National Arbitration Forum

 

DECISION

 

DaimlerChrysler AG v. Enigma a/k/a Enigma Advocacy Corp.

Claim Number: FA0508000535460

 

PARTIES

Complainant is DaimlerChrysler AG (“Complainant”), represented by Jan Zecher, of Gleiss Lutz Rechtsanwaelte, Maybachstr. 6, Stuttgart, 70469, Germany.  Respondent is Enigma a/k/a Enigma Advocacy Corp. (“Respondent”), represented by Robert G. André, of Ogden Murphy Wallace, PLLC, 1601 Fifth Avenue, Suite 2100, Seattle, WA 98101.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <daimlerchrysler.org>, <daimlerchrysler.net> and <maybach.net>, registered with Network Solutions, Inc.

 

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Beatrice Onica Jarka as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 8, 2005; the National Arbitration Forum received a hard copy of the Complaint on August 11, 2005.

 

On August 9, 2005, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <daimlerchrysler.org>, <daimlerchrysler.net> and <maybach.net> domain names are registered with Network Solutions, Inc. and that Respondent is the current registrant of the names.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 August 15, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 6, 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@daimlerchrysler.org, postmaster@daimlerchrysler.net and postmaster@maybach.net by e-mail.

 

Pursuant to National Arbitration Forum Supplemental Rule 6, Respondent requested an extension of twenty days to respond to the Complaint on August 31, 2005, citing extenuating circumstances. Respondent’s request was granted on September 1, 2005, setting an extended deadline of September 20, 2005 by which Respondent could file a Response to the Complaint. 

 

A timely Response was received and determined to be complete on September 19, 2005.

 

An Additional Submission was received from Complainant on September 21, 2005.

 

An Additional Submission was received from Respondent on September 22, 2005.

 

Both additional submissions were sent in time. 

 

On September 28, 2005 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Beatrice Onica Jarka as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

 

A. Complainant

Complainant contends that:

• it is a company called DAIMLERCHRYSLER AG;
• it owns registered trademarks and trademark applications  for DAIMLERCHRYSLER in different countries and at the international level;
• it owns the registered trademarks MAYBACH in different countries and at the international level;
• DAIMLERCHRYSLER is a world-famous trade­mark used in the business of Complainant and its predecessors;
• MAYBACH is also a famous trademark used for automobiles and their parts in the business of Complainant and its legal predecessors since 1921;
• it owns 100% of the shares of its subsidiary, DaimlerChrysler Canada Inc., Windsor, Canada, bearing this name since 1999, which is selling and pro­moting, inter alia, Complainant's CHRYSLER;
• it asserts common law trademark rights under its company name;
• the disputed domain names are confusingly similar to Complainant’s trademarks;
• Respondent has neither rights nor legitimate interests in respect of the disputed domain names. Neither has Respondent used the domain names before notice of the dis­pute for a bona fide offering of goods or services, nor has he been commonly known by the domain names, nor has he made a legitimate noncommercial or fair use the domain names.
• the <daimlerchrysler.org> domain name was registered on January 30, 1999 and used since January 2000, by Respondent for a fake "consumer forum" with hundreds of sponsored links to commercial web sites.
• the <maybach.net> domain name was registered on February 2, 1999. Since then, Respondent has not used the domain name. The same happened with the <daimelrchrysler.net> domain name;
• it never had a business relation with nor it did even know about Respondent or instructed or authorized Respondent to register the disputed domain names;
• Respondent acted in bad faith when registering and using the domain name because he did not answer to several cease and desist letters of Com­plainant;
• as the <daimlerchrysler.net> and <maybach.net> domain names incorpo­rate Complainant's famous trademarks, DAIMLERCHRYSLER and MAYBACH, it is inconceivable that Respondent could make any use of  the domain names without creating a false impression of association;
• Respondent has engaged in a pattern of bad faith conduct by registering domain names that use famous trademarks and names of others, including ASTON MARTIN, DIE WELT, BADEN-WURTTEMBERG and NUREMBERG.

