DaimlerChrysler AG v. Listings, Live
Claim Number: FA0512000604993
Complainant is DaimlerChrysler AG (“Complainant”), represented by Jan Zecher, of Gleiss Lutz Rechtsanwaelte, Maybachstr.6, Stuttgart, 70469, Germany. Respondent is Listings, Live (“Respondent”), 9822 Park Drive, White Pines, CO 83900.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <mercedes-benz-parts.com>, registered with Network Solutions, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 6, 2005; the National Arbitration Forum received a hard copy of the Complaint on December 12, 2005.
On December 7, 2005, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <mercedes-benz-parts.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 December 14, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 3, 2006 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@mercedes-benz-parts.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 6, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard 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:
Complainant holds several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the MERCEDES BENZ mark, first issued January 21, 1958, in connection with commerce involving automotive vehicles.
Respondent registered the <mercedes-benz-parts.com> domain name on June 16, 2000.
Respondent is using the disputed domain name to redirect Internet users to a commercial website that features contents unrelated to Complainant.
Respondent’s <mercedes-benz-parts.com> domain name is confusingly similar to Complainant’s MERCEDES BENZ mark.
Respondent is not commonly known by the disputed domain name.
Complainant has never consented to Respondent’s use of its mark.
Respondent does not have any rights or legitimate interests in the <mercedes-benz-parts.com> domain name.
Respondent has registered and uses the <mercedes-benz-parts.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name has been registered and is used by Respondent in bad faith.
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. 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 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.”
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:
(i) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Complainant has established rights in the MERCEDES BENZ mark
based on its registration of the mark with the USPTO. See Vivendi Universal
Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11,
2003): “Complainant's federal trademark registrations establish Complainant's
rights in the BLIZZARD mark.” See also Innomed Techs., Inc. v. DRP Servs., FA 221171
(Nat. Arb. Forum Feb. 18, 2004): “Registration of the NASAL-AIRE mark with the
USPTO establishes Complainant's rights in the mark.”
Respondent’s <mercedes-benz-parts.com> domain
name is confusingly similar to Complainant’s MERCEDES BENZ mark pursuant to
Policy ¶ 4(a)(i), as the domain name fully incorporates the mark and merely
adds the generic term “parts,” hyphens, and the generic top-level domain
“.com.” 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 Health Devices Corp. v. Aspen S
T C, FA 158254 (Nat. Arb. Forum July 1, 2003): “[T]he addition of
punctuation marks such as hyphens is irrelevant in the determination of
confusing similarity pursuant to Policy ¶ 4(a)(i).” Further see Nev. State Bank v. Modern Ltd. –
Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003): “It has
been established that the addition of a generic top-level domain is irrelevant
when considering whether a domain name is identical or confusingly similar
under the Policy.”
Thus the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent does not have rights or legitimate interests in the <mercedes-benz-parts.com> domain name. When a complainant establishes a prima facie case pursuant to Policy ¶ 4(a)(ii), the burden shifts to the respondent to prove that it has such rights or legitimate interests. Because of Respondent’s failure to respond to the Complaint, the Panel is entitled to and does infer that Respondent does not have rights or legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000), finding that once the complainant asserts that a respondent does not have 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 or legitimate interests in the domain name; see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000), finding that, in appropriate circumstances, as here, the assertion by a complainant that a respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such rights or legitimate interests do exist; see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000), finding that, by not submitting a response, a respondent fails to invoke any circumstance which could demonstrate its rights or legitimate interests in a domain name.
In addition, Complainant alleges, without contradiction from
Respondent, that Respondent is using the <mercedes-benz-parts.com>
domain name to redirect Internet
users to a commercial website that features content unrelated to Complainant.
The Panel therefore finds that Respondent’s use of a domain name that is
confusingly similar to Complainant’s mark to divert Internet users to a
commercial website unrelated to Complainant does not constitute 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 for example, WeddingChannel.com Inc.
v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003), finding that
a respondent’s use of a disputed domain name to
redirect Internet users to websites unrelated to the complainant’s mark,
websites where the respondent presumably receives a referral fee for each
misdirected Internet user, is not a bona fide offering of goods or
services as contemplated by the Policy; see
also Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb.
Forum Dec. 6, 2003): “Diverting customers, who are looking for products
relating to the famous SEIKO mark, to a website unrelated to the mark is not a
bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it
represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”
Complainant also alleges, and Respondent does not deny, that Complainant never consented to Respondent’s use of its mark in a domain name and that Respondent is not commonly known by the <mercedes-benz-parts.com> domain name. Thus, the Panel concludes that Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000), finding no rights or legitimate interests where a respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name; see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001), finding no rights or legitimate interests because the respondent there was not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use; see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000), finding that a respondent has no rights or legitimate interests in domain names where it is not commonly known by the complainant’s marks and the respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use.
For these reasons, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Under this heading, the Panel determines that Respondent registered and used the disputed domain name in bad faith, under Policy ¶ 4(b)(iv), in using the <mercedes-benz-parts.com> domain name to intentionally attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant as to the source, sponsorship, affiliation or endorsement of its website. See Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000), finding that a respondent contravened Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant's mark to sell the complainant's products); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002), finding that a respondent registered and used a domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using a confusingly similar domain name to attract Internet users to its commercial website.
Moreover, it is evident that Respondent registered the
contested domain name with either actual or constructive knowledge of
Complainant’s rights in the MERCEDES BENZ mark by virtue of Complainant’s prior
registration of that mark with the United States Patent and Trademark
Office. Registration of a confusingly
similar domain name despite such actual or constructive knowledge evidences bad
faith registration and use of the domain name pursuant to Policy ¶
4(a)(iii). See Digi Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb.
Forum Oct. 4, 2002).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that the relief requested must be, and it is, hereby, GRANTED.
Therefore, it is Ordered that the <mercedes-benz-parts.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 16, 2006
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