DaimlerChrysler AG v. Claudio Mastrillo
Claim Number.: FA0509000562834
Complainant is DaimlerChrysler
AG (“Complainant”), D-70546 Stuttgart, represented by RA
Dr. Jan Zecher, Gleiss
Lutz Rechtsanwaelte, Maybachstr.
6, D-70469 Stuttgart.
Respondent is Claudio Mastrillo (“Respondent”), Bulzingen 120, D-78604
Rietheim-Weilheim.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <daimler-chrysler.org>,
registered with Schlund + Partner AG (“Registrar”), Brauerstraße 48, D-76135 Karlsruhe.
PANEL
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.
Dr. Reinhard Schanda, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on September 16, 2005; the National Arbitration Forum received a
hard copy of the Complaint on September 23, 2005.
On September 16, 2005, the Registrar informed the National
Arbitration Forum by email that the domain name at issue is currently
registered with them under Respondent’s
name and that Respondent is bound by the registration agreement and has
thereby agreed to resolve domain-name disputes brought by third parties in
accordance with the Uniform Domain Name
Dispute Resolution Policy (the “Policy”). Registrar’s email to the National Arbitration Forum also included
the current WHOIS entry for the <daimler-chrysler.org> domain name
and informed the National Arbitration Forum that the language of the
registration agreement is German.
On September 29, 2005, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of October 19, 2005 by which
Respondent could file a response to the Complaint, was transmitted to
Respondent via email. Respondent was
also informed of consequences arising from no reply.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
Pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dr. Reinhard Schanda as Panelist.
Complainant requests that the domain name be transferred from
Respondent to Complainant.
FINDINGS
A. Complainant
It is apparent from documents provided by Complainant that the
Complainant is the owner of the following registered trademarks:
·
German
trademark No. 39825488 “DAIMLERCHRYSLER” with
priority of May 7, 1998, registered and used for, inter alia, vehicles
and jewelry;
·
International
trademark No. 707283 “DAIMLERCHRYSLER” with priority of July 2, 1998,
registered and used, inter alia, for vehicles and jewelry and claiming
protection for, inter alia, Austria, Benelux, China, Denmark, France,
Great Britain, Italy, Norway, Poland, Portugal, Rumania, Russia, Sweden,
Switzerland and Spain;
·
U.S. trademark
No. 2784572 “DAIMLERCHRYSLER” with priority of June 17, 1998, registered and
used for, inter alia, vehicles;
·
U.S. trademark
No. 26440906 “DAIMLERCHRYSLER” with priority of November 6, 1998, registered
and used for, inter alia, watches and accessories.
B. Respondent
Respondent registered the <daimler-chrysler.org> domain
name on November 18, 2002. At this domain name, at least on May 12, 2005 and
probably for a longer time period, jewelry was offered for sale on eBay. The
email address webmaster@mastrillo.com was provided on this website for further
questions. At this time, an error message appears at the domain name.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant contends that the trademark “DAIMLERCHRYSLER” is famous all
over the world. The component “DAIMLER” has been used by the Complainant and
Complainant’s legal predecessors since the year 1886 for motor vehicles; the element
“CHRYSLER” since the year 1924. In the last ten years, Complainant and
Complainant’s legal predecessors have sold over one million motor vehicles
annually worldwide. In that same time, Complainant has spent billions of
dollars to advertise its motor vehicles in a broad spectrum of media including
print, radio, television and Internet. The “DAIMLERCHRYSLER” trademark enjoys
worldwide recognition.
Complainant also contends that the <daimler-chrysler.org>
domain name is identical or confusingly similar to trademarks that belong to
the Complainant, that the Respondent has no right or legitimate interest in the
disputed domain name and that the registration and use of the domain name
contradicts use in good faith. This contention is supported, inter alia,
by excerpts from diverse trademark law databases, according to which the
Complainant is owner of the “DAIMLERCHRYSLER” trademark, which is registered
and protected in many countries. These trademarks lay claim to and protect
various goods and services in connection with motor vehicles as well as
jewelry, watches, and accessories.
Respondent has no rights nor legitimate interests with respect to the
disputed domain name. Neither has Respondent used the domain name before
notice of the dispute for a bona fide offering of goods or
services, nor has he been commonly known by the domain name, nor has he made a
legitimate noncommercial or fair use of the domain name. A partner of the Complainant attests in a
sworn affidavit that the Complainant never had a business relationship
with nor did it even know about Respondent or instructed or authorized
Respondent to register the disputed domain name.
A search of diverse trademark registries produced no trademarks
belonging to the Respondent. This fact enables conclusion of the first rank,
that the Respondent has neither rights nor legitimate interests in the disputed
domain name. The domain was primarily used for the advertising of silver jewelry,
which the Respondent offered for sale on the Internet auction platform eBay.
The URL “www.daimler-chrysler.org”
resolved to a website that displayed, at least on May 12, 2005, a link with the
title “Jewelry on Ebay.” Clicking on this link rerouted the User to
Respondent’s auctions on eBay.
