DaimlerChrysler AG v. NOLDC, Inc
Claim Number: FA0604000677360
Complainant is DaimlerChrysler AG (“Complainant”), represented by Jan Zecher, of Gleiss Lutz Rechtsanwaelte, Maybachstr. 6, 70469 Stuttgart, Germany. Respondent is NOLDC, Inc (“Respondent”), 838 Camp Street, Apartment C, New Orleans, LA 70130.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <mecedes-benz.com> and <mercede-benz.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and Domain Contender, LLC, respectively.
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.
Hon. Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 12, 2006; the National Arbitration Forum received a hard copy of the Complaint on April 17, 2006.
On April 12, 2006, Intercosmos Media Group, Inc. d/b/a Directnic.com and Domain Contender, LLC confirmed by e-mail to the National Arbitration Forum that the <mecedes-benz.com> and <mercede-benz.com> domain names are registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and Domain Contender, LLC, respectively, and that Respondent is the current registrant of the names. Intercosmos Media Group, Inc. d/b/a Directnic.com and Domain Contender, LLC has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.com and Domain Contender, LLC registration agreements 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@mecedes-benz.com and postmaster@mercede-benz.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 15, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <mecedes-benz.com> and <mercede-benz.com> domain names are confusingly similar to Complainant’s MERCEDES BENZ mark.
2. Respondent does not have any rights or legitimate interests in the <mecedes-benz.com> and <mercede-benz.com> domain names.
3. Respondent registered and used the <mecedes-benz.com> and <mercede-benz.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant DaimlerChrysler AG has been operating in the business of automotives since the early 1900s. In the course of its business, Complainant has acquired trademark rights for the MERCEDES BENZ mark through registration of the mark with trademark authorities throughout the world including the United States Patent and Trademark Office (“USPTO”) (Reg. No. 657,386, issued January 21, 1958). Complainant has consistently used its MERCEDES BENZ mark in connection with its automobiles in commerce since that time.
Respondent registered the <mecedes-benz.com> and <mercede-benz.com> domain names on February 27, 2005. Respondent’s domain names resolve to a website with sponsored links to cars, car parts and car related services offered by third parties.
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.
Complainant currently holds trademark registrations for the MERCEDES BENZ mark through registration with the USPTO. Previous panels have found that a complainant’s federal trademark registration establishes the complainant’s rights in the mark in cases such as 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.”). In the present case, Complainant has met this threshold requirement through registration of its mark with the USPTO. 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.").
Complainant argues that Respondent’s <mecedes-benz.com> and <mercede-benz.com> domain names are confusingly similar to Complainant’s MERCEDES BENZ mark for several reasons. These reasons include the addition of a hyphen between the two terms and the omission of the letters “r” and “s.” The panel in Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003), found “[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).” The Panel finds that similarly, Respondent’s addition of a hyphen to the domain names in the present case does not adequately distinguish the <mecedes-benz.com> and <mercede-benz.com> domain names from Complainant’s MERCEDES BENZ mark. See Reed Elsevier Props. Inc. v. Weekly Publishers, FA 151536 (Nat. Arb. Forum May 5, 2003) (“Inverting or transposing words in a trademark is not sufficient to avoid confusing similarity because the two words create the same commercial impression and meaning.”).
Additionally, in Reuters Ltd. v. Global Net 2000, Inc.,
D2000-0441 (WIPO July 13, 2000), the panel found 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. Likewise, the Panel in the
present case concludes that Respondent’s omission of the letters “r” and “s”
does not eliminate the confusingly similar nature of the domain names from
Complainant’s mark. 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).
Furthermore, the panel in Nevada State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003), stated “the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.” Thus, the Panel finds that the addition of the generic top-level domain “.com” in Respondent’s <mecedes-benz.com> and <mercede-benz.com> domain names does not negate the confusing similarity of the disputed domain names from Complainant’s MERCEDES BENZ mark pursuant to Policy ¶ 4(a)(i). See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
The Panel concludes that Complainant has met the requirements for Policy ¶ 4(a)(i).
