DaimlerChrysler AG v. Arben Osaj
Claim Number: FA0607000755422
Complainant is DaimlerChrysler AG (“Complainant”), represented by Jan Zecher of Gleiss & Lutz Rechtsanwaelte, Maybachstr. 6, 70469, Stuttgart, Germany. Respondent is Arben Osaj (“Respondent”), Thelottstr.14, 80933 Munich, Germany.
REGISTRARS AND DISPUTED DOMAIN
NAME
The domain name at issue is <amg-power.com>, registered with Cronon Ag Berlin, Regensburg branch office.
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.
Jonas Gulliksson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 20, 2006; the National Arbitration Forum received a hard copy of the Complaint on July 26, 2006. The language of the Complaint is German.
On August 3, 2006, Cronon Ag Berlin, Regensburg branch office, confirmed by e-mail to the National Arbitration Forum that the <amg-power.com> domain name is registered with Cronon Ag Berlin and that the Respondent is the current registrant of the name. Cronon Ag Berlin, Regensburg branch office, has verified that Respondent is bound by the Cronon Ag Berlin, Regensburg branch office, 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 August 9, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 29, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent in German 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@amg-power.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 7, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jonas Gulliksson 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.
In accordance with Rule 11(a), the Panel decided that the language requirements have been met by issuing the Complaint and Commencement Notification in German and, in view of the Respondent's failure to submit a response, the Panel determined that the case can proceed in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A.
Complainant makes the following assertions:
1. Respondent's domain name <amg-power.com> is confusingly similar to Complainant’s AMG trademark.
2. Respondent does not have any rights or legitimate interests in the <amg-power.com> domain name.
3. Respondent has registered and uses the <amg-power.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Respondent registered the <amg-power.com> domain name on July 15, 2003.
Complainant is the owner of the following registered trademarks:
-
German trademark No.
1,184,135 "AMG," filed on March 6, 1989 and
registered on March 13, 1992 for "tuned luxury automobiles;"
- German trademark No. 2,022,485
"AMG," filed on October 23, 1991 and registered on October 19, 1992
for "tuned luxury automobiles, the
repair and maintenance of these vehicles;"
- Community trademark No. 1,653,278
"AMG," filed on May 12, 2000 and registered on July 5, 2002 and used
for, inter alia, "automobiles, brochures whose contents deals with
automobiles and/or motorsport, and the tuning, repair, and maintenance of
automobiles"; and
- Community trademark No. 2,738,672
"AMG," filed on June 18, 2002 and registered on November 7, 2003 and
used for, inter alia, "the organization of sports competitions and
cultural entertainment."
Complainant claimed that the AMG trademark is a well-known trademark and pointed out the following facts:
- The trademark has been in use for
more than 35 years. Complainant and Complainant's legal predecessors have sold
several hundreds of thousands of vehicles under the AMG trademark. The vehicles are sporty, high-performance,
luxury vehicles in the top price range that the "MERCEDES-BENZ"
trademark adds to its series automobiles.
- Since its foundation, Complainant and
Complainant's legal predecessors have spent vast amounts of money to advertise
the "AMG" trademark in a broad spectrum of media including print, radio,
television and Internet. Among other
things, AMG has fielded its own racing team in the German Touring Car
Championship (Deutsche Tourenwagen Meisterschaft, DTM) for many years, and the
team's successes are regularly reported on the radio, on television, and on the
Internet.
- There are regular, extensive reports
on AMG trademark vehicles in motorsports journals. As a result, the
"AMG" trademark also has a comparable reputation internationally to
the brands "BUGATTI," "MASERATI," and "LAMBORGHINI."
In Germany, the "AMG"
trademark is even considerably more well-known than these trademarks.
- The "AMG" trademark was
registered in 1992, even though letter combinations were not able to be
registered according to the German trademark laws in effect at that time. The reason for this was that the trademark's
high level of recognition could be proven based on two surveys. One of the two surveys proved this high
level of recognition even back in 1981.
The Panel finds that these facts can be considered established since they were undisputed by Respondent. Nevertheless, it is sufficient for these proceedings to be able to state whether the trademark has been used to a wide extent and over a longer period of time so that bad faith on the part of Respondent can be determined.
Respondent has operated the www.amg-power.com web site under the disputed domain name since early 2004. This web site only contained an index page with the image of Complainant's "AMG" trademark.
In early 2005 Respondent redesigned the web site. The web site then displayed the name "OFFICIAL AMG-POWER CLUB." Respondent presented himself on the web site as the "AMG-POWER TEAM." The web site continued to display an image of the "AMG" trademark in a prominent location.
