DECISION

Mercedes Homes, Inc. v. Ricana Pty. Ltd.

Claim Number:  FA0301000142322

PARTIES

Complainant is Mercedes Homes, Inc., Melbourne, FL (“Complainant”) represented by Patrick F. Roche, of Frese, Nash & Hansen, P.A.. Respondent is Ricana Pty. Ltd., Perth, WA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <mercedeshomestexas.com>, registered with Tucows, Inc.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Honorable Paul A. Dorf (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on January 20, 2003; the Forum received a hard copy of the Complaint on January 21, 2003.

On January 20, 2003, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <mercedeshomestexas.com> is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 January 22, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 11, 2003 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@mercedeshomestexas.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On February 19, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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. Respondent’s <mercedeshomestexas.com> domain name is confusingly similar to Complainant’s MERCEDES HOMES mark.

2. Respondent does not have any rights or legitimate interests in the <mercedeshomestexas.com> domain name.

3. Respondent registered and used the <mercedeshomestexas.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant owns a registered trademark with the United States Patent and Trademark Office for the MERCEDES HOMES mark (Reg. No. 2495868).  Complainant’s MERCEDES HOMES mark was registered on October 9, 2001. 

Complainant uses the MERCEDES HOMES mark in connection with building construction services, namely, residential building developments.  Complainant has used the mark in connection with its construction services since 1985.

Respondent registered the domain name on December 13, 2002.  Respondent uses the domain name to link to a variety of adult-oriented websites, including <pantyhosecafe.com>, <neteetimes.net>, <wwffullyloaded.com>, <emuevents.com>, <ddbras.net>, and <boobs-breasts.com>. 

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.

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:

(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 and/or Confusingly Similar

Complainant has demonstrated its rights in the MERCEDES HOMES mark through proof of trademark registration with the U. S. Patent and Trademark Office.

Respondent’s <mercedeshomestexas.com> domain name incorporates Complainant’s entire MERCEDES HOMES mark along with the addition of the word “texas.”  Consistent precedent has held that the addition of a geographic qualifier does not sufficiently differentiate a domain name from the trademark in question.  At present, the MERCEDES HOMES mark remains the dominant feature and is the only thing in the second level domain capable of identifying a source.  Therefore, Respondent’s <mercedeshomestexas.com> domain name is confusingly similar to Complainant’s mark.  See Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding that the domain name, <walmartcanada.com> is confusingly similar to Complainant’s famous mark); see also JVC Americas Corp. v. Macafee, CPR006 (CPR Nov. 10, 2000) (finding that the domain name registered by Respondent, <jvc-america.com>, is substantially similar to, and nearly identical to Complainant's JVC mark).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has not contested Complainant’s allegations, including the allegation that Respondent has no rights or legitimate interests in the <mercedeshomestexas.com> domain name.  Respondent’s failure to challenge the Complaint allows the Panel to accept all allegations as true, absent any evidence to the contrary, and draw all reasonable inferences in Complainant’s favor.  See 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”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

           

Respondent uses the <mercedeshomestexas.com> domain name to divert to various websites that contain adult content.  Most of the websites contain pornographic images, including <pantyhosecafe.com>, <wwffullyloaded.com> and <boobs-breast.com>.  Such use is presumed to be commercial as Respondent is likely to profit from the increased hits generated by the disputed domain name.  Respondent’s use of the <mercedeshomestexas.com> domain name only serves to tarnish Complainant’s MERCEDES HOMES mark and thus Respondent has no rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(i) or (iii).  See Nat’l Football League Prop., Inc. v. One Sex Entm’t Co., D2000-0118 (WIPO Apr. 17, 2000) (finding that the Respondent had no rights or legitimate interests in the domain names <chargergirls.com> and <chargergirls.net> where the Respondent linked these domain names to its pornographic website); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name).

Respondent has not come forward to present any evidence that would warrant a finding that Respondent is commonly known by the <mercedeshomestexas.com> domain name.  Respondent is only known to this Panel as Ricana Pty. Ltd., as gleaned from the WHOIS information.  Therefore, Respondent has no rights or legitimate interests in the <mercedeshomestexas.com> domain name pursuant to Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the <mercedeshomestexas.com> domain name and Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent’s commercial use of the <mercedeshomestexas.com> domain name to redirect Internet users to adult-oriented websites is likely to confuse Internet users as to Complainant’s affiliation.  The confusion is likely because the <mercedeshomestexas.com> domain name prominently displays Complainant’s MERCEDES HOMES trademark and those typing the domain name into a web-browser are presumably searching for information about Complainant’s home building services, not pornographic websites.  Therefore, Respondent’s diversionary use of the <mercedeshomestexas.com> domain name represents bad faith registration and use under Policy ¶ 4(b)(iv).  See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding bad faith where the Respondent linked the domain name in question to websites displaying banner advertisements and pornographic material); see also MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that the association of a confusingly similar domain name with a pornographic website can constitute bad faith); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <mercedeshomestexas.com> domain name be TRANSFERRED from Respondent to Complainant.

Honorable Paul A. Dorf (Ret.) Panelist

Dated:   March 4, 2003