WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Daimler AG v. Registration Private, Domains By Proxy, LLC / Joyson Abraham

Case No. D2019-2176

1. The Parties

The Complainant is Daimler AG, Germany, represented by Heumann Intellectual Property Law, Germany.

The Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Joyson Abraham, Germany.

2. The Domain Name and Registrar

The disputed domain name <mercedes-benz-cars.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 6, 2019. On September 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, September 6, 2019, the Registrar 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 the Complainant on September 9, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on September 11, 2019.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 2, 2019. The Response was filed with the Center on October 1, 2019.

The Center appointed Kaya Köklü as the sole panelist in this matter on October 10, 2019. 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.

4. Factual Background

The Complainant is a leading and well-known car manufacturer.

The Complainant is the owner of the famous trademark MERCEDES-BENZ, which enjoys protection in many jurisdictions worldwide. According to the case record, the first trademark covering protection in Germany was registered already on October 7, 1927 (German trademark registration no. 375067) for (amongst others) “Automobiles” and “Parts of vehicles”.

The Complainant further owns and operates a large number of domain names like <mercedes-benz.com> and <mercedes-benz.de>.

The disputed domain name was created on March 6, 2016.

The Respondent is an individual from Lippstadt, Germany.

At the time of the Decision, the disputed domain name resolves to a website displaying “Mercedes Fan Club” and comprising a compilation of third-party blog articles in relation to cars of the Complainant. Moreover, the website also displays a shopping cart and the words “Dealer page”.

Prior to initiation of the administrative proceedings, the Respondent approached the Complainant and asked whether it is interested in acquiring the disputed domain name. In the subsequent email communication, the Respondent refused an offer of USD 1,000 for the transfer of the disputed domain name. Instead, the Respondent pointed out that the value of the disputed domain name probably exceeds USD 100,000 and that he expects a payment higher than the offered USD 1,000.

5. Parties’ Contentions

A. Complainant

The Complainant requests the transfer of the disputed domain name.

The Complainant is of the opinion that the disputed domain name is confusingly similar to the Complainant’s MERCEDES-BENZ trademark.

Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In particular, the Complainant states that the Complainant has never granted a permission or license to the Respondent to use its trademark as the distinctive part of the disputed domain name.

Finally, it is argued that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant particularly believes that due to the wide recognition of the MERCEDES-BENZ trademark, the Respondent was aware of the MERCEDES-BENZ trademark when registering and using the disputed domain name.

B. Respondent

The Respondent requests the denial of the Complaint.

In essence, the Respondent alleges that he has registered the disputed domain name only because it was available and that his main purpose was (and still is) “to set up OEM specific websites for fans, buyers and sellers of specific brands”.

He asserts not to be aware of any trademark infringement. He particularly points out that he never intended to sell the disputed domain name to anyone else other than the Complainant. Also, the Respondent argues that, although the disputed domain name may be worth more than USD 100,000, he never asked the Complainant to pay this amount.

Additionally, the Respondent questions, why the Complainant has not registered the disputed domain name itself for such a long time.

6. Discussion and Findings

According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

(iii) the disputed domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228. However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. See, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Yet, it is noted that an independent search by visiting the Internet site linked to the disputed domain name has been performed by the Panel. The competence of the Panel to perform such independent search is undisputed and in line with previous UDRP decisions, e.g., Hesco Bastion Limited v. The Trading Force Limited, WIPO Case No. D2002-1038.

Further, it is stated that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the consensus views captured therein.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has registered trademark rights in the mark MERCEDES-BENZ by virtue of various trademark registrations, including trademark registrations covering protection in Germany, where the Respondent is located.

The Panel further finds that the disputed domain name is confusingly similar to the Complainant’s registered MERCEDES-BENZ trademark, as it fully incorporates the Complainant’s trademark. As stated at section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the additions of other terms would generally not prevent a finding of confusing similarity. The mere addition of the dictionary term “cars” does not, in view of the Panel, serve to avoid a finding of confusing similarity between the disputed domain name and the Complainant’s MERCEDES-BENZ trademark.

Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel further finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.

T While the burden of proof on this element remains with the complainant, previous UDRP panels have recognized that this would result in the often impossible task of proving a negative, in particular as the evidence in this regard is often primarily within the knowledge of the respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of paragraph 4(a)(ii) of the Policy. See, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file sufficient evidence or make convincing arguments to demonstrate rights or legitimate interests in the disputed domain name according to the Policy, paragraphs 4(a)(ii) and 4(c).

In its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has never been granted with a trademark license or any other right to use the Complainant’s MERCEDES-BENZ trademark within the disputed domain name.

It is also undisputed that the Respondent is not commonly known by the disputed domain name, based on the case file.

The Respondent has also failed to demonstrate any of the other non-exclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c), or other evidence of rights or legitimate interests in the disputed domain name.

At the time of the Decision, the disputed domain name resolves to a website displaying “Mercedes Fan Club” and a disclaimer that “we are in no way related to Daimler AG and its subsidiaries”. However, the website also displays a shopping cart and the words “Dealer page”, which may suggest that it would be used for commercial purpose. Further, the Panel finds that the content of the website at the disputed domain name appears to be pretextual, which comprises less than a dozen blog articles in relation to the cars of the Complainant from third parties. See section 2.6.1 of the WIPO Overview 3.0. In any event, the Panel particularly believes that the composition of the disputed domain name (by combining the Complainant’s trademark with the word “cars”) carries a significant risk of implied affiliation or association, as stated in section 2.5.1 of the WIPO Overview 3.0. Moreover, the evidence shows that the Respondent attempted to sell the disputed domain name to the Complainant for more than USD 1,000, which in view of the Panel, suggests the real intention of the Respondent was to monetize the disputed domain name.

Also, the allegation by the Respondent that the Complainant could have registered the disputed domain name before, is not convincing. There is no general rule that would allow third parties to register a domain name comprising a registered trademark, just because the trademark owner did not register the respective domain name itself.

As a conclusion, the Panel finds that the Complainant has also satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel is further convinced that the Respondent has registered and is using the disputed domain name in bad faith.

In this regard, the Panel notes the notoriety of the Complainant’s MERCEDES-BENZ trademark. The Panel is convinced that the Respondent had the Complainant’s trademark in mind when registering the disputed domain name.

The Panel further believes that the Respondent’s attempt to highlight his willingness to sell the disputed domain name to the Complainant for more than USD 1,000 by referring to an alleged value of the disputed domain name in the amount of more than USD 100,000 is a strong indication for the Respondent’s bad faith intentions. In view of the Panel, the Respondent’s main purpose is and was to sell the disputed domain name to the Complainant for an amount significantly exceeding out-of-pocket expenses for registering and maintaining the disputed domain name.

As already discussed in Section 6. B. above, the Respondent’s use of the website at the disputed domain name is not, in view of the Panel, in good faith.

The Panel therefore concludes that the disputed domain name was registered and is being used in bad faith and that the Complainant has also satisfied the third element of the Policy, namely, paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <mercedes-benz-cars.com> be transferred to the Complainant.

Kaya Köklü
Sole Panelist
Date: October 25, 2019