Respondent also operated an "AMG-POWER Forum" on the site, where users could offer vehicles for sale after registering. The web site also expressly stated: "Register to use the AMG-POWER Forum for free now and discuss with like-minded people or maybe even find your dream car!!!."
Respondent's web site also contained paid advertisements for third parties. Respondent advertised, among others, for the web site <aof-tuning.de>. This web site offers performance-enhancing automobile parts and the rebuilding of vehicles. The registered owner of the web sites is an independent automobile repair shop located near Berlin (in other words one of Complainant's nearby competitors).
Respondent's web site does not offer any "editorial" content.
Respondent copied the majority of the images from Complainant's media service. This media service is only accessible after registering and agreeing to the terms of use. According to the terms of use, images may only be used for journalistic purposes.
Respondent copied the majority of the texts straight from various third party web sites. For example, some of the text is from the "AMG Owner’s Club" web site, while another section is from the web site owned by the German news magazine "Focus."
Complainant never had a business relationship with Respondent, nor did Complainant at any time authorize Respondent to register and use the disputed domain name. Complainant first learned about the registration and use of the disputed domain name in late 2005.
Respondent published paid advertisements on the web site and facilitated the trade of vehicles in the web site and advertised for a nearby competitor of Complainant.
Through the use of Complainant's images, the reference as the "AMG-POWER TEAM," and above all the claim of "OFFICIAL AMG-POWER CLUB WEBSITE," Respondent offered the misleading impression that it was an "official" web site of Complainant.
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."
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. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (finding that failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 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;
(2) Respondent has no rights or legitimate interests in respect of the domain name;
(3) The domain name was registered in bad faith and continues to be used in bad faith.
The domain <amg-power.com> consists of the elements "amg," "power," and "com." The overall impression of the domain is influenced by the strong identifying component "amg."
The component ".com" is irrelevant to the evaluation of the likelihood of confusion between domain names and trademarks, because, due to technical reasons, the registrant is forced to use a top-level domain. See Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000); see also Victoria's Secret v. Hardin, FA 96694 (Nat. Arb. Forum March 31, 2001)
.
The component "power" is a term that is frequently used in advertising and is therefore not very characterizing. See Dell Computer Corp. v. Logo Excellence, D2001-0361 (WIPO May 7, 2001) (finding <dellpower.com> similar to “DELL”); Alticor Inc. v. Amwayco, FA 467762 (Nat. Arb. Forum June 8, 2005) (finding <amwaypower.com> similar to "AMWAY"). The component is also described in connection with automobiles and engines and is therefore also of little importance to the overall impression of a trademark.
The component "amg" sounds identical and is written very similarly to the "AMG" trademark. The written difference is only in the use of lowercase and capital letters. The component "amg" exclusively uses lowercase letters, while the "AMG" trademark exclusively uses capital letters.
However, the difference in the use of lowercase and capital letters is irrevelant, because, due to technical reasons, domain names cannot differentiate between lowercase and capital letters. See Central Pacific Bank v. ansony, FA 99379 (Nat. Arb. Forum Oct. 15, 2001) (holding that capitalization is not considered when addressing the similarities between domain names and trademarks).
The Panel finds that the domain <amg-power.com> is confusingly similar to the AMG trademark.
Respondent never used the domain for any bona fide offering of goods or services and is not making any legitimate noncommercial use of the domain name. Respondent has consequently offered no proof that shows he is authorized to register and use the registered domain. The Panel therefore finds that Respondent has no rights or legitimate interests in the domain name at issue.
Complainant is the registered owner of previous trademark rights to the AMG trademark in the Federal Republic of Germany, which is also Complainant's registered domicile, and has not given its permission to register or use the domain name for commercial purposes or as paid advertising for third parties in the field of automobiles, automobile parts, and rebuilding vehicles. Such goods and services are covered by the previous registration of the trademark. This use is therefore an infringement on a trademark and is consequently unauthorized use of the trademark.
Respondent is a resident of Germany and has no generic connotation to AMG and has not made use of his right to free speech.
Due to the AMG trademark's high level of recognition, in German-speaking countries as well as worldwide, the Panel assumes that the Respondent was familiar with the Complainant's established rights.
That fact that the Internet advertisements referred to automobiles and the rebuilding of vehicles further supports a claim of use in bad faith.
The Panel therefore finds that the Respondent registered and used the disputed domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that the relief shall be GRANTED.
Accordingly, it is Ordered that the <amg-power.com> domain name be TRANSFERRED from Respondent to Complainant.
Jonas Gulliksson, Panelist
Dated: September 20, 2006
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page