 

B. Respondent

 

Respondent replies that:

• it is a Canadian corporation incorporated under the Company Act on August 9, 1999 in British Columbia, Canada;
• it acts as a non-profit corporation in that it is a public service forum and has never declared any profits at the end of the year;
• it maintains the <daimlerchrysler.org> website at its own expense; 
• it has a legitimate non-commercial or fair use right to the <daimlerchrylser.org>, <daimlerchrysler.net> and <maybach.net> domain names;
• it does not dispute that Complainant has common law trademarks and/or owns the following trademarks and trademark applications, DAIMLERCHRYSLER registered and used for vehicles nor that DAIMLER and CHRYSLER are in the business of manufacturing automotive vehicles.
• the trademark name “Daimler” as it relates to automobiles is currently held by the Ford Motor Company and the Jaguar company produced the "Daimler Century" in 1996; 
• it is making a legitimate non-commercial or fair use of the <daimlerchrysler.org> domain name without intent for commercial gain nor does it misleadingly divert consumers.  Respondent’s use of <daimlerchrysler.org> corresponds to the specific use of the unsponsored top-level domain “.org” domain as a public forum to express opinions on Complainant’s products and services;

§         Respondent’s rights to use the disputed domain name, <daimlerchrysler.org>, as a public forum are superior in nature and entitled to greater protection under the law;

§         the development of the public forum website occurred well before any notice of the dispute; 

§         it received only one cease and desist letter from Complainant and this happened on November 7, 2000, two years after Respondent registered <daimlerchrysler.org> and approximately one year after Respondent had published its consumer-oriented website. 

§         it never offered to sell the site to Complainant, not even for out-of-pocket expenses.

§         Complainant is unlawfully trying to quash criticism of its corporate policies and products in pursuing this arbitration;

§         it has rights or legitimate interests in respect of the <maybach.net> domain name because MAYBACH is not currently in the business of mass marketing automobiles and also because Complainant has failed to register all the available domain names available to it; 

§         the Respondent is making a legitimate non-commercial or fair use of the <maybach.net> domain name, without intent for commercial gain to misleadingly divert consumers. Even though Respondent’s website is currently under development, it is the intent of Respondent to provide a website similar to <daimlerchrysler.org> under its <maybach.net> domain name.  The intent to use the <maybach.net> domain name for the said purpose makes Respondent’s rights over the disputed domain name superior in nature and entitled to greater protection under the law. 

§         Complainant has no absolute right to use <maybach.net> because "Maybach" is a generic name and it is used in Germany as the name of a suburb of the City of Friedrichsthal, as the name of a restaurant in Cologne and Hamburg as well as the name of a river;

§         Complainant offers no evidence that Respondent attempted to sell or extort money from Complainant or anyone else; 

§         it has not registered the domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain names, nor has Respondent engaged in a pattern of such conduct;

§         it has not registered the domain names primarily for the purpose of disrupting the business of a competitor;

§         it has not intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, nor is there a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location.  The website states that “this site is neither affiliated with nor controlled by DaimlerChrysler.”  On the website it is further stated that “[t]he intent of the site is to share information from DaimlerChrysler owners with other potential DaimlerChrysler owners;”

§         it has held the Tunisian trademark, DAIMLERCHRYSLER, since 1999 for use in education and internet related services which is exactly how it utilizes the Tunisian trademark;

§         it has not engaged in a pattern of conduct of registering domain names that use famous trademarks and names of others, and the examples cited by Complainant cannot be considered in this sense.

 

C. Additional Submissions

 

Complainant’s additional submission

 

In an additional submission Complainant asserts that:

§         the extension of time to respond was granted wrongly to Respondent due to a misrepresentation by Respondent;

§         the DAIMLER trademark has not yet been registered and the application for the registration of this trademark is still pending on the name of Jaguar Cars Ltd.

§         MAYBACH is a well known car-brand and the examples given by Respondent as to the generic nature of this word are not relevant;

§         Respondent does not provide, on the web site to which the domain name resolves, a space for consumers to express their views and opinions on products produced by the multi-national corporations, nor does it offer information about Complainant’s products;

§         Respondent received the first cease and desist letter on August 4, 1999;

§         Respondent’s <astonmartin.org>, <badenwuerttemberg.com>, <badenwuerttemberg.net> and <diewelt.org> domain names infringe third parties rights.

