Respondent’s decision to passively hold the disputed domain name, “Respondent
has made its intention clear and the continuing threat hanging over the
Complainant’s head constitutes bad faith use”); see also Caravan Club v. Mrgsale, FA 95314 (Nat.
Arb. Forum Aug. 30, 2000) (finding that Respondent made no use of the domain
name or website that connects with the domain name, and that passive holding of
a domain name permits an inference of registration and use in bad faith); see
also CBS Broad., Inc. v.
LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that given the
long use and fame of Complainant’s mark, Respondent’s conduct is evidence of
bad faith); see also Mondich &
Am. Vintage Wine Biscuits, Inc. v. Brown, D2000-0004 (WIPO Feb. 16, 2000)
(holding that Respondent’s failure to develop its website in a two year period
raises the inference of registration in bad faith); see also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely
holding an infringing domain name without active use can constitute use in bad
faith); see also DCI S.A. v. Link
Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that
Respondent’s passive holding of the domain name satisfies the requirement of ¶
4(a)(iii) of the Policy).
Furthermore,
Respondent registered the <mercedesbenzpromo.net> domain name with
actual or constructive knowledge of Complainant’s rights in the MERCEDES BENZ
mark due to Complainant’s aggressive promotion of the mark in commerce and the
resulting worldwide acclaim.
Registration of a domain name that is confusingly similar to another’s
mark, despite actual or constructive knowledge of another’s rights in the mark,
is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See
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 Digi
Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that
“there is a legal presumption of bad faith, when Respondent reasonably should
have been aware of Complainant’s trademarks, actually or constructively”).
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 <mercedesbenzpromo.net> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 14, 2005
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