DaimlerChrysler AG v. Digi Real Estate Foundation
Claim Number: FA0606000724594
Complainant is DaimlerChrysler AG (“Complainant”), represented by Jan Zecher, of Gleiss Lutz Rechtsanwaelte, Maybachstr. 6, Stuttgart, Germany 70469. Respondent is Digi Real Estate Foundation (“Respondent”), P.O. Box 7-5324, Panama City N7 8DJ, PA.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <chrysleer.com> and <mercedesbendz.com> registered with Batdomains.com Inc.; <chryslerconquest.com> registered with Entertainment Names, Incorporated; <chryslerfinancia.com> registered with Mobile Name Services, Inc.; <chrysller.com> registered with Csiregistry.com, Inc.; <mercadesbens.com> registered with Register.com; <mercadiesbenz.com> registered with Whiteglove Domains, Inc.; <mercedessbenz.com>, <mercedebenz.com>and <mercedezs.com> registered with Enom, Inc.; <mercediesbenz.com> registered with Dotspeedy Llc d/b/a Dotspeedy.com; <mercedesbenez.com> registered with Dynanames.com, Inc.; <mercedebens.com> registered with Codycorp.com, 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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 2, 2006; the National Arbitration Forum received a hard copy of the Complaint on June 9, 2006.
On June 2, 2006 Enom, Inc., confirmed by email to the National Arbitration Forum that the <mercedessbenz.com>, <mercedezs.com> and <mercedebenz.com> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, 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 June 2, 2006 Dotspeedy Llc d/b/a Dotspeedy.com, confirmed by email to the National Arbitration Forum that the <mercediesbenz.com> domain name is registered with Dotspeedy Llc d/b/a Dotspeedy.com and that Respondent is the current registrant of the name. Dotspeedy Llc d/b/a Dotspeedy.com has verified that Respondent is bound by the Dotspeedy Llc d/b/a Dotspeedy.com 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 June 2, 2006 Entertainment Names, Incorporated, confirmed by email to the National Arbitration Forum that the <chryslerconquest.com> domain name is registered with Entertainment Names, Incorporated and that Respondent is the current registrant of the name. Entertainment Names, Incorporated has verified that Respondent is bound by the Entertainment Names, Incorporated 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 June 2, 2006 Register.com, confirmed by email to the National Arbitration Forum that the <mercadesbens.com> domain name is registered with Register.com and that Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com 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 June 2, 2006 Whiteglove Domains, Inc., confirmed by email to the National Arbitration Forum that the <mercadiesbenz.com> domain name is registered with Whiteglove Domains, Inc. and that Respondent is the current registrant of the name. Whiteglove Domains, Inc. has verified that Respondent is bound by the Whiteglove Domains, 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 June 2, 2006 Mobile Name Services, Inc., confirmed by email to the National Arbitration Forum that the <chryslerfinancia.com> domain name is registered with Mobile Name Services, Inc. and that Respondent is the current registrant of the name. Mobile Name Services, Inc. has verified that Respondent is bound by the Mobile Name Services, 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 June 5, 2006 Dynanames.com, Inc., confirmed by email to the National Arbitration Forum that the <mercedesbenez.com> domain name is registered with Dynanames.com, Inc. and that Respondent is the current registrant of the name. Dynanames.com, Inc. has verified that Respondent is bound by the Dynanames.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 June 5, 2006 Batdomains.com, Inc., confirmed by email to the National Arbitration Forum that the <mercedesbendz.com> and <chrysleer.com> domain names are registered with Batdomains.com, Inc. and that Respondent is the current registrant of the names. Batdomains.com, Inc.has verified that Respondent is bound by the Batdomains.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 June 7, 2006 Codycorp.com, Inc., confirmed by email to the National Arbitration Forum that the <mercedebens.com> domain name is registered with Codycorp.com, Inc. and that Respondent is the current registrant of the name. Codycorp.com, Inc. has verified that Respondent is bound by the Codycorp.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 June 7, 2006 Csiregistry.com, Inc., confirmed by email to the National Arbitration Forum that the < chrysller.com > domain name is registered with Csiregistry.com, Inc. and that Respondent is the current registrant of the name. Csiregistry.com, Inc. has verified that Respondent is bound by the Csiregistry.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 June 14, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 05, 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@chrysleer.com, postmaster@chryslerconquest.com, postmaster@chryslerfinancia.com, postmaster@chrysller.com, postmaster@mercadesbens.com, postmaster@mercadiesbenz.com, postmaster@mercedebens.com, postmaster@mercedebenz.com, postmaster@mercedesbendz.com, postmaster@mercedesbenez.com, postmaster@mercedessbenz.com, postmaster@mercedezs.com and postmaster@mercediesbenz.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 12, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <chrysleer.com>, <chryslerconquest.com>, <chryslerfinancia.com>, <chrysller.com>, <mercadesbens.com>, <mercadiesbenz.com>, <mercedebens.com>, <mercedebenz.com>, <mercedesbendz.com>, <mercedesbenez.com>, <mercedessbenz.com>, <mercedezs.com> and <mercediesbenz.com> domain names are confusingly similar to Complainant’s CHRYSLER, MERCEDES and MERCEDES-BENZ marks.
