national arbitration forum

 

DECISION

 

DaimlerChrysler AG v. Bunie.com

Claim Number:  FA0507000519308

 

PARTIES

Complainant, DaimlerChrysler AG (“Complainant”), is represented by Jan Zecher of Gleiss Lutz Rechtsanwaelte, Maybachstr. 6, Reference 71130-05, Stuttgart, 70469, Germany.  Respondent is Bunie.com (“Respondent”), 374 East H Street, Suite A, PMB #416, Chula Vista, CA 91910.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <chysler.com> and <daimlerchysler.com>, registered with Bulkregister, Llc.

 

PANEL

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.

 

James A. Carmody, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 19, 2005; the National Arbitration Forum received a hard copy of the Complaint on July 25, 2005.

 

On July 20, 2005, Bulkregister, Llc. confirmed by e-mail to the National Arbitration Forum that the <chysler.com> and <daimlerchysler.com> domain names are registered with Bulkregister, Llc. and that Respondent is the current registrant of the names.  Bulkregister, Llc. has verified that Respondent is bound by the Bulkregister, Llc. 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 July 27, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 16, 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@chysler.com and postmaster@daimlerchysler.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On August 25, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <chysler.com> and <daimlerchysler.com> domain names are confusingly similar to Complainant’s CHRYSLER and DAIMLERCHRYSLER marks.

 

2.      Respondent does not have any rights or legitimate interests in the <chysler.com> and <daimlerchysler.com> domain names.

 

3.      Respondent registered and used the <chysler.com> and <daimlerchysler.com> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, DiamlerChrysler AG, and its subsidiary, DiamlerChrysler Corp., own numerous registrations for the CHRYSLER mark with the United States Patent and Trademark Office (“USPTO”) (E.g., Reg. No. 428,619 issued June 10, 1946; Reg. No. 1,513,942 issued March 28, 1988) and with Germany’s Trademark Office (Reg. No. 764,370 issued October 13, 1991).  Complainant also owns several registrations for its DAIMLERCHRYSLER mark with the USPTO (E.g., Reg. No 2,784,572 issued June 17, 1998; Reg. No. 2,644,906 issued November 6, 1998) and with several other countries.

 

The CHRYSLER mark is world-famous and Complainant and its legal predecessors (collectively “Complainant”) have been using it for automotive vehicles since 1924.  The DAIMLERCHRYSLER mark is likewise world-famous.  The DAIMLER part of the mark has been used for automotive vehicles since 1886.  In the last ten years, Complainant sold over 1,000,000 vehicles.  Complainant has spent billions of dollars on advertising and promoting its vehicles under the CHRYSLER and DAIMLERCHRYSLER marks in a wide range of media, including print, radio, television, and the Internet. 

 

Respondent registered the <daimlerchysler.com> domain name on January 31, 2000.  Respondent registered the <chysler.com> domain name on January 25, 2000.  Respondent used both domain names for websites that featured links to cars and car-related services offered by third-parties. 

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant’s registrations for its CHRYSLER and DAIMLERCHRYSLER marks with the USPTO are sufficient to establish Complainant’s rights in the mark.  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.”).

 

Complainant contends that the <chysler.com> and <daimlerchysler.com> domain names are confusingly similar to Complainant’s CHRYSLER and DAIMLERCHRYSLER marks.  Respondent’s <chysler.com> and <daimlerchysler.com> domain names wholly incorporate Complainant’s CHYSLER and DAIMLERCHRYSLER marks, respectively, and remove a letter “r” from the marks.  The Panel finds that Respondent is merely misspelling Complainant’s marks and that the removal of one letter is insufficient to distinguish Respondent’s domain names from Complainant’s marks.  See 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 the complainant’s STATE FARM mark); see also Compaq Info. Techs. Group, L.P. v. Seocho, FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly similar to the complainant’s COMPAQ mark because the omission of the letter “a” in the domain name does not significantly change the overall impression of the mark).

 

Thus, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(i). 

 

Rights or Legitimate Interests

 

Complainant asserts that Respondent does not have rights or legitimate interests in the <chysler.com> and <daimlerchysler.com> domain names.  Complainant’s assertion establishes a prima facie case and shifts the burden to Respondent.  To meet its burden, Respondent must provide the Panel with evidence that it does have rights or legitimate interests in the disputed domain name.  Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001):

 

Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.  In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.

 

Id.; see also 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).”).  The Panel will analyze whether Respondent could meet its burden of establishing rights or legitimate interests for purposes of Policy ¶ 4(a)(ii).

 

Complainant argues that Respondent is not commonly known by the disputed domain names.  Without a response from Respondent, the Panel accepts as true Complainant’s allegation.  See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).  Moreover, Respondent’s WHOIS information suggests that Respondent is known as “Bunie.com.”  Therefore, the Panel concludes that Respondent is not commonly known by the disputed domain names and does not have rights or legitimate interests under 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 Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).

 

Complainant provides evidence that Respondent benefits from the confusing similarity of the <chysler.com> and <daimlerchysler.com> domain names by displaying links to cars and car-related services and receiving pay-per-click fees from confused Internet users who click on these links.  Complainant argues that Respondent’s links directly compete with Complainant.  Because Respondent did not respond, the Panel treats Complainant’s arguments as true.  See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because Respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed.  In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).  Thus, the Panel concludes that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”); see also Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that the respondent's “use of the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name”).

 

Moreover, because Respondent is purposely misspelling Complainant’s mark, it is engaging in the practice of typosquatting.  The Panel holds that such typosquatting indicates that Respondent lacks rights and legitimate interests for purposes of Policy ¶ 4(a)(ii).  See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”). 

 

Consequently, the Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent is using the confusingly similar domain names to operate a website that features links to car and car-related services, for which it presumably receives click-through fees.  The Panel finds that Respondent is capitalizing on Internet user confusion and that such use is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).

 

Furthermore, the fact that Respondent’s domain names are merely typosquatted variations of Complainant’s famous marks is evidence that Respondent registered and used the <chysler.com> and <daimlerchysler.com> domain names in bad faith pursuant to Policy ¶ 4(a)(iii).  See Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com> domain name was a “simple misspelling” of the complainant's DERMALOGICA mark which indicated typosquatting and bad faith pursuant to Policy 4(a)(iii)); see also K.R. USA, INC. v. SO SO DOMAINS, FA 180624 (Nat. Arb. Forum Sept. 18, 2003) (finding that the respondent’s registration and use of the <philadelphiaenquirer.com> and <tallahassedemocrat.com> domain names capitalized on the typographical error of Internet users seeking the complainant's THE PHILADELPHIA INQUIRER and TALLAHASSEE DEMOCRAT marks, evincing typosquatting and bad faith pursuant to Policy ¶ 4(a)(iii)).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <chysler.com> and <daimlerchysler.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

James A. Carmody, Esq., Panelist

Dated:  September 7, 2005

 

 

 

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