national arbitration forum

DECISION

DaimlerChrysler AG v. Ling Shun Shing

Claim Number:  FA0411000367655

PARTIES

Complainant is DaimlerChrysler AG (“Complainant”), represented by Jan Zecher of Gleiss Lutz Rechtsanwaelte, Maybachstr. 6, 70469 Stuttgart, Germany.  Respondent is Ling Shun Shing (“Respondent”), 138 Yi Xue Yuan Road, 200032 Shanghai, P.R. China.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <daimlercrysler.com> and <daimerchrysler.com>, registered with Nameking.com, 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.

James A. Carmody, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 22, 2004; the National Arbitration Forum received a hard copy of the Complaint on November 22, 2004.

On November 23, 2004, Nameking.com, Inc. confirmed by e-mail to the National Arbitration Forum that the domain names <daimlercrysler.com> and <daimerchrysler.com> are registered with Nameking.com, Inc. and that Respondent is the current registrant of the names. Nameking.com, Inc. has verified that Respondent is bound by the Nameking.com, 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 November 29, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 20, 2004 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@daimlercrysler.com and postmaster@daimerchrysler.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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

On December 28, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.

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 names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <daimlercrysler.com> and <daimerchrysler.com> domain names are confusingly similar to Complainant’s DAIMLERCHRYSLER mark.

2. Respondent does not have any rights or legitimate interests in the <daimlercrysler.com> and <daimerchrysler.com> domain names.

3. Respondent registered and used the <daimlercrysler.com> and <daimerchrysler.com> domain names in bad faith.

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

FINDINGS

Complainant, DaimlerChrysler AG, is in the automotive vehicle industry.  Complainant owns numerous trademark registrations for the DAIMLERCHRYSLER mark in several countries, including Germany (No. 39,825,488 dated May 7, 1998).  Complainant also holds an international trademark registration for the DAIMLERCHRYSLER mark (No. 707,283, dated July 2, 1998), which is valid in several countries, including Austria, Benelux, China, Denmark, France, Great Britain, Italy, Norway, Poland, Portugal, Romania, Russia, Sweden, Switzerland and Spain.

Complainant and its legal predecessors have used the “Daimler” element of the mark since 1886 and the “Chrysler” element since 1924.  Complainant and its legal predecessors have sold over 1,000,000 automotive vehicles annually worldwide.  Additionally, Complainant has spent billions of dollars on advertising and the promotion of its automotive vehicles through print, radio, television, the Internet, and various other forms of media.  Furthermore, DaimlerChrysler China Ltd. is a subsidiary of Complainant located in Beijing, China, which sells and promotes Complainant’s cars throughout China, Respondent’s purported location.   

Respondent registered the <daimlercrysler.com> domain name on September 9, 2002, and the <daimerchrysler.com> domain name on September 19, 2002.  Respondent is using the disputed domain names to divert Internet users to a website that features a generic search engine and displays links to websites for various third-party goods and services.  The website also contains a list of links for Complainant and several of Complainant’s competitors in the automotive vehicle industry.  Respondent presumably receives payment for diverting users to these websites.       

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 established in this proceeding that it has rights in the DAIMLERCHRYSLER mark through registration in numerous countries, including Germany and China.  See 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 and that Respondent has the burden of refuting this assumption); see also 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.”).

The <daimlercrysler.com> and <daimerchrysler.com> domain names are confusingly similar to Complainant’s DAIMLERCHRYSLER mark because the domain names are simple misspellings of the mark, omitting either the letter “h” or “l” from Complainant’s mark.  The mere omission of a letter from Complainant’s registered mark is insufficient to distinguish the domain names or to negate the confusing similarity of Respondent’s domain names pursuant to Policy ¶ 4(a)(i).  See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to Complainant’s STATE FARM mark).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.   

Rights or Legitimate Interests

Complainant alleges that Respondent does not have rights or legitimate interests in the <daimlercrysler.com> and <daimerchrysler.com> domain names, which contain simple misspellings of Complainant’s registered DAIMLERCHRYSLER mark.  Once Complainant has made a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by Complainant that Respondent has no right or legitimate interest is sufficient to shift the burden of proof to Respondent to demonstrate that such a right or legitimate interest does exist).

Furthermore, since Complainant has made the prima facie showing and Respondent has not responded, the Panel is entitled to accept all reasonable allegations and inferences in the Complaint as true.  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 is using the <daimlercrysler.com> and <daimerchrysler.com> domain names to redirect Internet users to a website that features a generic search engine and links to websites for various products and services.  The website also displays links for several car companies, including Complainant and some of its competitors.  The Panel finds that Respondent’s use of domain names confusingly similar to Complainant’s DAIMLERCHRYSLER mark to attract Internet users interested in Complainant’s products and services to Respondent’s unrelated website displaying links and various hyperlinks is not in connection with 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 Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that Respondent’s diversionary use of Complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that Respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to Complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name); see also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that Respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names).

Moreover, Complainant has argued that Respondent is not commonly known by the <daimlercrysler.com> or <daimerchrysler.com> domain names.  Furthermore, Complainant has not authorized Respondent to use its mark or to register the disputed domain names.  Therefore, the Panel finds that Respondent has not established rights or legitimate interests in the disputed domain names 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); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

Thus, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied. 

Registration and Use in Bad Faith

           

Respondent is using the <daimlercrysler.com> and <daimerchrysler.com> domain names to attract Internet users interested in Complainant’s DAIMLERCHRYSLER goods and services to Respondent’s commercial websites.  Respondent has used domain names confusingly similar to Complainant’s mark to create a likelihood of confusion between the mark and Respondent’s commercial websites.  Respondent’s practice of diversion for commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent).

Although each of the four circumstances listed under Policy ¶ 4(b), if proven, evidences bad faith use and registration of a domain name, additional factors can also be used to support findings of bad faith registration and use.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”).

Respondent’s registration of the <daimlercrysler.com> and <daimerchrysler.com> domain names, which incorporate misspelled versions of Complainant’s well-known registered mark, suggests that Respondent knew of Complainant’s rights in the DAIMLERCHRYSLER mark.  Furthermore, the domain names divert Internet users to a website that lists several of Complainant’s competitors in the automobile industry.  Thus, the Panel finds that Respondent registered and used the domain names in bad faith pursuant to Policy ¶ 4(a)(iii) because Respondent chose the disputed domain names based on the distinctive and well-known qualities of Complainant’s mark.  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”); see also 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).

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 <daimlercrysler.com> and <daimerchrysler.com> domain names be TRANSFERRED from Respondent to Complainant.

James A. Carmody, Esq., Panelist

Dated:  January 10, 2005

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