WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Daimler AG v. Whois privacy services, provided by DomainProtect LLC/Designbureau Ltd., Domain Manager
Case No. D2010-1269
1. The Parties
Complainant is Daimler AG of Stuttgart, Germany, represented by Gleiss Lutz, Düsseldorf, Germany.
Respondent is Whois privacy services, provided by DomainProtect LLC/Designbureau Ltd., Domain Manager both of Saint Petersburg, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <mercedes-shop.com> is registered with DomReg Ltd. d/b/a LIBRIS.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2010. On July 30, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 3, 2010, DomReg Ltd. d/b/a LIBRIS.com transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 10, 2010, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on August 13, 2010 including this new information.
On August 10, 2010, the Center sent an email Communications to the parties in relation to the language of the proceedings. On the same day, Complainant sent a request that English be the language of the proceedings. Respondent did not submit any comments regarding this matter.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 23, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 12, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 19, 2010.
The Center appointed Paul E. Mason as the sole panelist in this matter on September 24, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Language of the Proceedings
According to UDRP Rules and practice, the proceedings are normally conducted in the same language as the Registration Agreement. In this case the Registration Agreement is in Russian.
With respect to the issue of language of the proceedings, the Center sent an email communication to the parties on August 10, 2010 in English and Russian which stated in part:
“Accordingly, the Complainant is requested to provide at least one of the following:
1) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or
2) submit the Complaint translated into Russian; or (In this connection, please note that the Center makes available a model Complaint in Korean, Spanish, Portuguese, Japanese, French and English on the Center’s website at www.wipo.int/amc. The model Complaint is available at https://www.wipo.int/amc/en/docs/complaint-eudrp.doc, with other language options available in the upper right-hand side of the webpage.)
3) submit a request for English to be the language of the administrative proceedings. Such request shall include arguments and supporting material (to the extent not already provided in the Complaint) as to why the proceedings should be conducted in English.
Such considerations may include for example the language used in pre-Complaint correspondence between the parties, the identity of the parties, the nationality and place of residence of the parties, and any other evidence of familiarity with the requested language. Should the Complainant already have submitted such request in its Complaint, it is requested to confirm that it has nothing further to add to it.
In all cases, if the Respondent is intending to participate in these proceedings, and/or has any comments on the Complainant’s submission replying to this notification, the Respondent is requested to submit these to the Center by August 15, 2010.
Specifically in the case of the Complainant submitting (or indicating that it will submit) a request for the language of proceedings to be English, and the Respondent objects to such request, the Respondent is invited to indicate that objection for the record, and to submit any arguments/supporting materials (in light of the considerations enumerated in paragraph 3) above as to why the proceedings should not be conducted in English.
Please note that if we do not hear from you by this date, we will proceed on the basis that you have no objection to the Complainant’s request that English be the language of proceedings.”
In this case, the Complainant’s arguments as to why the proceedings should be conducted in English even though the Registration Agreement is in Russian, were primarily these:
a) Respondent appears to be very familiar with the English language, as the disputed domain name resolves to a website containing English and German language content only, not Russian. A screen shot of this website taken by Complainant on July 29, 2010 (Annex C to the Complaint) shows content in English and some German, not Russian.
b) The phone number provided in the WhoIs information database is not a Russian telephone number. Rather it appears to be a toll-free number in the United States.
The Panel attempted to visit the website “www.mercedes-shop.com” on September 24, 2010 but was not able to successfully resolve to this site as it appears to be inactive. As Respondent has not challenged these points, the Panel finds that as of July 29,2010 Respondent‘s website contained English language content. Therefore the Panel finds it appropriate to conduct these proceedings in English.
4. Factual Background
According to pages 7 – 8 of the Complaint, Complainant owns, among others, the following relevant trademark registrations:
United States trademark no. 41,127 MERCÉDÈS registered on September 15, 1903 for “motor cars”, with claimed date of first use in commerce in December 1900. Note that under United States trademark law, rights to a mark accrue as from date of its first use in commerce, rather than registration.
United States trademark no. 100,958 MERCEDES registered on November 3, 1914 for “priming devices for internal -combustion engines, cranking mechanisms for internal-combustion engines, carburetors” with claimed date of first use in commerce on November 12, 1909.