 

Respondent’s additional submission:

 

In an additional submission, Respondent replies that:

§         Complainant has been advised there is no provision under ICANN, or NAF rules, or policies to appeal this forum’s Order dated September 1, 2005 by which Respondent obtained a time extension to file a response; 

§         the example of DAIMLER trademark was used by Respondent to demonstrate Complainant’s overall lack of diligence in pursuing any rights and/or interests it may potentially have in its trade names and also that the DAIMLER trademark does not belong to DaimlerChrysler but rather to Ford Motor Company under its Jaguar subsidiary;

§         Maybach manufactured (not sold) only 126 automobiles in 2004 which is a fact that hardly qualifies it as a world-wide well-known car brand in the Rolls Royce category of name recognition;

§         the broken links and the database down time is due to the fact that the website is maintained by volunteers;

§         it acknowledges receipt of DaimlerChrysler’s cease and desist letter in 2000 and considers that Complainant’s supplemental documentation regarding correspondence in 1999 or 2000 has no bearing on whether Respondent registered the domain names at issue in the Complaint in bad faith;

§         Complainant’s additional submissions regarding the ownership of the domain names <astonmartin.org>, <badenwuerttemberg.com>, <badenwuerttemberg.net> and <diewelt.org> as trademark infringements are not relevant to these proceedings.

 

FINDINGS

Complainant has registered or has filed for the registration of the DAIMLERCHRYSLER trademark in different jurisdictions, as follows:

§         for the German trademark No. 39,825,488 DAIMLERCHRYSLER priority of May 7, 1998, registered and used for, inter alia, vehicles;

§         for international trademark No. 707,283 DAIMLERCHRYSLER with priority of July 2, 1998, registered and used for, inter alia, vehicles and claiming protection for, inter alia, Austria, Benelux, China, Denmark, France, Great Britain, Italy, Norway, Poland, Portugal, România, Russia, Sweden, Switzerland and Spain;

§         for U.S. trademark No. 2,784,572 DAIMLERCHRYSLER with pri­ority of June 17, 1998, registered and used for, inter alia, motor vehicles, and

§         for Canadian trademark application No. 895,376 DAIMLERCHRYS­LER with priority of May 7, 1998, filed and used for, inter alia, vehicles;

Complainant also owns the following registered trademarks for MAYBACH:

§         International trademark No. 450,000 MAYBACH with priority of November 7, 1979, registered and used for, inter alia, automobiles and claiming protection for, inter alia, Austria, Benelux, Denmark, France, Great Britain, Italy, Norway, Poland, Portugal, România, Russia, Sweden, Switzerland and Spain,

§         U.S. trademark No. 2,229,825 MAYBACH with priority of February 12, 1996, registered and used for, inter alia, passenger vehicles, and

§         Canadian trademark No. TMA262281 MAYBACH with priority of November 7, 1979, registered and used for, inter alia, passenger vehicles.

§         German trademark No. 994,569 MAYBACH with priority of November 7, 1979, registered and used for, inter alia, automobiles

 

Respondent does not contend Complainant’s ownership of the trademarks comprised in the disputed domain names and the use of these trademarks in the production and commercialization of vehicles.

 

Respondent registered the <daimlerchrysler.org> domain name on January 30, 1999. The disputed domain name hosts a consumer forum on DAIMLERCHRYSLER vehicles with hundreds of links to commercial sites.

 

Respondent registered the Tunisian trademark DAIMLERCHRYSLER in August 1999 for use in education and internet related services. The application for the registration of the said mark was filed after the registration of the disputed domain names comprising the DAIMLERCHRYSLER trademark.

 

Respondent registered <maybach.net> on February 2, 1999 and has not used it since then.

 

Respondent registered the <daimlerchrysler.net> domain name on February 2, 1999 and has not used it since then.

