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Generic Top Level Domain Name (gTLD) Decisions |
DaimlerChrysler Corporation v.
credoNIC.com/DOMAIN FOR SALE
Claim Number: FA0406000284954
PARTIES
Complainant
is DaimlerChrysler Corporation (“Complainant”),
represented by George T. Schooff, 5445 Corporate Drive, Suite 400,
Troy, MI 48098. Respondent is credoNIC.com/DOMAIN FOR SALE
(“Respondent”), P.O. Box 1991, Hallandale, FL 33008.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <bankstreetchryslerjeep.com>,
<upperdarbychrysler.com>, <jeepcityusa.com>, <roebuckchryslerjeep.com>,
<old-colony-dodge.com>
and <valleydodgemt.com>, registered with Enom,
Inc.
PANEL
The
undersigned certify that they have acted independently and impartially and to
the best of their knowledge have no known conflict
in serving as Panelists in
this proceeding.
Houston
Putnam Lowry (Chartered Arbitrator and chair), Tyrus R. Atkinson, Jr. and Karl
V. Fink as Panelists.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on June 9, 2004; the Forum received
a hard copy of the Complaint
on June 14, 2004.
On
June 9, 2004, Enom, Inc. confirmed by e-mail to the Forum that the domain names
<bankstreetchryslerjeep.com>, <upperdarbychrysler.com>, <jeepcityusa.com>,
<roebuckchryslerjeep.com>, <old-colony-dodge.com>
and <valleydodgemt.com> are registered with Enom, Inc. and that Respondent is the
current registrant of the name. Enom, Inc. has verified that Respondent
is
bound by the Enom, 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
June 22, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of July 12,
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@bankstreetchryslerjeep.com,
postmaster@upperdarbychrysler.com,
postmaster@jeepcityusa.com, postmaster@roebuckchryslerjeep.com,
postmaster@old-colony-dodge.com and postmaster@valleydodgemt.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 July 27, 2004, pursuant to Complainant’s request to
have the dispute decided by a three-member
Panel, the Forum appointed Houston
Putnam Lowry (Chartered Arbitrator and chair), Tyrus R. Atkinson, Jr. and Karl
V. Fink 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 names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
FACTUAL AND LEGAL GROUNDS
(i) Background
1.
For many
years, Complainant, DaimlerChrysler Corporation (“DaimlerChrysler”), has
promoted its goods and services throughout the United
States under the marks
CHRYSLER, JEEP and DODGE, among others, to allow consumers to readily identify
those goods and services as
emanating from DaimlerChrysler.
2.
DaimlerChrysler
has sought and obtained multiple federal registrations for marks that include
the words CHRYSLER, JEEP and DODGE,
alone and in combination with various
designs and/or other marks.
3.
All of the Registered Marks are in full force and effect, unrevoked and
uncancelled.
4.
DaimlerChrysler also has common law rights in CHRYSLER, JEEP and DODGE,
alone and in combination with various designs and/or other
marks (hereinafter
referred to as the “Common Law Marks”), due to its long, extensive, and exclusive
use of same.
5.
As a result of DaimlerChrysler’s promotion of its goods and services
over many years under its trademarks and service marks, including
the
Registered Marks and Common Law Marks, as well as consumers’ widespread use of
those goods and services, DaimlerChrysler’s goods
and services have come to be,
and now are, well and favorably known to the public under the Registered Marks
and Common Law Marks.
6.
DaimlerChrysler has thereby built up and now owns valuable goodwill
that is represented by its trademarks and service marks, including
the
Registered Marks and Common Law Marks.
7.
The Registered Marks and Common Law Marks have thus become famous and
distinctive.
8.
In view of the famous and distinctive nature of DaimlerChrysler’s
trademarks and service marks, DaimlerChrysler has also registered
and used many
of its trademarks and service marks as Internet Domain Names, including
CHRYSLER, JEEP and DODGE. See, e.g.,
<JEEP.com>, <CHRYSLER.com>, <DODGE.com> and
<4ADODGE.com>.
9.
Consumers associate the famous and distinctive CHRYSLER, JEEP and DODGE
marks with DaimlerChrysler, the registration and use of Internet
Domain Names
that include these marks. These domain names allow consumers to quickly access
information about DaimlerChrysler’s goods
and services over the Internet.
10. DaimlerChrysler
also permits its authorized dealers to register and use Internet Domain Names
that include its famous and distinctive
trademarks and service marks, thereby
allowing consumers to quickly obtain information about DaimlerChrysler’s goods
and services
provided by that dealer.