2. Respondent does not have any rights or legitimate interests in the <chrysleer.com>, <chryslerconquest.com>, <chryslerfinancia.com>, <chrysller.com>, <mercadesbens.com>, <mercadiesbenz.com>, <mercedebens.com>, <mercedebenz.com>, <mercedesbendz.com>, <mercedesbenez.com>, <mercedessbenz.com>, <mercedezs.com> and <mercediesbenz.com> domain names.
3. Respondent registered and used the <chrysleer.com>, <chryslerconquest.com>, <chryslerfinancia.com>, <chrysller.com>, <mercadesbens.com>, <mercadiesbenz.com>, <mercedebens.com>, <mercedebenz.com>, <mercedesbendz.com>, <mercedesbenez.com>, <mercedessbenz.com>, <mercedezs.com> and <mercediesbenz.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, DaimlerChrysler AG, holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the CHRYSLER (Reg. No. 428,619 issued June 10, 1946), MERCEDES-BENZ (Reg. No. 657, 386 issued February 5, 1957) and MERCEDES (Reg. No. 41,127 issued October 20, 1902) marks. Complainant uses its CHRYSLER, MERCEDES-BENZ and MERCEDES marks internationally in connections with the sale and service of automobiles.
Respondent registered the <chrysleer.com> domain name on October 1, 2005, the <chryslerconquest.com> domain name on October 20, 2005, the <chryslerfinancia.com> domain name on November 9, 2005, the <chrysller.com> domain name on October 1, 2005, the <mercadesbens.com> domain name on October 11, 2005, the <mercadiesbenz.com> domain name on December 1, 2005, the <mercedebens.com> domain name on October 11, 2005, the <mercedebenz.com> domain name on February 27, 2005, the <mercedesbendz.com> domain name on October 2, 2005, the <mercedesbenez.com> domain name on October 11, 2005, the <mercedessbenz.com> domain name on November 14, 2005, the <mercedezs.com> domain name on October 11, 2005 and the <mercediesbenz.com> October 2, 2005. Respondent is using the disputed domain names to redirect users to Respondent’s websites, which feature generic Internet search engines and links to third-party websites, including links to competing automobile related goods and services. Presumably, Respondent recieves referral fees from the search engine and third-party links.
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:
(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 established rights in the CHRYSLER, MERCEDES-BENZ and MERCEDES marks sufficient to satisfy Policy ¶ 4(a)(i) through registration of the marks with the USPTO. See 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.”), see also 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.”).
Respondent’s <chrysleer.com> and <chrysller.com>
domain names are confusingly similar to Complainant’s CHRYSLER mark. Respondent’s domain names are common
misspellings of Complainant’s CHRYSLER mark, employing mistakes Internet users
might make when trying to type Complainant’s mark in order to create domain
names.
Respondent’s <chryslerconquest.com> and <chryslerfinancia.com>
domain names are confusingly similar to Complainant’s CHRYSLER mark. Respondent’s domain names incorporate Complainant’s
CHRYSLER mark in its entirety adding the term “conquest” and the misspelled
term “financia.” The term “conquest” is
the name of a car produced by Complainant in the 1980’s and the misspelled term
“financia” appears to be a misspelling of the term “financial.” Both terms describe Complainant’s business,
one referring to a good produced by Complainaint and the other referring to the
financial services offered by Complainant in connection with the sale of automobiles.
Respondent’s <mercadesbens.com>,
<mercadiesbenz.com>, <mercedebens.com>, <mercedebenz.com>,
<mercedesbendz.com>, <mercedesbenez.com>, <mercedessbenz.com>
and <mercediesbenz.com> domain names are confusingly similar to
Complainant’s MERCEDES-BENZ mark.
Respondent’s domain names are examples of common misspellings and typos
of Complainant’s MERCEDES-BENZ mark.
Respondent’s <mercedezs.com> domain name is confusingly
similar to Complainant’s MERCEDES mark.
Respondent’s domain name is a common misspelling of Complainant’s
MERCEDES mark.
