Mercedesbenzpromo.net

The timeline behind mercedesbenzpromo.net

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION DaimlerChrysler AG v. Hammond c/o Olu Hammond Claim Number: FA0505000470923 PARTIES Complainant is DaimlerChrysler AG (“Complainant”), represented by Jan Zecher of Gleiss Lutz Rechtsanwaelte, Maybachstr. 6, Stuttgart, 70469, Germany. Respondent is Hammond c/o Olu Hammond (“Respondent”), 805 S. Wheatly, Suite 160, Ridgeland, MS, 39157. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <mercedesbenzpromo.net>, registered with Tucows Inc. PANEL The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically May 2, 2005; the National Arbitration Forum received a hard copy of the Complaint May 4, 2005. On May 2, 2005, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <mercedesbenzpromo.net> is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. verified that Respondent is bound by the Tucows Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy"). On May 6, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 26, 2005, 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@mercedesbenzpromo.net by e-mail. Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On May 31, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant makes the following assertions: 1. The domain name that Respondent registered, <mercedesbenzpromo.net>, is confusingly similar to Complainant’s MERCEDES BENZ mark. 2. Respondent has no rights to or legitimate interests in the <mercedesbenzpromo.net> domain name. 3. Respondent registered and used the <mercedesbenzpromo.net> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, DaimlerChrysler AG, is a famous automotive manufacturer known worldwide. In the past ten years Complainant has sold some 1,000,000 automotive vehicles annually throughout the world. Complainant has used the MERCEDES BENZ mark in commerce since 1900 and has spent billions of dollars on advertising and promoting its MERCEDES BENZ mark internationally. Complainant registered the MERCEDES BENZ mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 285,557 issued August 21, 1926). Respondent registered the <mercedesbenzpromo.net> domain name August 27, 2004. The disputed domain name does not resolve to an active website and has not been used by Respondent to market bona fide goods or services. DISCUSSION 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 will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. Paragraph 4(a) of the Policy requires Complainant to 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. Identical to and/or Confusingly Similar Complainant established using extrinsic proof in this proceeding that it has rights in the MERCEDES BENZ mark through registration of the mark with the USPTO. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that 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. The respondent has the burden of refuting this assumption). The domain name that Respondent registered, <mercedesbenzpromo.net>, is confusingly similar to Complainant’s MERCEDES BENZ mark. The disputed domain name <mercedesbenzpromo.net> incorporates Complainant’s MERCEDES BENZ mark in its entirety and merely adds the generic term “promo.” The disputed domain name <mercedesbenzpromo.net> deletes the space between the words of Complainant’s MERCEDES BENZ mark and adds the generic term “promo” which the Panel assumes was meant to be an abbreviation for “promotion.” Such changes are not enough to overcome a finding of confusing similarity 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 identical mark of the complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Tech. Props., Inc. v. Burris, FA 94424 (Nat. Arb. Forum May 9, 2000) (finding that the domain name <radioshack.net> is identical to Complainant’s mark, RADIO SHACK). Furthermore, the addition of the generic top-level domain “.net” is insufficient to negate the confusing similarity between Respondent’s domain name and Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that <mysticlake.net> is plainly identical to Complainant’s MYSTIC LAKE trademark and service mark); see also Kabushiki Kaisha Toshiba v. Shan Computers, D2000-0325 (WIPO June 27, 2000) (finding that the domain name <toshiba.net> is identical to Complainant’s trademark TOSHIBA); see also Nike, Inc. v. Coleman, D2000-1120 (WIPO Nov. 6, 2000) (finding that the domain name <nike.net> is identical to Complainant’s famous NIKE mark). The Panel finds that Policy ¶ 4(a)(i) has been satisfied. Rights to or Legitimate Interests Complainant established its rights and legitimate interests and alleges that Respondent has no such rights and interests. Respondent failed to respond to the Complaint. Thus, the Panel accepts all reasonable allegations and assertions set forth by Complainant as true and accurate. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard”); see also Vertical Solutions Mgmt., Inc. v. webnet-Mktg., 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). Complainant assertion that Respondent has no rights or legitimate interests in the disputed domain name is sufficient to require Respondent to come forward with proof to the contrary. Respondent did not submit a response and therefore has failed to rebut this allegation and the Panel interprets Respondent’s failure to respond as evidence that Respondent lacks rights and legitimate interests in the <mercedesbenzpromo.net> domain name pursuant to Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). Respondent registered the <mercedesbenzpromo.net> domain name August 27, 2004, and has not made any use of the disputed domain name. This period of inactivity is sufficient to establish that Respondent has no rights or legitimate interests in the domain name pursuant to Policy ¶¶ 4(c)(i) and (iii). See Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”); see also Chanel, Inc. v. Heyward, D2000-1802 (WIPO Feb. 23, 2001) (finding no rights or legitimate interests where “Respondent registered the domain name and did nothing with it”); see also Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or service or develop the site demonstrates that Respondents have not established any rights or legitimate interests in the domain name). Furthermore, nothing in the record indicates that Respondent is either commonly known by the disputed domain name or authorized to register domain names featuring Complainant’s famous mark. Thus, the Panel finds that Respondent has not established rights or legitimate interests in the <mercedesbenzpromo.net> 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 the respondent’s WHOIS information implies that the respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no 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). The Panel finds that Policy ¶ 4(a)(ii) has been satisfied. Registration and Use in Bad Faith Complainant alleges that Respondent acted in bad faith in registering and holding the disputed domain name. Respondent registered and used the <mercedesbenzpromo.net> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) by failing to market any bona fide goods or services since the date that Respondent registered the domain name. Respondent’s passive holding of the <mercedesbenzpromo.net> domain name, which is confusingly similar to Complainant’s MERCEDES BENZ mark, evidences bad faith. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (holding that, despite Respondent’s decision to passively hold the disputed domain name, “Respondent has made its intention clear and the continuing threat hanging over the Complainant’s head constitutes bad faith use”); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that given the long use and fame of Complainant’s mark, Respondent’s conduct is evidence of bad faith); see also Mondich & Am. Vintage Wine Biscuits, Inc. v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that Respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy). Furthermore, Respondent registered the <mercedesbenzpromo.net> domain name with actual or constructive knowledge of Complainant’s rights in the MERCEDES BENZ mark due to Complainant’s aggressive promotion of the mark in commerce and the resulting worldwide acclaim. Registration of a domain name that is confusingly similar to another’s mark, despite actual or constructive knowledge of another’s rights in the mark, is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”). The Panel finds that Policy ¶ 4(a)(iii) has been satisfied. DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <mercedesbenzpromo.net> domain name be TRANSFERRED from Respondent to Complainant. Hon. Carolyn Marks Johnson, Panelist Dated: June 14, 2005 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.