United States trademark no. 657,386 MERCEDES-BENZ registered on January 21, 1958 for, inter alia, “automobiles, motor trucks, and parts thereof”.
European Community trademark no. 139998 MERCEDES registered on February 2, 1999 for, inter alia, ,“vehicles”.
International Registration no. 447764 MERCEDES registered on September 29, 1979 with protection in the Russian Federation for, inter alia, “maintenance, repair of automobiles”.
German trademark no. 151574 MERCEDES registered on November 13, 1911 for, inter alia, “vehicles of all kinds and their parts”.
The disputed domain name was registered no earlier than October 9, 2005.
5. Parties’ Contentions
A. Identical or confusingly similar
The component “mercedes” in the domain name is identical to Complainant’s famous trademarks.
The suffix “shop” is an ordinary descriptive word which is insufficient to distinguish the disputed domain name from Complainant’s marks. The “.com” denominator likewise is insufficient to distinguish the domain name from Complainant’s marks.
B. Rights or Legitimate Interests
Complainant states that it has never authorized Respondent to register or use the disputed domain name; that Respondent has not been using the domain name for a goo bona fide offering of goods or services; and that Respondent does not make noncommercial fair use of the domain name.
C. Registered and Used in Bad Faith
Since Complainant’s world famous marks have been registered and in commerce for so many years before the domain name was registered, Respondent must have known of their existence when registering the domain name. Therefore the registration must have been in bad faith in an effort to create confusion on the part of Internet visitors.
Further, the July 29, 2010 screenshot of the website “www.mercedes-shop.com” shows that it is primarily being used to offer the domain name for sale, with amounts below USD 500 not being considered. Therefore the offers for sale are well above registrant’s out-of-pocket costs, constituting a bad faith use of the disputed domain name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds the domain name to be confusingly similar to Complainant’s well-known trademarks.
Rather than distinguishing the domain name from Complainant’s marks, the suffix “-shop” only heightens possible confusion between them, as it implies an authorized online sales outlet for Mercedes vehicles and parts.
Accordingly, the Panel finds that Policy, paragraph 4(a)(i) is satisfied.
B. Rights or Legitimate Interests
A complainant has the burden of proof to demonstrate that a respondent has no rights or legitimate interests in a domain name. However, this would lead to an often impossible task to prove a negative, requiring information that is often primarily within the knowledge of the respondent. Instead, the consensus view among UDRP panels is that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied the requirements of demonstrating that the respondent has no rights or legitimate interests in the domain name.
Complainant in this proceeding has provided prima facie evidence that Respondent has no rights or legitimate interests in the disputed domain name. As Respondent has not answered this Complaint and given the circumstances of this case, the Panel finds that Respondent has not rebutted Complainant’s prima facie evidence on this issue and therefore has no rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that Policy, paragraph 4(a)(ii) is satisfied.
C. Registered and Used in Bad Faith
As the trademark MERCEDES has been well-known worldwide for so many years, it is inconceivable to this Panel that Respondent was unaware of it when registering the disputed domain name. (See TPI Holdings, Inc. v. Roxane Gwyn, WIPO Case No. D2009-0824; TPI Holdings, Inc. v. Elaine Noe, WIPO Case No. D2009-0568; TPI Holdings, Inc. v. Carmen Armengol, WIPO Case No. D2009-0361; TPI Holdings, Inc. v. Alfredo Rowland, WIPO Case No. D2008-0960; TPI Holdings Inc. v. Shola Ajiboye, WIPO Case No. D2007-1019).
As noted earlier in this decision, the Panel attempted to visit the website “www.mercedes-shop.com” on September 24, 2010 but was unable to resolve to this site as it appeared to be inactive. Without any reply from Respondent, the Panel finds the presentation of the screen shot of this site taken by Complainant in July 29, 2010 to constitute evidence of Respondent’s attempt to use the site to sell the domain name at a price far exceeding its out of pocket registration costs. This is an explicitly stated example in the paragraph 4(i) of the Policy of bad faith use of a domain name.
In this case, given that there are a number of factors indicating bad faith, the Panel finds that the disputed domain name has been registered and used in bad faith.
Accordingly, the Panel finds that Policy, paragraph 4(a)(iii) is satisfied.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <mercedes-shop.com> be transferred to Complainant.
Paul E. Mason
Dated: October 8, 2010