WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Daimler Chrysler A.G. v. James Cruz

Case No. D2000-1554

 

1. The Parties

The Complainant is Daimler Chrysler AG, a German corporation with a place of business at Stuttgart, Germany. It is represented by Ms Judith A Powell of Kilpatrick Stockton LLP of Atlanta, Georgia, USA.

The Respondent is James Cruz of 160N 12th Street, Newark, New Jersey, USA. The Respondent is not represented and has filed no Response.

 

2. The Domain Name and Registrar

The domain name at issue is <driveamercedes.com>. The domain name is registered with Network Solutions Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170, U.S.A. ("NSI").

 

3. Procedural History

The Complaint submitted by Daimler Chrysler AG was received on November 10, 2000 (electronically) and on November, 13 2000, (hard copy) by the World Intellectual Property Organization and Mediation Center ("WIPO Center"). An amended Complaint was filed on November 21, 2000 (electronic copy) and November 24, 2000 (hard copy).

On or about November 17, 2000, a request for Registrar verification was transmitted by the WIPO Center to NSI, requesting it to:

- Confirm that a copy of the Complaint had been sent to it by the Complainant as requested by WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("Supplemental Rules"), paragraph 4(b).

- Confirm that the domain name at issue is registered with NSI.

- Confirm that the person identified as the Respondent is the current registrant of the domain name.

- Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrarís WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the building contact for the domain name.

- Confirm that the Uniform Domain Name Dispute Resolution Policy ("UDRP") was in effect.

- Indicate the current status of the domain name.

By email dated November 21, 2000, NSI advised WIPO Center as follows:

- NSI had received a copy of the Complaint from the Complainant.

NSI is the Registrar of the domain name <driveamercedes.com>

- James Cruz of the above address is shown as the "current registrant" of the domain name. He is also the administrative and billing contact.

- The technical and zone contact for the domain name was shown as Domain, Registration Services, Big NIC Domain Registration Services, 2657 Windmill Parkway #175, Henderson NY 89014, USA.

- NSIís 4.0 Service Agreement is in effect.

- The domain name registration <driveamercedes.com> is currently in "Active" status.

The NSI has currently incorporated in its agreements the policy for Uniform Domain Name Dispute Resolution Policy adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN").

The advice from NSI that the domain name in question is still "active" indicates the Respondent has not requested that the domain name at issue be deleted from the domain name database. The Respondent has not sought to terminate the agreement with NSI. Accordingly, the Respondent is bound by the provisions of NSIís Domain Name Dispute Resolution Policy, i.e., the ICANN policy. The Respondent has not challenged the jurisdiction of the Panel.

Having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, the WIPO Center on November 24, 2000, transmitted by post/courier and by email a notification of the amended Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the amended Complaint was also e-mailed to NSI and ICANN.

Subsequent to the forwarding of the Complaint, the Respondent established contact with the WIPO Center by email of December 19, 2000, the Respondent stated he was on vacation in Europe and unable to respond. He asked whether the Center provided representations and asked for advice as to his next step. The Center advised him on December 20, 2000 that it did not provide representations and that the Panel would determine on its own discretion whether to consider a late response. On December 27, 2000, the Respondent, despite earlier communications, asked if there was a time frame for submitting a Response. The Center replied by return along the lines of its earlier reply. Nothing further has been heard from the Respondent.

The Respondent was advised in the couriered communication that a Response to the Complaint was required within twenty (20) calendar days from date of the commencement of the administrative proceeding (i.e., by December 13, 2000). The Respondent was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email.

The Respondent has filed no Response by December 13, or later. A notice of Respondent default was given by the Center on December 15, 2000.

The Complainant elected to have its Complaint resolved by a single panel member: It has duly paid the amount required of it to the WIPO Center.

On January 10, 2001, the WIPO Center invited the Honorable Sir Ian Barker QC of Auckland, New Zealand, to serve as Sole Panelist in the case. It transmitted to him a statement of acceptance and requested a declaration of impartiality and independence.

On January 10, 2001, the Honorable Sir Ian Barker QC advised his acceptance and forwarded to the WIPO Center his statement of impartiality and independence. The Panelist finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.