B.
Respondent
Respondent failed to file a response to the Complaint. 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 and draw such inferences it considers appropriate pursuant to
Paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable
allegations and inferences set forth in the Complaint as true unless the
evidence is clearly contradictory.
DISCUSSION
Paragraph 15 (a) of the Rules for Uniform Domain Name Dispute Resolution
Policy (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 the 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.
Ad. 1 Identical
and/or Confusingly Similar.
The <daimler-chrysler.org> domain name is not identical to
the “DAIMLERCHRYSLER” trademark
multiply registered by the
Complainant; however, the component “.org” is irrelevant to the
evaluation of the likelihood of confusion between domain names and trademarks
and is thereby discounted.
The fact that the “DAIMLERCHRYSLER” trademark is written
in capital letters, whereas the disputed domain name is written in lowercase
letters, is likewise irrelevant because entering the domain name in capital
letters also takes one directly to Respondent’s website.
The “DAIMLERCHRYSLER” trademark contains no hyphen, whereas the
“daimler-chrysler” component of the disputed domain name is
written with a hyphen between “daimler” and “chrysler.” The addition of a hyphen to a domain name that is otherwise identical
to a trademark is insufficient to make the domain name distinctive.
Thus there exists a likelihood of confusion of the disputed domain name
with Complainant’s registered trademarks.
Ad. 2 Rights or
Legitimate Interests.
Respondent is neither a representative nor a licensed party of the
Complainant. It is also to be inferred that the Respondent did not use the
domain name, i.e., the term “daimler-chrysler,” before notice of the dispute for a bona fide offering
of goods or services nor demonstrably prepared for such use.
The Respondent has not acquired the appropriate trademarks or service
marks nor has he been commonly known by the domain name;
specifically, his last name is neither Daimler nor Chrysler.
Furthermore, it is not apparent that the Respondent used the domain
name in a legitimate, non-commercial, or otherwise creditable manner without
intention to realize profits and without intention to divert users from a
competitor or to disparage the trademark at issue. On the contrary, Complainant
contends that the Respondent intentionally used the name daimler-chrysler.org
in order to redirect users to his silver jewelry auctions on eBay. The fact
that the Respondent currently conducts no activities of his own under the
daimler-chrysler.org domain name is a further indication that he has no
legitimate interest in the use of the domain name.
In view of the Respondent’s failure to supply contentions and pursuant
to Complainant’s request, the Panel decides that the Respondent has no rights
or legitimate interests in the <daimler-chrysler.org> domain name.
Ad. 3 Registration
and Use in Bad Faith
In order for a complaint to be successful, the Panel must be convinced
that the domain name was not only registered in bad faith but also used in bad
faith for the entire time period.
Pursuant to Paragraph 4 (b) of the Policy, the Panel has investigated
whether the Respondent registered the domain name with the intention to sell
the rights to the Complainant or Complainant’s competitors, to license it, or
to otherwise transfer it for monetary gain. The Panel was unable to
definitively ascertain such conditions nor can they be decisively ruled out.
Pursuant to Paragraph 4 (a) (iii) of the Policy, because the Respondent
is a natural person it can be assumed that the Respondent did not register the
domain name with the intention to hinder the business of a competitor.
The Panel must determine whether the Respondent actually registered the
domain name with intent to prevent the owner of a service mark from reproducing
the corresponding domain name or if the Respondent willingly and with intent to
realize profit used the domain name to attract Internet users to Respondent’s
website, thereby deceiving Internet users in
regard to the source or affiliation of the domain name.
Respondent did not attempt to sell the domain name to the Complainant.
Respondent did, however, use the domain name in a manner considered in bad
faith and which simultaneously indicates that the domain name was also
registered in bad faith. It is inconceivable that the Respondent can use the
domain name at issue in such a way and manner that does not elicit the false
impression of an association with the Complainant. The Panel assumes that the
“DAIMLERCHRYSLER” trademark was known to the Respondent at the
time of registration. This impression was strengthened by materials provided by
Complainant, according to which the Respondent had also registered the domain
name “Maybach-Center.de” among others.
In view of the widespread fame of the term DaimlerChrysler, the Panel
assumes that the Respondent was familiar with the “DAIMLERCHRYSLER” trademark when he registered the <daimler-chrysler.org>
domain name. The panel considers Attachment 5 provided by Complainant as key
evidence that the domain name was used in bad faith.
The Panel is therefore convinced that, pursuant to Paragraph 4(b) (iv)
of the Policy, the Respondent registered the <daimler-chrysler.org>
domain name with the intent to attract Internet users to Respondent’s website
for commercial gain, thereby deceiving Internet users in regard to the source or affiliation of the domain name.
DECISION
In accordance with Paragraph 4 (i) of the Policy and Paragraph 15 of
the Rules, the Panel orders that the <daimler-chrysler.org> domain
name be transferred from Respondent to Complainant.
Dr. Reinhard Schanda,
Panelist
Dated: November 9, 2005
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