11. In the metropolitan
Detroit area, for example, DaimlerChrysler allows its authorized dealers to use
the marks CHRYSLER, JEEP and DODGE
in various Internet Domain Names, including:
<rochesterhillsCHRYSLERJEEP.com>;
<friendlyCHRYSLERJEEP.com>; <northlandCHRYSLERJEEP.com>;
<palaceCHRYSLERJEEP.com>;
and
<suburbanCHRYSLERJEEP.com>;
among others.
12. DaimlerChrysler
also permitted a Canadian dealer, Bank Street Chrysler Jeep, to register and
use the Internet Domain Name <bankstreetchryslerjeep.com>.
13. But when Bank
Street Chrysler Jeep changed its name to Dilawri Chrysler Jeep, it did not
renew the <bankstreetCHRYSLERJEEP.com>
Domain Name.
14. Similarly, when
Roebuck Chrysler Jeep changed its name to Benchmark Chrysler Jeep, it too
allowed its registration of the <roebuckCHRYSLERJEEP.com>
Domain Name to
lapse, and began using the Domain Name <benchmarkCHRYSLERJEEP.com>
instead.
15. In addition,
authorized DaimlerChrysler dealers also registered and used
<upperdarbyCHRYSLER.com> and <valleyDODGEmt.com>
but have since
allowed those registrations to lapse.
16. Finally, an
authorized DaimlerChrysler dealer uses <oldcolonyDODGE.com> as a Domain
Name.
(ii) The domain names registered and used
by Respondent, credoNIC.com, are confusingly similar to marks that
DaimlerChrysler owns
17. Respondent,
credoNIC.com/DOMAIN FOR SALE, registered and is using the Domain Names
<valleyDODGEmt.com>, <JEEPcityusa.com>,
<bankstreetCHRYSLERJEEP.com>, <upperdarbyCHRYSLER.com>,
<old-colony-DODGE.com> and <roebuckCHRYSLERJEEP.com>.
18. Each of the Domain
Names includes one or more of DaimlerChrysler’s Registered Marks and Common Law
Marks.
19. Therefore, the
Internet Domain Names that are the subject of this Complaint are identical or
confusingly similar to DaimlerChrysler’s
Registered Marks and Common Law Marks.
20. Highlighting the
confusion inherent in credoNIC’s registration and use of the Domain Names
<bankstreetCHRYSLERJEEP.com>, <upperdarbyCHRYSLER.com>,
<valleyDODGEmt.com> and <roebuckCHRYSLERJEEP.com> is the fact that
each domain name was previously registered and used
by an authorized
DaimlerChrysler dealer.
21. As a result,
numerous websites still include those Domain Names as hotlinks under the
mistaken belief that Internet users clicking
on the link will be directed to
the authorized DaimlerChrysler dealer’s homepage rather than credoNIC’s
website.
22. For example, the
Montana Business Directory (located at <businessmt.com>) includes a
hotlink to <valleyDODGEmt.com>, along
with a general description of
Valley Dodge of Montana, and the DaimlerChrysler goods and services that Valley
Dodge of Montana provides.
23. Rather than taking
the user to Valley Dodge of Montana’s homepage, however, the user is instead
hijacked to credoNIC’s pornographic
website.
24. Furthermore,
credoNIC’s registration and use of the <old-colony-DODGE.com> Domain Name
is virtually identical to the <oldcolonyDODGE.com>
Domain Name that is
currently used by one of DaimlerChrysler’s authorized dealers, Old Colony
Motors.
25. Thus, Internet
users hoping to access Old Colony Motors’ homepage that mistakenly add hyphens
between the words will also be hijacked
to credoNIC’s pornographic website.
(iii) Respondent credoNIC has no
legitimate rights or interest in the domain names that are the subject of this
Complaint
26. Prior to credoNIC’s
registration and use of the Domain Names that are the subject of this
Complaint, credoNIC has not used any trademark
or service mark in commerce that
is either identical or confusingly similar to those Domain Names.
27. In fact, credoNIC
simply waits for the prior user’s Domain Name registration to expire, whether
intentionally or inadvertently, and
then “snaps up” the registration to try and
resell the Domain Name at an amount substantially in excess of its
out-of-pocket costs.
(iv) Respondent credoNIC’s
registration and use of the domain names that are the subject of this Complaint
are in bad faith
28. As the annexed
documentary evidence demonstrates, consumers inputting any of the Domain Names
at issue are initially taken to credoNIC’s
website featuring hard-core
pornographic material.
29. Consequently,
consumers trying to locate information about DaimlerChrysler’s goods or
services through a Domain Name previously used
by an authorized DaimlerChrysler
dealer will instead be taken to an adult-oriented website.
30. Or, consumers
attempting to locate information about DaimlerChrysler’s goods or services
through Old Colony Motors, a name still used
by an authorized DaimlerChrysler
DODGE dealer, will likewise be directed to the same adult website if the Internet
Domain Name <old-colony-DODGE.com>
is entered.