Complainant contends that Respondent does not have any rights or legitimate interests in the <mecedes-benz.com> and <mercede-benz.com> domain names. When a complainant establishes a prima facie case pursuant to Policy ¶ 4(a)(ii), the burden shifts to the respondent to prove that it has rights or legitimate interests. 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 Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); 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).”). However, the Panel now chooses to examine whether the evidence supports Respondent’s rights or legitimate interests.
In Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000), the panel found the respondent did not have any rights or legitimate interests where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name. In the present case, Respondent has not offered any evidence and there is no proof in the record suggesting that Respondent is commonly known by the disputed domain name. Thus, the Panel concludes that Respondent has not established rights or legitimate interests in the disputed domain name pursuant to 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).
Furthermore, in Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002), the panel found that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services. Respondent in the present case is using the disputed domains name to redirect Internet users to a website displaying links to cars, car parts and car related services offered by third parties. Thus, the Panel concludes that Respondent’s portal website featuring links to third party websites offering competing goods and services 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). The Panel further finds that Respondent has failed to establish rights or legitimate interests in the <mecedes-benz.com> and <mercede-benz.com> domain names pursuant to Policy ¶ 4(a)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that the respondent’s use of the disputed domain name to host a series of hyperlinks and a banner advertisement was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name).
The Panel concludes that Complainant has met the requirements for Policy ¶ 4(a)(ii).
In G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) the panel found that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using a confusingly similar domain name to attract Internet users to its commercial website. In the present case, Respondent’s <mecedes-benz.com> and <mercede-benz.com> domain names incorporate Complainant’s mark and diverts Internet users to various commercial websites, including those offering automobile products and services similar to those offered by Complainant. The Panel concludes that Respondent’s commercial use of the disputed domain names is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the 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)).
Additionally, Complainant contends that Respondent has engaged in a pattern of registering domain names that use famous marks owned by others such as “porche” “macy’s,” “wedding channel,” “cortizide” and “anxietol.” See Dr. Ing. H.c. F. Porche AG v. Kentech, Inc. a.k.a. Helois Lab a.k.a. Orion Web a.k.a. Titan Net a.k.a. Panda Ventures a.k.a. Sprial Matrix and Domain Purchase, NOLDC, Inc., D2005-0890 (WIPO Oct. 24, 2005); see also WeddingChannel.com v. NOLDC, Inc., FA 310971 (Nat. Arb. Forum Sept. 21, 2004); see also MedaBiotics Laboratories, L.L.C. v. NOLDC, Inc., FA 346252 (Nat. Arb. Forum Dec. 7, 2004). Previous panels such as the one in Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) have found that the respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks. Therefore, the Panel finds that the present Respondent’s adverse involvement in previous UDRP proceedings evidences Respondent’s bad faith registration and use of the disputed domain names pursuant to Policy ¶ 4(a)(iii). See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <Marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)); see also Nabisco Brands Co. v. Patron Group, Inc., D2000-0032 (WIPO Feb. 23, 2000) (holding that registration of numerous domain names is one factor in determining registration and use in bad faith).
Additionally, because Respondent’s
website promotes products in competition with Complainant, the Panel infers
that Respondent is using the domain names to disrupt Complainant’s business by
diverting Internet users who are interested in Complainant’s product to its own
website. Using the disputed
domain names to disrupt Complainant’s business constitutes bad faith
registration and use pursuant to Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered
a domain name confusingly similar to Complainant's mark to divert Internet
users to a competitor's website. It is a reasonable inference that Respondent's
purpose of registration and use was to either disrupt or create confusion for
Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and]
(iv).”); see also S.
Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered
the domain name in question to disrupt the business of the complainant, a
competitor of the respondent).
Furthermore, in Samsonite Corp. v. Colongy Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000), the panel held that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration. Because Respondent is located in the United States, Complainant’s registration of its MERCEDES BENZ mark with the USPTO serves as constructive notice of Complainant’s rights in the mark to Respondent. Thus, the Panel finds that by registering domain names combining variations of Complainant’s mark despite its constructive knowledge of Complainant’s rights, Respondent has registered the <mecedes-benz.com> and <mercede-benz.com> domain names in bad faith. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”).
The Panel concludes that Complainant has met the requirements for Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mecedes-benz.com> and <mercede-benz.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: May 29, 2006
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