DaimlerChrysler AG v. LaPorte Holdings,
Inc.
Claim
Number: FA0501000399328
Complainant is DaimlerChrysler AG (“Complainant”), represented
by Jan Zecher, of Gleiss Lutz
Rechtsanwaelte, Maybachstr.
6, Stuttgart 70469, Germany. Respondent
is LaPorte Holdings, Inc. (“Respondent”),
ATTN: damlerchrysler.com, c/o Nameking, Inc., 2202 S. Figueroa St., Suite 721,
Los Angeles, CA 90023.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <damlerchrysler.com>, registered with Nameking.com,
Inc.
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in serving as Panelist in this
proceeding.
Louis
E. Condon as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on January
7, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 12, 2005.
On
January 7, 2005, Nameking.com, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <damlerchrysler.com> is
registered with Nameking.com, Inc. and that Respondent is the current
registrant of the name. Nameking.com, Inc. has verified that Respondent is
bound by the Nameking.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
January 19, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 8, 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@damlerchrysler.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
February 14, 2005, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed
Louis E. Condon 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:
1. Respondent’s <damlerchrysler.com>
domain name is confusingly similar to Complainant’s DAIMLERCHRYSLER mark.
2. Respondent does not have any rights or
legitimate interests in the <damlerchrysler.com> domain name.
3. Respondent registered and used the <damlerchrysler.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
In the past
decade, Complainant and its legal predecessors have sold over 1 million
automotive vehicles annually in markets throughout the world. During this time, Complainant has spent
billions of dollars on advertising and promoting automotive vehicles through
various media sources, including print, radio, television and the Internet.
Complainant has
registered the DAIMLERCHRYSLER mark with trademark authorities throughout the
world, including Germany (Reg. No. 39,825,488 issued May 7, 1998) and the
United States (Reg. Nos. 2,784,572 issued June 17, 1998; 2,644,906 issued
November 6, 1998). Complainant also holds an international
trademark registration for the DAIMLERCHRYSLER mark (Reg. No. 707,283 issued
July 2, 1998), which is valid in several countries, including Austria, Benelux,
Denmark, France, Great Britain, Italy, Norway, Poland, Portugal, Romania,
Russia, Sweden, Switzerland and Spain.
Respondent registered the <damlerchrysler.com> domain name on
September 9, 2002. Respondent’s domain
name resolves to a website that features links to competing car-related
websites.
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.
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 DAIMLERCHRYSLER mark through registration of the mark
with numerous trademark authorities worldwide.
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).
Respondent’s <damlerchrysler.com>
domain name is confusingly similar to Complainant’s DAIMLERCHRYSLER mark. Respondent’s domain incorporates
Complainant’s mark in its entirety and merely deletes the letter “i” from the
mark and adds the generic top-level domain “.com.” Such minor changes are not enough to overcome a finding of
confusing similarity pursuant to Policy ¶ 4(a)(i). See Reuters Ltd. v.
Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a
domain name which differs by only one letter from a trademark has a greater
tendency to be confusingly similar to the trademark where the trademark is
highly distinctive); see also State
Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum
June 15, 2000) (finding that the domain name <statfarm.com> is
confusingly similar to Complainant’s STATE FARM mark); see also Kioti
Tractor Div. v. O’Bryan Implement Sales, FA
210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's
domain name, <kioti.com>, is identical to Complainant's KIOTI mark
because adding a top-level domain name is irrelevant for purposes of Policy ¶
4(a)(i).”); see also 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.”).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint.
Therefore, the Panel may accept all reasonable allegations set forth by
Complainant as true and accurate. See
Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure
of a respondent to come forward to [contest complainant’s allegations] is
tantamount to admitting the truth of complainant’s assertion in this regard”); 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 the Complaint to
be deemed true).
Complainant has
asserted that Respondent has no rights and legitimate interests in the disputed
domain name, and Respondent, in not submitting a response, has failed to rebut
this assertion. Thus, the Panel may
interpret Respondent’s failure to respond as evidence that Respondent lacks
rights and legitimate interests in the <damlerchrysler.com> domain
name pursuant to Policy ¶ 4(a)(ii). See
Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response,
Respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec.
