Wwwmercedes-benz.com

The timeline behind wwwmercedes-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 Daimler AG v. SAP Solve Claim Number: FA0906001269367 PARTIES Complainant is Daimler AG (“Complainant”), represented by Jan Zecher of Fish & Richardson P.C., Germany. Respondent is SAP Solve (“Respondent”), India. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <wwwmercedes-benz.com>, registered with Lead Networks Domains Pvt. Ltd. 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 June 19, 2009; the National Arbitration Forum received a hard copy of the Complaint June 23, 2009. On June 24, 2009, Lead Networks Domains Pvt. Ltd. confirmed by e-mail to the National Arbitration Forum that the <wwwmercedes-benz.com> domain name is registered with Lead Networks Domains Pvt. Ltd. and that Respondent is the current registrant of the name. Lead Networks Domains Pvt. Ltd. verified that Respondent is bound by the Lead Networks Domains Pvt. Ltd. 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 July 1, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 21, 2009, 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@wwwmercedes-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 July 27, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit 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, <wwwmercedes-benz.com>, is identical to Complainant’s MERCEDES-BENZ mark. 2. Respondent has no rights to or legitimate interests in the <wwwmercedes-benz.com> domain name. 3. Respondent registered and used the <wwwmercedes-benz.com> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant is in the automobile industry and markets its automobiles under the MERCEDES-BENZ mark, which Complainant registered with the United States Patent and Trademark Office (“USPTO”) February 5, 1957 (Reg. No. 657,386), and with the Indian national trademark authority August 2, 1955 (Reg. No. 170,268). Complainant has sold millions of its automobiles each year for the last ten years, and has used its MERCEDES-BENZ mark continuously in commerce since 1926. Respondent registered the <wwwmercedes-benz.com> domain name November 15, 2004. The disputed domain name resolves to a website that contains sponsored links to third-party websites that offer products competing with Complainant’s sales. 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." Given 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. 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 the 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 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 to 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 demonstrated that it has a long-standing trademark registration with the USPTO, and the Panel finds that Complainant has rights in the MERCEDES-BENZ mark pursuant to Policy ¶ 4(a)(i). The Panel finds that Complainant’s trademark with the Indian trademark authority also gives Complainant rights in the MERCEDES-BENZ mark pursuant to Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)). Complainant contends that Respondent’s <wwwmercedes-benz.com> domain name is confusingly similar to its MERCEDES-BENZ mark. The <wwwmercedes-benz.com> domain name differs from Complainant’s mark in two ways: (1) the letters “www” have been added to the beginning of the mark; and (2) the generic top-level domain (gTLD) “.com” has been added. The Panel finds that neither the addition of the letters “www” to the beginning of a mark nor the addition of the gTLD “.com” sufficiently distinguishes a domain name from the incorporated mark for the purposes of Policy ¶ 4(a)(i). See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that the respondent’s domain name <wwwbankofamerica.com> is confusingly similar to the complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”); see also Register.com Inc. v. House, FA 167970 (Nat. Arb. Forum Aug. 22, 2003) (finding the prefix “www” followed by the trademark with no period separating them did not distinguish the mark and was confusingly similar); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel finds that because these changes do not minimize or eliminate the resulting likelihood of confusion, Respondent’s disputed domain name is therefore confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i). Rights to or Legitimate Interests Complainant contends that Respondent lacks all rights and legitimate interests in the <wwwmercedes-benz.com> domain name. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights or legitimate interests in the disputed domain name. The Panel finds that Complainant made a prima facie case under Policy ¶ 4(a)(ii) and that Respondent submitted no evidence to the contrary. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”). Complainant contends that Respondent is not commonly known by the <wwwmercedes-benz.com> domain name and that it has not ever been owned or held a license to use the MERCEDES-BENZ mark. The WHOIS listing for the disputed domain name lists Respondent as “SAP Solve.” Without any evidence in the record that is contrary to Complainant’s contentions, the Panel finds that Respondent is not commonly known by the <wwwmercedes-benz.com> domain name pursuant to Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"). At the website that resolves from the disputed <wwwmercedes-benz.com> domain name, Respondent is linking to websites that compete with Complainant’s business. The Panel finds that Respondent’s use of the <wwwmercedes-benz.com> domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (holding that the respondent’s use of disputed domain names to market competing limousine services was not a bona fide offering of goods or services under Policy ¶ 4(c)(i), as the respondent was appropriating the complainant’s CAREY mark in order to profit from the mark). The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii). Registration and Use in Bad Faith Complainant contends that Respondent is diverting Internet customers from Complainant’s website to Respondent’s website that resolves from the disputed domain name, and that this diversion creates confusion caused by the similarity between the MERCEDES-BENZ mark and the <wwwmercedes-benz.com> domain name. Complainant also contends that Respondent is intentionally disrupting Complainant’s business through this diversion. Respondent’s disruption of Complainant’s business by advertising competing goods compels the Panel to find that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names). Complainant also contends that Respondent is gaining commercially from the website that resolves from the <wwwmercedes-benz.com> domain name, by collecting click-through fees from the third-party websites. The Panel finds that Respondent’s commercial gain supports findings of Respondent’s registration and use of the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv)). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant). The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii). 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 <wwwmercedes-benz.com> domain name be TRANSFERRED from Respondent to Complainant. Hon. Carolyn Marks Johnson, Panelist Dated: August 10, 2009. 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.