DaimlerChrysler Corporation v. Kentech,
Inc.
Claim
Number: FA0501000410056
Complainant DaimlerChrysler Corporation (“Complainant”),
is represented by George T. Schooff, 5445 Corporate Drive, Suite 400, Troy,
MI 48098. Respondent is Kentech, Inc. (“Respondent”), 1st
Floor Muya House, Kenyatta Ave., P.O.Box 4276-30100, Eldoret 0000, KE Africa.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <upperdarbychrysler.com>, registered with Domain
Contender, LLC.
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 January
27, 2005; the National Arbitration Forum received a hard copy of the Complaint January
28, 2005.
On
January 31, 2005, Domain Contender, LLC confirmed by e-mail to the National
Arbitration Forum that the domain name <upperdarbychrysler.com> is
registered with Domain Contender, LLC and that Respondent is the current
registrant of the name. Domain Contender, LLC verified that Respondent is bound
by the Domain Contender, LLC 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
February 2, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 22, 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@upperdarbychrysler.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
March 6, 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, <upperdarbychrysler.com>, is confusingly similar to
Complainant’s CHRYSLER mark.
2. Respondent has no rights to or legitimate
interests in the <upperdarbychrysler.com> domain name.
3. Respondent registered and used the <upperdarbychrysler.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
DaimlerChrysler Corporation, and its related entities have promoted goods and
services throughout the world, including the United States and Canada under the
CHRYSLER mark.
Complainant
established with extrinsic evidence in this proceeding that it owns trademark
rights in the CHRYSLER mark through registration with the United States Patent
and Trademark Office (Reg. No. 428,619, issued March 25, 1947). Complainant also operates its website at the
<chrysler.com> domain name, where consumers can access information about
Complainant’s goods and services through the Internet.
Complainant
permits authorized dealers to register and use Internet domain names
incorporating its mark. One of these
authorized dealers was Upper Darby Plymouth, which registered and operated the <upperdarbychrysler.com>
domain name. However, once Upper
Darby Chrysler Plymouth ceased business operations, it allowed the disputed
domain name to lapse.
Shortly
therafter, credoNIC/DOMAIN FOR SALE registered the <upperdarbychrysler.com>
domain name. Complainant proceeded
to initiate an ICANN proceeding against credoNIC/DOMAIN FOR SALE. The disputed domain name was subsequently
ordered transferred to Complainant.
However, two days before the decision was announced, and four days before
Complainant received instructions about how to obtain the domain names that
were ordered transferred, the <upperdarbychrysler.com> domain name
lapsed once again.
During this
second lapse period, Respondent, Kentech, Inc. registered the disputed domain
name October 25, 2005. Respondent uses
the disputed domain name to redirect Internet users to a website featuring
Complainant’s registered and common law marks, including the CHRYSLER mark, and
links and advertisements to third party car dealerships, some of which include
Complainant’s competitors.
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 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.
Respondent has the burden of refuting this assumption).
The domain name
that Respondent holds is confusingly similar to Complainant’s CHRYSLER mark
because the domain name incorporates Complainant’s mark in its entirety and
deviates from it only by adding the descriptive term “upperdarby,” which
describes Complainant’s authorized dealer.
The mere addition of a descriptive term to a registered mark does not
negate the confusing similarity of Respondent’s domain name pursuant to Policy
¶ 4(a)(i). See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where Respondent’s domain name combines Complainant’s mark with a
generic term that has an obvious relationship to Complainant’s business); see
also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002)
(finding that because the subject domain name incorporates the VIAGRA mark in
its entirety, and deviates only by the addition of the word “bomb,” the domain
name is rendered confusingly similar to Complainant’s mark); see also Body Shop Int’l PLC v. CPIC NET,
D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name
<bodyshopdigital.com> is confusingly similar to Complainant’s THE BODY
SHOP trademark).
Furthermore,
addition of the generic top-level domain “.com” does not sufficiently
distinguish Respondent’s confusingly similar domain name from Complainant’s
CHRYSLER mark. See Pomellato S.p.A v. Tonetti, D2000-0493
(WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s
mark because the generic top-level domain (gTLD) “.com” after the name
POMELLATO is not relevant); see also Busy
Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding
that "the addition of the generic top-level domain (gTLD) name ‘.com’ is .
. . without legal significance since use of a gTLD is required of domain name
registrants"); see also Interstellar
Starship Services Ltd. v. EPIX, Inc., 983 F.Supp. 1331, 1335 (D.Or. 1997)
(<epix.com> "is the same mark" as EPIX); see also Snow Fun, Inc. v. O'Connor, FA 96578
(Nat. Arb. Forum Mar. 8, 2001) (finding the domain name <termquote.com>
is identical to Complainant’s TERMQUOTE mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
established its rights and alleges that Respondent has no rights to or
legitimate interests in the <upperdarbychrysler.com> domain
name. The burden shifts to Respondent
to show that it does have rights or legitimate interests once Complainant
establishes a prima facie case pursuant to Policy ¶ 4(a)(ii). Due to Respondent’s failure to respond to
the Complaint, the Panel will assume that Respondent lacks rights and
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 Complainant has asserted that
Respondent has no rights or legitimate interests with respect to the domain
name it is incumbent on 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 Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228
(WIPO Nov. 28, 2000) (finding that under certain circumstances the mere
assertion by Complainant that Respondent has no rights or legitimate interests is
sufficient to shift the burden of proof to Respondent to demonstrate that such
a right or legitimate interest does exist); see also Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to
respond can be construed as an admission that they have no legitimate interests
in the domain names).