31, 2002) (“Respondent's failure to respond not only results in its failure to
meet its burden, but also will be viewed as evidence itself that Respondent
lacks rights and legitimate interests in the disputed domain name.”).
Respondent is
using the <damlerchrysler.com> domain name to operate a website
that features links to competing car-related websites. Such use is not a use in connection with 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 Coryn
Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding
that Respondent was not using domain names for a bona fide offering of goods or
services nor a legitimate noncommercial or fair use because Respondent used the
names to divert Internet users to a website that offered competing services
with those offered by Complainant under its marks); 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).
Furthermore,
nothing in the record indicates that Respondent is either commonly known by the
disputed domain name or is authorized to register domain names featuring
Complainant’s DAIMLERCHRYSLER mark.
Thus, the Panel finds that Respondent lacks rights and legitimate
interests in the <damlerchrysler.com> 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 Am. Airlines, Inc. v. Zuccarini,
FA 95695 (Nat. Arb. Forum Nov. 6, 2000) (finding no rights or legitimate
interest in the misspelled domain name <amaricanairlines.com> because Respondent was not authorized
to use Complainant's mark).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <damlerchrysler.com> domain name, which features a
confusingly similar version of Complainant’s DAIMLERCHRYSLER mark, to operate a
website that features links to competing car-related websites. Such use constitutes disruption and is
evidence that Respondent registered and used the domain name in bad faith
pursuant to Policy ¶ 4(b)(iii). See Six
Continents Hotels, Inc. v. Asia Ventures,
D2003-0659 (WIPO Oct. 14, 2003) (finding that Respondent registered a domain
name primarily to disrupt the business of its competitor because it directed “its
web site to travel-related services in competition with the Complainant and is
deriving a financial benefit from such direction and redirection of users to
such sites, particularly, through banner advertisements, pop-up windows and its
affiliate relationships”); see also EthnicGrocer.com, Inc. v.
Unlimited Latin Flavors, Inc.,
FA 94385 (Nat. Arb. Forum July 7, 2000)
(finding that the minor degree of variation from Complainant's marks
suggests that Respondent, Complainant’s competitor, registered the names
primarily for the purpose of disrupting Complainant's business).
Furthermore, the
Panel infers that Respondent receives click-through fees for diverting Internet
users to competing websites. Since the
disputed domain name contains a confusingly similar variation of Complainant’s
famous mark, consumers searching for Complainant online would become confused
as to Complainant’s affiliation with the resulting website. Thus, the Panel finds that Respondent
registered and used the <damlerchrysler.com> domain name in bad
faith pursuant to Policy ¶ 4(b)(iv). See
Assoc. Newspapers Ltd. v. Domain Manager, FA
201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's
prior use of the <mailonsunday.com> domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to
Complainant's competitors and Respondent presumably commercially benefited from
the misleading domain name by receiving ‘click-through-fees.’”); see also 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.”).
Moreover,
Respondent registered the <damlerchrysler.com> domain name with
actual or constructive knowledge of Complainant’s DAIMLERCHRYSLER mark due to
Complainant’s numerous registrations of the mark with trademark authorities
worldwide and the immense international fame that Complainant’s mark has
acquired. Additionally, the Panel
infers that Respondent had actual knowledge of Complainant’s mark due to the
fact that it uses the domain name to promote Complainant’s competitors. Thus, Respondent registered and used the
disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000)
(finding that Respondent had actual and constructive knowledge of Complainant’s
EXXON mark given the worldwide prominence of the mark and thus Respondent
registered the domain name in bad faith); see also Pfizer, Inc. v. Suger,
D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between
Complainant’s mark and the content advertised on Respondent’s website was
obvious, Respondent “must have known about the Complainant’s mark when it
registered the subject domain name”).
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 relief should be GRANTED.
Accordingly, it
is Ordered that the <damlerchrysler.com> domain name be TRANSFERRED
from Respondent to Complainant.
Louis E. Condon, Panelist
Dated:
February 28, 2005
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