           

According to the National Arbitration Forum’s Supplemental Rule 6, it is in the Forum’s discretion to determine whether exceptional circumstances exist and to warrant an extension to Respondent. The Panel agrees that there are no appeal procedures against the Forum’s decision to grant or not to grant an extension of time for either of the parties. Having considered so, for the purpose of reaching this decision, the Panel analyzed all the submissions provided by the parties.

DISCUSSION

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.”

 

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)    the 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

 

The rights of Complainant in the trademarks comprised in the disputed domain names are well established through registration with various trademark registries, including the United States Patent and Trademark Office, the Canadian Intellectual Property Office and the German Patent and Trademark Office.  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("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.").

 

The registration by Respondent of the DAIMLERCHRISLER trademark in Tunisia is without relevance in connection to Complainant’s rights in the said mark, because the mere registration in one jurisdiction of a famous trademark of another cannot deprive Complainant of its rights in the DAIMLERCHRISLER trademark. See Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000).

 

Respondent’s submissions regarding the non-exclusive rights of Complainant in the DAIMLERCHRISLER trademark based on the content of the site are also without relevance in this case. As other UDRP panels decided before, trademark holders often suffer from ‘initial interest confusion” where a potential visitor does not immediately reach their site after typing in a confusingly similar domain name and is then exposed to content different from what he or she seeks.  See Arthur Guinness Son & Co. (Dublin) Ltd. v. Macesic, D 2000-1698 (WIPO Jan. 25, 2001), Ansell Healthcare Prods. Inc. v. Australian Therapeutics Supplies Pty, Ltd., D2001 – 0110 (WIPO Apr. 5, 2001). In these cases, traffic is diverted to Respondent’s website, which is operating under the disputed domain name, for the simple reason that the visitors are confused.

 

Respondent’s submissions regarding the non-exclusive rights of Complainant in the MAYBACH trademark, based on the genericness of the word, are also without relevance. MAYBACH is a well-known car brand and it cannot be considered generic for vehicles.

 

For the said reasons, the Panel finds that the disputed domain names, <daimlerchrysler.org>, <daimlerchrysler.net> and <maybach.net> are identical to marks in which Complainant has rights.

 

The addition of the top-level domains “.net” and “.org” are irrevelant for the purposes of Policy ¶ 4(a)(i).  See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he 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 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.”).   

 

Rights or Legitimate Interests

 

a. Rights or legitimate interests in connection to <daimlerchrysler.org>

 

As Complainant asserts and Respondent does not contend, Complainant never had a business relation with nor it did even know about Respondent or instruct Respondent to register the disputed domain names.

Respondent has not been (as an individual, business or other organization) commonly known by the disputed domain names.

The registration of the trademark in Tunisia in August 1999 cannot be considered as creating legitimate interests under the Policy. See Ciccone v. Parisi, Case No. D2000-0847 (WIPO Oct. 12, 2000) which states that:

[I]t would be a mistake to conclude that mere registration of a trademark creates a legitimate interest under the Policy. If an American-based Respondent could establish "rights" vis a vis an American Complainant through the expedient of securing a trademark registration in Tunisia, then the ICANN procedure would be rendered virtually useless. To establish cognizable rights, the overall circumstances should demonstrate that the registration was obtained in good faith for the purpose of making bona fide use of the mark in the jurisdiction where the mark is registered, and not obtained merely to circumvent the application of the Policy.

Id.

Respondent admits that the Tunisian registration was obtained merely to protect his interests in the domain name on the advice of its Canadian intellectual property counsel. Respondent is not located in Tunisia and the registration was not obtained for the purpose of making a bona fide use of the mark in commerce in Tunisia. In addition the registration of the trademark in Tunisia was made after Respondent received a cease and desist letter from Complainant. Complainant provided evidences that the August 4, 1999 letter sent to Respondent had been delivered to it.

Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.

 

The <daimlerchrysler.org> domain name was registered on January 30, 1999 and used since January 2000 for a consumer forum with hundreds of sponsored links to commercial web sites, use which cannot create rights or legitimate interests in the disputed domain name.