On January 12, 2001, WIPO Center forwarded to the Honorable Sir Ian Barker QC by courier the relevant submissions and the record. These were received by him on January 16, 2001. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel would have been required to forward its decision by January 25, 2001.

The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999 ("the Rules") and the Supplemental Rules.

The language of the administrative proceeding is English, being the language of the registration agreement.

 

4. Factual Background

The Complainant owns the following trademarks and service marks:

MERCEDES

Registration No. 41,127

Issued: September 15, 1903

Renewed: April 16, 1993

MERCEDES

Registration No. 100,958

Issued: November 3, 1914

Renewed: November 3, 1994

MERCEDES

Registration No. 76,020

Issued: December 7, 1909

Renewed: January 9, 1990

MERCEDES

Registration No. 1,248,904

Issued: August 23, 1983

Since 1900, the Complainant and its predecessors have adopted and continuously used the mark MERCEDES in connection with motor cars, devices and mechanisms for internal combustion engines, automobile tools, filter elements, and various other parts for automobiles. Complainant has also adopted, continuously used, and obtained multiple registrations for the mark MERCEDES-BENZ in connection with automobiles and goods and services related thereto. These products are advertised and promoted through a wide range of media, including online and are sold throughout the world, including in the United States.

 

5. Partiesí Contentions

The Complainant alleges:

(a) The domain name at issue is confusingly similar to the Complainantís marks because the domain name incorporates the MERCEDES mark exactly and uses the MERCEDES mark as its most salient feature;

(b) The Respondent has no rights or legitimate interests with respect to the domain name because Complainantís (and its predecessorsí) first use and first registration of its MERCEDES mark predate any use the Respondent may have made of "Mercedes" in a trade name, domain name or mark. Any use by the Respondent would have taken place only after the Respondent had knowledge of the Complainantís extensive use of the famous MERCEDES mark and marketing of MERCEDES automobiles because the Respondentís domain name was first registered in September 1999, almost 100 years after the Complainantís first use of the MERCEDES mark;

(c) The domain name was registered and has been used in bad faith based on the following facts:

(i) The Complainant reasonably believes that the Respondent, prior to his adoption and use of the domain name <driveamercedes.com> was aware that the Complainant was the owner of the MERCEDES mark because of the Complainantís widespread and long-standing promotion, marketing and distribution of MERCEDES automobiles in connection with the MERCEDES marks;

(ii) The Complainant DaimlerChrysler has spent millions of dollars in advertising and promoting its goods and services offered in connection with the MERCEDES marks in a wide range of media, including television, radio, print and online;

(iii) The Complainant DaimlerChrysler uses and promotes the MERCEDES mark extensively on the internet. Information regarding MERCEDES vehicles may be accessed at the domain name address <mercedes.com>. In addition, The Complainant owns other domain name registrations that connect to the site and advertises its MERCEDES automobiles in connection with the MERCEDES mark on other locations on the internet;

(iv) The Complainant enjoys substantial sales of its MERCEDES automobiles. For the last few years, DaimlerChrysler has sold annually over 1,000,000 vehicles bearing the MERCEDES mark;

(v) By virtue of the Complainantís longstanding use of the marks, the Complainantís strong reputation for high quality products, its instant name recognition and significant brand awareness established for the marks, the MERCEDES marks have acquired a high degree of public recognition, fame and distinctiveness as symbols of the source of high quality goods and services offered by the Complainant;

(vi) The Respondent is not a licensee or distributor of DaimlerChrysler. The Respondent is not authorized in any way to use the <driveamercedes.com> domain name to promote his site;

(vii) Neither the Respondent nor any related person or entity has ever been commonly known by the domain name at issue;

(viii) The Respondent is not making any legitimate noncommercial or fair use of the domain name at issue;

(ix) The Respondent has internationally attempted, for commercial gain, to attract internet users to his website by creating a likelihood of confusion with the Complainantís famous marks as to the source, sponsorship, affiliation or endorsement of the website or of their products and services. The Respondent has exacerbated such confusion by utilizing the prefix "drive a" in the domain name, clearly referring to driving an automobile manufactured and sold by the Complainant;