Moreover, the
Panel will accept all reasonable allegations and inferences in the Complaint as
true because Respondent has not submitted a response. See 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.”); see also Vertical Solutions Mgmt., Inc.
v. webnet-marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000)
(holding that Respondent’s failure to respond allows all reasonable inferences
of fact in the allegations of Complainant to be deemed true.); see also
Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding
that failing to respond allows a presumption that Complainant’s allegations are
true unless clearly contradicted by the evidence).
Respondent is
wholly appropriating Complainant’s CHRYSLER mark and is using the <upperdarbychrysler.com>
domain name to redirect Internet users to a website that contains links and
advertisements to third party dealerships, including Chevrolet, Ford, Buick, as
well as to Complainant’s competitors such as Mercedes. Respondent’s use of a domain name that is
confusingly similar to Complainant’s CHRYSLER mark to redirect Internet users
searching for Complainant to a website that offers links to Complainant’s
competitors is not a use in connection with a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) and is not a legitimate noncommercial or
fair use of the domain name pursuant to Policy
¶ 4(c)(iii). See TM
Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002)
(finding that Respondent’s diversionary use of Complainant’s marks to send
Internet users to a website which displayed a series of links, some of which
linked to competitors of Complainant, was not a bona fide offering of goods or
services); see also Société des
Bains de Mer v. Int’l Lotteries, D2000-1326 (WIPO Jan. 8, 2001) (finding no
rights or legitimate interests where Respondent used the
<casinomontecarlo.com> and <montecarlocasinos.com> domain names in
connection with an online gambling website); see also Nike, Inc. v. Dias,
FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no “bona fide” offering of
goods or services where Respondent used Complainant’s mark without
authorization to attract Internet users to its website, which offered both
Complainant’s products and those of Complainant’s competitors); see also
Winmark Corp. v. In The Zone, FA 128652 (Nat. Arb. Forum Dec. 6, 2002)
(finding that Respondent had no rights or legitimate interests in a domain name
that used Complainant’s mark to redirect Internet users to a competitor’s
website).
Respondent has
not offered any evidence and no proof in the record suggests that Respondent is
commonly known by the <upperdarbychrysler.com> domain name. Thus, 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 Respondent was not commonly known by the mark and never applied for a
license or permission from Complainant to use the trademarked name); see
also Gallup Inc. v. Amish Country
Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding Respondent has no
rights in a domain name when Respondent is not known by the mark).
Furthermore,
nothing in the WHOIS domain name registration information, suggests Respondent
is known by the domain name or by Complainant’s mark, pursuant to Policy ¶
4(c)(ii). See Tercent Inc. v. 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 Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb.
Forum Jan. 23, 2001) (finding that Respondent does have rights in a domain name
when Respondent is not known by the mark); see also Broadcom Corp. v.
Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding
Respondent has no rights or legitimate interests because Respondent is not
commonly known by the disputed domain name and is not using the domain name in
connection with a legitimate or fair use).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Complainant
alleges that Respondent is wholly appropriating Complainant’s mark to lead Complainant’s
customers to a website where links to commercial car dealerships are
offered. The Panel infers that
Respondent receives click-through fees for the links displayed on the disputed
domain name. The Panel finds that
Respondent is intentionally creating a likelihood of confusion to attract
Internet users for Respondent’s commercial gain, pursuant to Policy ¶
4(b)(iv). See G.D. Searle & Co.
v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding
Respondent registered and used the domain name in bad faith pursuant to Policy
¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to
attract Internet users to its commercial website); see also Am. Online, Inc. v. Tercent Comm. Corp.,
FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent
registered and used an infringing domain name to attract users to a website
sponsored by Respondent); see also Perot
Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding
bad faith where the domain name in question is obviously connected with
Complainant’s well-known marks, thus creating a likelihood of confusion
strictly for commercial gain); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb.
Forum Oct. 30, 2000) (finding Respondent engaged in bad faith use and
registration by linking the domain name to a website that offers services
similar to Complainant’s services, intentionally attempting to attract, for
commercial gain, Internet users to its website by creating a likelihood of
confusion with Complainant’s marks).
Additionally,
Respondent registered the disputed domain name for the purpose of disrupting
Complainant’s business by redirecting Internet traffic intended for Complainant
to Respondent’s website where Respondent offers numerous links to third party
websites, including websites that directly compete with Complainant. Registration of a domain name for the
purpose of disrupting the business of a competitor is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) (finding Respondent acted in bad faith by attracting
Internet users to a website that competes with Complainant’s business); see
also Puckett v. Miller,
D2000-0297 (WIPO June 12, 2000) (finding that Respondent diverted business from
Complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Respondent’s
registration of the disputed domain name that incorporates Complainant’s
CHRYSLER mark and the name of Complainant’s former affiliate to offer links to
car-related websites and dealerships suggests that Respondent knew of
Complainant’s rights in the CHRYSLER mark.
Thus, the Panel finds that Respondent likely chose the <upperdarbychrysler.com>
domain name based on the distinctive and well-known qualities of Complainant’s
mark. 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 Am. Online, Inc. v. Fu, D2000-1374 (WIPO
Dec. 11, 2000) (finding that the ICQ mark is so obviously connected with
Complainant and its products that the use of the domain names by Respondent,
who has no connection with Complainant, suggests opportunistic bad faith); see
also Pavillion Agency, Inc. v.
Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the
“domain names are so obviously connected with the Complainants that the use or
registration by anyone other than Complainants suggests ‘opportunistic 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 <upperdarbychrysler.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 21, 2005
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