 

Respondent asserts free speech rights in holding the disputed domain name. The Panel accepts that Respondent’s rights of free speech entitle it to express his views on the matter.

 

Nevertheless, it is the opinion of the Panel that, the free speech rights have to be exercised genuinely, so that no association of the disputed domain name with eventual commercial activities should exist. The disputed domain name resolves to a site which displays Complainant’s trademark with the specification, “consumer forum.” The page provides for several links, which further resolve to a consumer guide which is a portal for hundreds of commercial links. Respondent has not made any comment concerning this situation. It simply stated that it has not intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, without providing further evidence.

 

In addition, there are several other elements asserted by Complainant and verified by the Panel (as the statement concerning the last updating of the editorial part in 2000, displayed on the website) which lead the Panel to conclude that the consumer forum under the disputed domain name is a fake one, a mere pretext to use Complainant’s well known trademark to attract internet users in order to ultimately obtain a financial gain.

 

Therefore, it is the conclusion of the Panel that Respondent cannot prove any rights or legitimate interests in the disputed domain name.

 

b. Rights and legitimate interests in connection to <daimlerchrysler.net > and <maybach.net>  

 

The <maybach.net> domain name was registered on February 2, 1999. Since then Respondent has not used the domain name.

 

The <daimlerchrysler.net> domain name was registered on August 10, 2000. Since then Respondent has not used the domain name either.

 

Respondent failed to show any use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services or a non-commercial or fair use of the two domain names. The nonuse of the disputed domain names, which are identical to Complainant’s marks, by itself, cannot be considered either 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 TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“The Panel concludes that Respondent's passive holding of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”).

 

In addition, bearing in mind Respondent’s conduct in connection with the registration and the use of the <daimlerchrysler.org> domain name, the Panel considers that there are strong indications that Respondent, by registering the disputed domain names, had the intent to take advantage of Complainant’s well-known trademarks. 

 

Registration and Use in Bad Faith

 

It cannot be disputed that the Respondent is using the <daimlerchrysler.org> domain name to operate a website that features links to various commercial websites. 

 

Such use cannot be considered something else than a specific use to attract Internet users to commercial websites, by taking advantage of the likelihood of confusion that inherently exists between Complainant’s DAIMLERCHRYSLER mark and Respondent’s identical <daimlerchrysler.org> domain name. 

 

The display on the <daimlerchrysler.org> website of the statements saying that “this site is neither affiliated with nor controlled by DaimlerChrysler” and that “[t]he intent of the site is to share information from DaimlerChrysler owners with other potential DaimlerChrysler owner,” would have been considered by the Panel as proof of Respondent’s intent to not benefit from Complainant if the proposed consumer forum would have been a genuine one. The provision of the various links to the commercial websites, on the website to which the disputed domain name resolves, cannot support, in Panel’s opinion, a finding of bona fide registration and use of the <daimlerchrysler.org> domain name.  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 because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s web site.)

 

In addition, Respondent registered the disputed domain names with constructive knowledge of Complainant’s DAIMLERCHRYSLER and MAYBACH marks. Such constructive knowledge may be inferred from Complainant’s registrations of those marks with multiple trademark authorities worldwide. Such constructive knowledge, corroborated with the use of the <daimlerchrysler.org> domain name, are, in the opinion of the Panel, indications of bad faith registration of the <daimlerchrysler.net> and <maybach.net> domain names.

 

Also, passively holding the <daimlerchrysler.net> and <maybach.net> domain names is an element which supports the Panel’s conclusion that Respondent registered and used the domain names in bad faith pursuant to Policy ¶ 4(a)(iii).  See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith). 

 

Some further elements of bad faith registration and use of all the disputed domain names are, in the opinion of the Panel, the cease and desist letters sent by Complainant to Respondent and the pattern of Respondent in by registering domain names that use famous trademarks and names of others.

 

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 <daimlerchrysler.org>, <daimlerchrysler.net> and <maybach.net> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Beatrice Onica Jarka

Panelist
Dated: October 11, 2005

 

 

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