DaimlerChrysler AG v. Autoparts Web Solutions c/o Lowell Mann
Claim Number: FA0604000676663
Complainant is DaimlerChrysler AG (“Complainant”), represented by Jan Zecher, of Gleiss Lutz Rechtsanwaelte, Maybachstr. 6, Stuttgart, Germany 70469. Respondent is Autoparts Web Solutions c/o Lowell Mann (“Respondent”), 1 Oxford Valley Rd., Suite 850, Langhorne, PA 19047.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <mercedes-parts-online.com>, registered with Register.com.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 11, 2006; the National Arbitration Forum received a hard copy of the Complaint on April 13, 2006.
On April 11, 2006, Register.com confirmed by e-mail to the National Arbitration Forum that the <mercedes-parts-online.com> domain name is registered with Register.com and that Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com 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 April 17, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 8, 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@mercedes-parts-online.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 12, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant is a leading manufacturer of automobiles and parts, including the MERCEDES line of automobiles.
Complainant has sold over 1,000,000 automobiles bearing the MERCEDES mark throughout the past ten years and has spent billions of dollars on advertising and promotional materials.
Complainant has registered numerous trademarks in connection with the conduct of its business, including the MERCEDES mark, registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 41,127 issued October 20, 1902).
Respondent registered the <mercedes-parts-online.com> domain name June 23, 2002.
Complainant has not licensed or otherwise authorized Respondent to employ its mark in a domain name.
Respondent’s domain name resolves to a website that provides Internet users the opportunity to purchase automotive replacement parts for Complainant’s Mercedes products online as well as automotive parts for other competing manufacturers.
Respondent’s <mercedes-parts-online.com> domain name is confusingly similar to Complainant’s MERCEDES mark.
Respondent does not have any rights or legitimate interests in the <mercedes-parts-online.com> domain name.
Respondent registered and uses the disputed domain name <mercedes-parts-online.com> in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established rights in the MERCEDES mark through registration with the USPTO. 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.”
Respondent does not deny that its <mercedes-parts-online.com> domain name is confusingly similar to Complainant’s mark. Respondent’s domain name features Complainant’s entire MERCEDES mark and merely adds the generic terms “parts” and “online” along with hyphens to separate the particular terms. Neither the addition of such generic terms, especially those with a direct relation to the business in which Complainant engages, nor the addition of hyphens is insufficient to distinguish Respondent’s disputed domain name from Complainant’s well-known mark pursuant to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the mark of a complainant combined with a generic word or term); see also Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that the disputed domain names <caterpillarparts.com> and <caterpillarspares.com> were confusingly similar to the registered trademark CATERPILLAR because “the idea suggested by the disputed domain names and the registered trademarks is that the goods or services offered in association with [the] domain name are manufactured by or sold by the Complainant or one of the Complainants [sic] approved distributors. The disputed trademarks contain one distinct component, the word Caterpillar,” See also Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003): “The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”
Therefore the Panel finds that Policy ¶ 4(a)(i) has been
satisfied.
Complainant alleges that Respondent has no rights or legitimate interests in the <mercedes-parts-online.com> domain name. Once Complainant makes a prima facie showing in support of its allegations, the burden shifts to Respondent to show that it has protectable rights or legitimate interests. Because Respondent has failed to respond to the Complaint, the Panel is entitled to and does infer 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 a complainant asserts that a respondent does not have rights or legitimate interests with respect to a domain name, it is incumbent on that 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 appropriate circumstances, the assertion by a complainant that a respondent does not have rights or legitimate interests in a contested domain name is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest exists); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004):
Respondent’s
failure to respond to the Complaint functions as an implicit admission that
[Respondent] lacks rights and legitimate interests in the disputed domain
name. It also allows the Panel to
accept all reasonable allegations set forth…as true.
However, the Panel may, and in this instance does,
nonetheless elect to analyze the available evidence to determine whether it
would support a finding of rights or legitimate interests in Respondent.
It is here uncontroverted that Respondent is using the <mercedes-parts-online.com>
domain name to operate a website which provides Internet users the opportunity
to purchase automotive parts for use in Complainant’s products as well as those
of other automobile manufacturers. Such
a use of the confusingly similar <mercedes-parts-online.com>
domain name is neither a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use
pursuant to Policy ¶ 4(c)(iii). See Caterpillar
Inc. v. Huth, FA 169056 (Nat. Arb.
Forum Sept. 2, 2003): “Respondent lacks rights in the disputed domain names
because Respondent competes with Complainant by selling Complainant's used
parts without a license from Complainant to do so.” See also Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat.
Arb. Forum Oct. 27, 2003) (finding that a 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”).
Furthermore, Complainant contends, and Respondent does not deny, that Respondent is neither commonly known by the disputed domain name nor licensed to register names containing Complainant’s mark. In the absence of evidence showing otherwise, the Panel finds that Respondent is not commonly known by the disputed domain name for purposes of Policy ¶ 4(c)(ii). See 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); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where a respondent was not commonly known by the mark and never applied for a license or permission from a complainant to use the trademarked name).
The Panel thus finds that Policy ¶ 4(a)(ii) has been
satisfied.
Respondent has made no effort to refute Complainant’s
contention that Respondent is using the <mercedes-parts-online.com>
domain name to sell automotive parts in direct competition with
Complainant. Such use is evidence of
bad faith registration and use under Policy ¶ 4(a)(iii). See
S. Exposure
v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding
that a respondent acted in bad faith by attracting Internet users to a website
that competes with a complainant’s business);
see also Computerized Sec.
Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding
that a respondent’s use of the <saflock.com> domain name to offer goods
competing with the complainant’s illustrates the respondent’s bad faith
registration and use of the domain name pursuant to Policy ¶ 4(b)(iv)).
Finally, it appears that Respondent registered the contested
domain name with either actual or constructive knowledge of Complainant’s
rights in the MERCEDES mark by virtue of Complainant’s prior registration of
that mark with the United States Patent and Trademark Office. Registration of a confusingly similar domain
name despite such actual or constructive knowledge evidences bad faith
registration and use of the domain name pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506
(Nat. Arb. Forum Oct. 24, 2002); see
also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct.
4, 2002).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <mercedes-parts-online.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 25, 2006
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