The Panel finds that such minor alterations and additions to Complainant’s marks, such as common misspellings of a mark or the addition of a descriptive term to a mark, do not overcome the confusing simularity between Respondent’s disputed domain names and Complainant’s marks pursuant to Policy ¶ 4(a)(i). See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that the domain names <beanybaby.com>, <beaniesbabies.com>, <beanybabies.com> are confusingly similar to the complainant’s mark BEANIE BABIES); see also Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights or legitimate interests in the disputed domain names. Complainant’s assertion creates a prima facie case and shifts the burden to Respondent to prove that it does have rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). In furtherance of this burden, Respondent may provide a Response, and the Panel may view the absence of a Response as evidence that Respondent lacks rights or legitimate interest in the disputed domain names. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). In light of Respondent’s failure to respond, the Panel will examine the available evidence to determine whether or not Respondent has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c).
Respondent is using the disputed domain names to redirect Internet users to Respondent’s websites, which feature generic Internet search engines and links to third-party websites, some of which offer automobile goods and services in competition with Complainant. Presumably, Respondent receives pay-per-click fees from these search engines and third-party links. The Panel finds that such use is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain names pursuant to Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Geoffrey, Inc. v. Toyrus.com, FA 150406 (Nat. Arb. Forum Apr. 25, 2003) (holding that the respondent’s use of the <toyrus.com> domain name, a simple misspelling of the complainant’s mark, to divert Internet users to a website that featured pop-up advertisements and an Internet directory, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name).
Further, there is no available evidence that Respondent is
commonly known by any of the disputed domain names. Respondent’s WHOIS information for all of the disputed domain
names identifies Respondent as “Digi Real Estate Foundation,” which bears no resemblance
to any of the dispute domain names.
Additionally, Complainant asserts that it has no relationship with
Respondent and has not authorized Respondent’s use of Complainant’s marks. The Panel finds that Respondent is not
commonly known by the disputed domain names and thus lacks rights or legitimate
interests pursuant to Policy ¶ 4(c)(ii).
See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10,
2003) (stating “nothing in Respondent’s WHOIS information implies that
Respondent is ‘commonly known by’ the disputed domain name” as one factor in
determining that Policy ¶ 4(c)(ii) does not apply); see also MRA Holding,
LLC v. Costnet, FA 140454 (Nat. Arb. Forum Feb. 20, 2003) (noting that “the
disputed domain name does not even correctly spell a cognizable phrase” in
finding that the respondent was not “commonly known by” the name “girls gon
wild” or <girlsgonwild.com>); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interest 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.
Respondent is using the disputed domain names, confusingly similar to Complainant’s marks, to redirect Internet users to its websites featuring links to third-party websites, including those offering automobile goods and services in direct competition with complainant. Presumably, Respondent receives pay-per-click referral fees from these links. The Panel finds that Respondent’s use of domain names confusingly similar to Complainant’s marks to redirect Internet users to links to Complainant’s competitors disrupts Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).
Respondent’s domain names are confusingly similar to
Complainant’s marks in a number of ways calculated to mislead Internet users,
and redirect those Internet users to Respondent’s websites. Some of the disputed domain names use common
misspellings or typos of Complainant’s mark in order to redirect Internet users
seeking Complainant’s goods and services, while others include Complainant’s
marks in their entirety, adding terms that describe Complainant’s
business. Both of these tactics seek to
redirect Internet users to Respondent’s websites, and because of the confusing
similarity between the disputed domain names and Complainant’s marks, once
Internet users find themselves at Respondent’s websites they may mistakenly
assume that Respondent is in some way sponsored by or affiliated with
Complainant. Respondent is presumably
profiting from this confusion through the generic Internet search engines and
links to third-party websites present on its websites. The Panel finds that the use of confusingly
similar domain names to attract Internet users to websites, which presumably
generate referral fees for Respondent, is evidence of bad faith registration
and use pursuant to Policy ¶ 4(b)(iv). See
Am. Univ. v. Cook,
FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain
name that incorporates another's mark with the intent to deceive Internet users
in regard to the source or affiliation of the domain name is evidence of bad
faith.”); see also AltaVista
Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under
Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that
offered links to third-party websites that offered services similar to the
complainant’s services and merely took advantage of Internet user mistakes).
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 <chrysleer.com>, <chryslerconquest.com>, <chryslerfinancia.com>, <chrysller.com>, <mercadesbens.com>, <mercadiesbenz.com>, <mercedebens.com>, <mercedebenz.com>, <mercedesbendz.com>, <mercedesbenez.com>, <mercedessbenz.com>, <mercedezs.com> and <mercediesbenz.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: July 25, 2006
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