(x) The Respondent in fact admitted that he intended to use the <driveamercedes.com> site for commercial gain and that he was trading off the Complainantís famous mark when the Complainant contacted the Respondent to request that the Respondent transfer the name to the Complainant. In the Respondentís letter dated November 3, 1999, he admitted he intended to use the site to rent MERCEDES vehicles to others. The Respondent thus intends to use the <driveamercedes.com> domain name in order to trade upon the publicís recognition of the Complainantís MERCEDES mark and the goodwill associated with it. In a facsimile of November 3, 2000, he denied any intention to infringe the Complainantís trademarks. He was setting up a site to promote a rental car agency for people of lesser fortunes who may never have the chance to drive or own a Mercedes-Benz vehicle;

(xi) Moreover, the Respondent has sought to sell the <driveamercedes.com> domain name for an amount in excess of his documented out-of-pocket costs directly related to the domain name. First, shortly after he registered the domain name, in September, 1999, the Respondent offered the name for sale on the Great Domains.com auction site. Second, after having been contacted by the Complainant, the Respondent sought to sell the domain name to the Complainant for $22,000. As the Respondent admits, that figure exceeds his out-of-pocket costs directly associated with the domain name, because it includes amounts attributable to the Respondentís "time" and "counsel fees". Third, by letter received by the Complainant on November 9 2000, the Respondent threatened to sell the domain name to a third party if the Complainant did not meet his demands;

(xx) Accordingly, the Respondent is seeking to sell the <driveamercedes.com> domain name for an amount that is intended to trade upon the value of the Complainantís MERCEDES mark and the goodwill associated with it.

The Respondent has made no submissions.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the 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".

The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:

- That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

- That the Respondent has no rights or legitimate interests in respect of the domain name; and

- That the domain name has been registered and used in bad faith.

The domain name <driveamercedes.com> is, in the judgment of the Panel, confusingly similar to the Complainantís marks. The addition of the words "drive a" to the domain name is devious given the worldwide reputation of Mercedes automobiles. Persons worldwide accessing the domain name would be bound to think that the domain name had a connection with Mercedes or Mercedes Benz. The Panel decides that the domain name is confusingly similar to the Complainantís marks.

Likewise, the Panel decides that the Respondent has no rights or legitimate interests in the domain name at issue. The Respondent has never suggested to the contrary.

Paragraph 4(b) of the ICANN Policy states:

"For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."

It should be noted that the circumstances of bad faith are not limited to the above.

The Panel considers that the Respondent has registered and used the domain name <driveamercedes.com> in "bad faith" for the reason that the expression is so obviously connected with such a well known motor company that their very use by someone with no connection with the company suggests opportunistic bad faith. Moreover, the Respondentís attitude, demonstrated in his correspondence that he is free to sell the domain name to others, indicates bad faith use. He in fact attempted a sale both to the Complainant and on the internet. This is just another blatant exercise in cybersquatting which, even after a year of ICANN decisions deterring such a practice, seems to continue unabated.

Accordingly, for all the various reasons discussed above, the Panel finds that the domain name <driveamercedes.com> has been registered and is being used by the Respondent in bad faith.

 

7. Legal Considerations

Although entitled to consider principles of law deemed applicable, the Panel finds it unnecessary to do so in any depth. The jurisprudence which is being rapidly developed by a wide variety of WIPO Panelists worldwide under the ICANN Policy provides a fruitful source of precedent which is unnecessary to repeat here. Blatant "cybersquatting" such as is disclosed in this case, should be discouraged. A clearer example would be hard to find.

 

8. Decision

For the foregoing reasons, the Panel decides:

(a) That the domain name registered by the Respondent is identical or confusingly similar to the trademark to which the Complainant has rights;

(b) That the Respondent has no rights or legitimate interests in respect of the domain name; and

(c) That the Respondentís domain name has been registered and is being used in bad faith.

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <driveamercedes.com> be transferred to the Complainant.

 


 

Hon. Sir Ian Barker QC
Sole Panelist

Dated: January 17, 2001