DaimlerChrysler AG v. Mercantile Europarts
Claim Number: FA0512000604985
Complainant is DaimlerChrysler AG (“Complainant”), represented by Jan Zecher, of Gleiss Lutz Rechtsanwaelte, Maybachstr. 6, Stuttgart 70469, Germany. Respondent is Mercantile Europarts (“Respondent”), 6747 S.W. 8 Street, Miami, FL 33144.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <mercedesbenzparts.com>, registered with Network Solutions, 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.
David S. Safran as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 6, 2005; the National Arbitration Forum received a hard copy of the Complaint on December 8, 2005.
On December 7, 2005, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <mercedesbenzparts.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. 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 December 13, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 3, 2006 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@mercedesbenzparts.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
Respondent submitted a Response on January 26, 2006 that is not considered to be in compliance with ICANN Rule 5(a), as it was received after the response deadline and was submitted in hard copy only. The Panel has elected not to consider Respondent’s untimely and deficient Response, except as noted in the “Discussion” below.
On January 30, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David S. Safran as Panelist.
Complainant submitted an Additional Submission on January 31, 2006 that is not considered to be in compliance with Supplemental Rule 7, as it was received after the deadline for additional submissions. The Panel has similarly elected not to consider Complainant’s untimely Additional Submission.
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 <mercedesbenzparts.com> domain name is confusingly similar to Complainant’s MERCEDES BENZ mark.
2. Respondent does not have any rights or legitimate interests in the <mercedesbenzparts.com> domain name.
3. Respondent registered and used the <mercedesbenzparts.com> domain name in bad faith.
B. Respondent failed to submit a timely Response in this proceeding.
Complainant, DaimlerChrysler AG, manufactures and markets automotive vehicles for sale worldwide. Complainant markets these products under various brand names and trademarks, the most prominent of which is the MERCEDES BENZ mark (Reg. No. 657,386 issued January 21, 1958) registered with United States Patent and Trademark Office (“USPTO”).
Respondent registered the <mercedesbenzparts.com> domain name on February 18, 1997. Respondent’s disputed domain name resolves to a website that features information regarding Complainant’s products and links to websites in which Internet users have the opportunity to purchase products in competition with the products Complainant provides. These websites use registered trademarks of Complainant without any indication of their registered status and without attribution of these trademarks to Complainant. Furthermore, these websites contain no disclaimer of any relationship between Respondent and Complainant, nor do they provide a link by which persons arriving at the sites looking for Complainant can be redirected to it.
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 timely response, the Panel shall decide this administrative proceeding solely on the basis of Complainant's representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules, but in recognition of the fact that a response was filed, albeit belatedly, no inferences of the type permitted pursuant to paragraph 14(b) of the Rules will be drawn.
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 MERCEDES BENZ mark
through registration with the USPTO. 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 [or] have acquired secondary meaning”); see also 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.”).
Complainant contends that Respondent’s <mercedesbenzparts.com> domain name is confusingly similar to Complainant’s mark. The disputed domain name features Complainant’s entire MERCEDES BENZ mark and merely removes a space between the two terms while adding the generic word “parts,” a term directly related to the business in which Complainant engages. Furthermore, evidence presented by Complainant indicates that the term “Mercedes Benz Parts” is used by Complainant on its website to describe the same parts offered for sale by Respondent via the <mercedesbenzparts.com> domain name. The Panel finds that the removal of spaces in between words is irrelevant in determining the confusingly similar nature of a disputed domain name, as spaces are impermissible in domain name registrations. Furthermore, the addition of generic terms such as “parts,” especially those that have a connection to Complainant’s business, fails to sufficiently distinguish Respondent’s <mercedesbenzparts.com> domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with the complainant’s registered mark “llbean” does not circumvent the complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy); see also Brambles Indus. Ltd. v. Geelong Car Co. Pty. Ltd., D2000-1153 (WIPO Oct. 17, 2000) (finding that the domain name <bramblesequipment.com> is confusingly similar because the combination of the two words "brambles" and "equipment" in the domain name implies that there is an association with the complainant’s business).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <mercedesbenzparts.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Due to Respondent’s failure to respond to the Complaint, the Panel infers that Respondent does not have rights or 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 the complainant has asserted that respondent does not have 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 the complainant that the respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant contends that Respondent is using the
confusingly similar <mercedesbenzparts.com> domain name to operate
a website featuring links to websites that sell products in competition with
Complainant. The Panel finds that such
diversionary use is neither a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii). See 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”); see also Glaxo Group Ltd. v. WWW Zban,
FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not
using the domain name within the parameters of Policy ¶¶ 4(c)(i) or (iii)
because the respondent used the domain name to take advantage of the
complainant's mark by diverting Internet users to a competing commercial site).
Furthermore, Complainant contends that Respondent is
neither licensed to use or register domain names featuring the MERCEDES BENZ
mark, nor is Respondent commonly known by the disputed domain name. The Panel finds that the evidence indicates
that Respondent uses <mercedesbenzparts.com> domain name to
indicate the products that it sells and not to identify itself; thus, the Panel
finds that Respondent is not commonly known by the <mercedesbenzparts.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See Charles Jourdan Holding
AG v. AAIM, D2000-0403 (WIPO June 27, 2000)
(finding no rights or legitimate interests where (1) the respondent is not a
licensee of the complainant; (2) the complainant’s prior rights in the domain
name precede the respondent’s registration; (3) the respondent is not commonly
known by the domain name in question); see also Ian
Schrager Hotels, L.L.C. v. Taylor, FA
173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable
evidence to support the assertion that a respondent is commonly known by a
domain name, the assertion must be rejected).
The Panel finds that
Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s use of the <mercedesbenzparts.com>
domain name to operate a website featuring links to websites in which Internet
users can purchase competing products for Respondent’s own commercial gain is
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See 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, Complainant contends that
Internet users will likely become confused as to Complainant’s sponsorship of
or affiliation with the resulting website.
The Panel finds this to be further evidence of Respondent’s bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See 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.”); see also Amazon.com, Inc. v. Shafir,
FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain
name at issue in direct competition with Complainant, and giving the impression
of being affiliated with or sponsored by Complainant, this circumstance
qualifies as bad faith registration and use of the domain name pursuant to
Policy ¶ 4(b)(iv).”). The Panel also
finds further evidence of bad faith in Respondent’s
use of registered trademarks of Complainant on its website without any
indication of their registered status and without attribution of these
trademarks to Complainant coupled, with the absence of a disclaimer of any
relationship between Respondent and Complainant, or a link by which persons
arriving at the sites looking for Complainant can be redirected to it.
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 <mercedesbenzparts.com> domain name be TRANSFERRED from Respondent to Complainant.
David S. Safran, Panelist
Dated: February 2, 2006
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