Mercdes-benz.com

The timeline behind mercdes-benz.com

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 DaimlerChrylser AG v. Cinquemille Corp. Claim Number: FA0710001094616 PARTIES Complainant is DaimlerChrysler AG (“Complainant”), represented by Jan Zecher, of Lovells LLP, Alstertor 21, Hamburg 20095 Germany. Respondent is Cinquemille Corp. (“Respondent”), P.O. Box N 7776-348, Templeton Building, Lyford Cay, Nassau, New Providence 9e56 pw BS. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <mercdes-benz.com>, registered with Moniker Online Services, Inc. PANEL 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. Terry F. Peppard as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on October 17, 2007; the National Arbitration Forum received a hard copy of the Complaint on October 22, 2007. On October 17, 2007, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <mercdes-benz.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. registration agreement 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 October 23, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 13, 2007 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@mercdes-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 November 17, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding. 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. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant makes the following assertions: Complainant and its predecessors-in-interest have continuously used the MERCEDES-BENZ mark since the 1920s in connection with the manufacture of automobiles. Complainant holds trademark registrations of the MERCEDES-BENZ mark in numerous jurisdictions world-wide, including with the German Patent and Trademark Office (“GPTO”) (Reg. No. 375,067, issued April 25, 1925), and the United States Patent and Trademark Office (“USPTO”) (Reg. No. 657,386, issued February 9, 1957). Complainant has not granted Respondent permission to use the MERCEDES-BENZ mark in any way. Respondent’s <mercdes-benz.com> domain name was registered on July 12, 2007. The disputed domain name resolves to a commercial search engine and links page containing various links to competitors of Complainant. Respondent’s <mercdes-benz.com> domain name is confusingly similar to Complainant’s MERCEDES-BENZ mark. Respondent does not have any rights or legitimate interests in the <mercdes-benz.com> domain name. Respondent registered and uses the <mercdes-benz.com> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS (1) the domain name registered by Respondent is confusingly similar to a trademark 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. 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 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 a 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: i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and ii. Respondent has no rights or legitimate interests in respect of the domain name; and iii. the domain name has been registered and is being used in bad faith. Identical and/or Confusingly Similar Complainant has sufficiently established its rights in the MERCEDES-BENZ mark pursuant to Policy ¶ 4(a)(i) through registration of the mark with the USPTO and the GPTO. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates; rather, it is sufficient that a complainant can demonstrate registration of its mark in some jurisdiction); see also U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003): [O]nce the USPTO has made a determination that a mark is registrable, by so issuing a registration, as indeed was the case here, an ICANN panel is not empowered to nor should it disturb that determination. Respondent’s <mercdes-benz.com> domain name is almost identical to Complainant’s mark, but for the omission of one “e” in the middle of the word “MERCEDES” and the inclusion of the generic top-level domain (“gTLD”) “.com.” It is well-established that the inclusion of a gTLD, and a misspelling or omission of one letter from a mark, will not distinguish a disputed domain name. See, for example, Guinness UDV N. Am., Inc. v. Dallas Internet Servs., D2001-1055 (WIPO Dec. 12, 2001) (finding the <smirnof.com> domain name confusingly similar to a complainant’s SMIRNOFF mark because merely removing the letter “f” from the mark was insignificant); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of a domain name such as “.net” or “.com” does not affect the domain for the purpose of determining whether it is identical or confusingly similar to a competing mark). As a result, we conclude that Respondent’s domain name is confusingly similar to Complainant’s mark. The Panel therefore concludes that Complainant has satisfied Policy ¶ 4(a)(i). Rights or Legitimate Interests Under Policy ¶ 4(a)(ii), even where, as here, Respondent has defaulted, Complainant must establish a prima facie case that Respondent has no rights to or legitimate interests in the disputed domain name. See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000): Respondent's default, however, does not lead to an automatic ruling for Complainant. Complainant still must establish a prima facie case showing that under the Uniform Domain Name Dispute Resolution Policy it is entitled to a transfer of the domain name. Complainant has established a prima facie case. The burden is therefore shifted to Respondent to demonstrate that it does have rights or legitimate interests in the disputed domain name. See 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. See also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once a complainant asserts that a respondent has no rights or legitimate interests with respect to a domain, the burden shifts to that respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). Respondent has failed to submit a Response to the Complaint. We may thus presume that Respondent has no rights to or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002): “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).” 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.” We will nonetheless examine the record to determine if there is any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name in consideration of the factors listed in Policy ¶ 4(c). We first note in this connection that nowhere in Respondent’s WHOIS information or elsewhere in the record is there any indication that Respondent is or ever was commonly known by the disputed domain name. Further, Respondent does not dispute the allegation of the Complaint that Complainant has not granted Respondent permission to use the MERCEDES-BENZ mark in any way. We therefore conclude that Respondent is not commonly known by the <mercdes-benz.com> domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a 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 interest where a respondent was not commonly known by the mark there in issue and never applied for a license or permission from a complainant to use the trademarked name). We next observe that there is no dispute that Respondent’s <mercdes-benz.com> domain name resolves to a commercial search engine and links page containing links to direct competitors of Complainant. This is neither 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). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that a respondent’s diversionary use of a complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to that complainant’s competitors, was not a bona fide offering of goods or services); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that a respondent’s use of a disputed domain name to redirect Internet users to a financial services website, which competed with the business of a complainant, was not a bona fide offering of goods or services). We are also cognizant of the fact that Respondent’s <mercdes-benz.com> domain name is an evidently intentional misspelling of Complainant’s mark, which is evidence of typo-squatting. This further demonstrates that Respondent has no rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark, and that this “‘typo-squatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”). The Panel thus concludes that Complainant has satisfied Policy ¶ 4(a)(ii). Registration and Use in Bad Faith Respondent’s <mercdes-benz.com> domain name resolves to a webpage featuring links to various competitors of Complainant. We may presume that Respondent benefits commercially from the search engine and links contained on its webpage for each misdirected Internet user thus routed to a competitor of Complainant. This is evidence of Respondent’s bad faith registration and use of the disputed domain name because Respondent is taking advantage of the confusing similarity between the disputed domain name and Complainant’s mark within the meaning of Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003): “Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003): “Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’” Moreover, Respondent’s <mercdes-benz.com> domain name is an evidently intentional misspelling of Complainant’s mark. We deem this to be typo-squatting and itself further evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”); see also Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003): “Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).” For these reasons, the Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii). DECISION Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED. Accordingly, it is Ordered that the <mercdes-benz.com> domain name be TRANSFERRED forthwith from Respondent to Complainant. Terry F. Peppard, Panelist Dated: November 30, 2007 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.