31. Moreover, by
including DaimlerChrysler’s famous and distinctive JEEP mark in the
<JEEPcityusa.com> Domain Name, credoNIC is
luring unwitting consumers to
its adult website as a result of the confusion that necessarily follows.
32. credoNIC is
therefore attempting to attract Internet users to its pornographic website for
commercial gain by creating a likelihood
of confusion with DaimlerChrysler.
33. Apart from seeking
to profit from the confusion, credoNIC is also offering the Domain Names for
sale at an amount far in excess of
its out-of-pocket costs.
34. Specifically, as
the annexed documentary evidence demonstrates, credoNIC is offering to sell
<upperdarbyCHRYSLER.com>, <roebuckCHRYSLERJEEP.com>,
<old-colony-DODGE.com>, <valleyDODGEmt.com> and
<JEEPcityusa.com> for $500, and <bankstreetCHRYSLERJEEP.com>
for
$250.
35. Furthermore, by
linking these Domain Names to a pornographic website, credoNIC is trying to
coerce their sale at an inflated price
due to the strong consumer association
between the Domain Names and DaimlerChrysler.
36. In addition,
credoNIC’s bad faith registration and use of the Domain Names is shown through
the registration information it provided
the Registrar of the Internet Domain
Names, eNom, Inc.
37. In this regard,
credoNIC provided no contact information beyond a Post Office Box and email
address, neither of which are apparently
active.
38. After all, on April
26, 2004, DaimlerChrysler sent a cease and desist letter to credoNIC at the
address provided, but credoNIC never
responded.
39. Finally, under
facts identical to ours, credoNIC was already ordered to transfer a domain name
as a result of its bad faith registration
and use of <PRUDENTIALsf.com>.
B.
Respondent
Respondent
has filed no submission.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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.”
Paragraph
4(a) of the Policy requires that the 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 the 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.
Complainant
has established rights in the CHRYSLER mark through registration with the
United States Patent and Trademark Office (“USPTO”),
including Reg. No.
2,357,408, issued June 13, 2000, Reg. No. 1,906,450, issued July 18, 1995, Reg.
No. 1,263,266, issued January
3, 1984, Reg. No. 1,513,942, issued November 22,
1988, Reg. No. 570,186, issued February 10, 1953 and Reg. No. 428,619, issued
March
25, 1947. 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. Respondent has the burden of refuting this assumption).
Complainant
also has established rights in the JEEP mark through registration with the
USPTO, including Reg. No. 1,236,540, issued
May 3, 1983, Reg. No. 1,081,322,
issued January 3, 1978 and Reg. No. 526,175, issued June 13, 1950.
Additionally,
Complainant has established rights in the DODGE mark through registration with
the USPTO, including Reg. No. 1,762,717,
issued April 6, 1993, Reg. No.
1,409,844, issued September 16, 1986, Reg. No. 1,189,233, issued February 9,
1982, Reg. No. 569,431,
issued January 20, 1953 and Reg. No. 364,669, issued
February 7, 1939.
The
<bankstreetchryslerjeep.com>, <upperdarbychrysler.com>,
<jeepcityusa.com>, <roebuckchryslerjeep.com> and <valleydodgemt.com>
domain names are confusingly similar to Complainant’s CHRYSLER, JEEP and
DODGE marks because the domain names incorporate Complainant’s
marks in their
entirety and simply add the descriptive
terms, “bank street,” “upper darby,” “city usa,” “roebuck” and “valley
mt,” terms related to Complainant’s dealerships who have subsequently
changed
their names. The mere addition of a
descriptive term to Complainant’s marks does not negate the confusing
similarity of Respondent’s domain names
pursuant to Policy ¶ 4(a)(i)
(especially where Complainant has a history of allowing authorized users of its
trademarks to use names
with such descriptions attached). See
Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000)
(“[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 Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that
because the subject domain name incorporates the VIAGRA mark in its entirety,
and
deviates only by the addition of the word “bomb,” the domain name is
rendered confusingly similar to Complainant’s mark).
The
<old-colony-dodge.com> domain name is confusingly similar to
Complainant’s DODGE mark because the domain name incorporates the DODGE mark
and simply adds
Complainant’s authorized dealer’s name separated by
hyphens. The mere addition of a
descriptive term and hyphens does not negate the confusing similarity of
Respondent’s domain name pursuant
to Policy ¶ 4(a)(i) (especially where
Complainant has a history of allowing authorized users of its trademarks to use
names with
such descriptions attached).
See Chernow Commun. Inc. v.
Kimball, D2000-0119 (WIPO May 18, 2000) (“[T]he use or absence of
punctuation marks, such as hyphens, does not alter the fact that a name
is
identical to a mark."); see also Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb.
Forum Apr. 24, 2000) (finding that punctuation is not significant in
determining the similarity of a domain
name and mark); see also Am.
Online, Inc. v. Anytime Online Traffic School, FA 146930 (Nat. Arb. Forum
Apr. 11, 2003) (finding that Respondent’s domain names, which incorporated Complainant’s entire mark and
merely added the descriptive terms “traffic school,” “defensive driving,” and
“driver improvement”
did not add any distinctive features capable of overcoming
a claim of confusing similarity).
Respondent
has no rights or legitimate interests in the <bankstreetchryslerjeep.com>,
<upperdarbychrysler.com>, <jeepcityusa.com>, <roebuckchryslerjeep.com>,
<old-colony-dodge.com> and <valleydodgemt.com> domain
names. Respondent is not commonly known
by the domain names and has never been authorized or licensed by Complainant to
use Complainant’s
marks and therefore lacks rights and legitimate interests in
the 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); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb.
5, 2001) (finding no rights or legitimate interests because Respondent is not
commonly known by
the disputed domain name or using the domain name in
connection with a legitimate or fair use).
Furthermore,
the user is directed to Respondent’s website, which offers the domain name
registrations for sale. Respondent
lacks rights and legitimate interests in the disputed domain names due to its
willingness to sell the domain name registrations.
See Mothers
Against Drunk Driving v. Shin, FA 154098 (Nat. Arb. Forum May 27, 2003)
(holding that under the circumstances, Respondent’s apparent willingness to
dispose of
its rights in the disputed domain name suggested that it
lacked rights or legitimate interests in the domain name); see also Hewlett-Packard Co. v. High Performance
Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights
or legitimate interests where Respondent registered the domain name
with the
intention of selling its rights). In
this case, the offer to sell the domain name is even part of the name of the
registered owner of the domain names.
This strongly suggests the domain names were acquired with the intent to
sell.
Furthermore,
Respondent registered domain names confusingly similar to Complainant’s marks
to divert Internet users seeking Complainant’s
products and services to
pornographic websites, which evidences bad faith use and registration pursuant
to Policy ¶ 4(a)(iii). See Nat’l
Ass’n of Stock Car Auto Racing, Inc. v. RMG Inc – BUY or LEASE by E-MAIL,
D2001-1387 (WIPO Jan. 23, 2002) (“it is now well known that pornographers rely
on misleading domain names to attract users by confusion,
in order to generate
revenue from click-through advertising, mouse-trapping, and other pernicious
online marketing techniques”);
see also Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000)
(finding bad faith where Respondent attracted users to his website for
commercial gain
and linked his website to pornographic websites); see also
Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum
Mar. 18, 2003) (finding that Respondent’s tarnishing
use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence
that the domain names were being used in bad faith); see also Six
Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003)
(“[W]hatever the motivation of Respondent, the diversion of the domain name to
a pornographic site
is itself certainly consistent with the finding that the
Domain Name was registered and is being used in bad faith”).
Moreover,
Respondent offered the <bankstreetchryslerjeep.com>, <upperdarbychrysler.com>,
<jeepcityusa.com>, <roebuckchryslerjeep.com>, <old-colony-dodge.com>
and <valleydodgemt.com> domain name registrations for re-sale
(and registered them with the intent to re-sell them) and offered no evidence
that the sale
price of the domain name did not exceed its out of pocket
costs. Respondent’s registration of
domain names confusingly similar to Complainant’s well-known marks with the
intent to sell the domain
name registrations evidences bad faith registration
and use of the domain names. See
Banca Popolare Friuladria S.p.A. v. Zago,
D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where Respondent offered the
domain names for sale); see also Am.
Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb.
Forum Nov. 6, 2000) (“general offers to sell the domain name, even if no
certain price is demanded, are evidence
of bad faith”); see also World Wrestling Fed’n Entmt., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000)
(finding that Respondent used the domain name in bad faith because he offered
to sell the domain name
for valuable consideration in excess of any
out-of-pocket costs).
Failure to provide correct whois
information (whether contact information or the domain owner’s correct name) is
also strong evidence
of bad faith. Home
Director, Inc. v. HomeDirector, D2000-0111, (WIPO Apr. 11, 2000); Agent Host Co v. Host Dot Com Invs., AF-00343 (eResolution Oct. 16, 2000)
and Mattel, Inc. v. KPF, Inc., FA 244073 (Nat. Arb. Forum Apr. 26,
2004). In this case, none of the
contact information allowed anyone to contact Respondent.
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 <bankstreetchryslerjeep.com>,
<upperdarbychrysler.com>, <jeepcityusa.com>, <roebuckchryslerjeep.com>,
<old-colony-dodge.com> and <valleydodgemt.com> domain
names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered
Arbitrator and Chair, Panelist
Dated: August 5, 2004
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