DECISION

DaimlerChrysler AG v. Kotobi Group c/o Mohammad Hossein Erfani a/k/a None

Claim Number:  FA0407000301767

PARTIES

Complainant is DaimlerChrysler AG (“Complainant”), represented by Jan Zecher of Gleiss Lutz Rechtsanwaelte, Maybachstr. 6, 70469, Stuttgart, Germany.  Respondent is Kotobi Group c/o Mohammad Hossein Erfani a/k/a None (“Respondent”), Grand Tehran Bazaar, 50/1 Shahid Fallahi Street, 19877 Tehran, Iran.

REGISTRARS AND DISPUTED DOMAIN NAMES

The domain names at issue are <daimlerchrysleriran.com>, <daimlerchrysler-iran.com>, <daimlerchrysleriran.info>, <daimlerchryslerme.com>, <daimlerchryslerme.info>, <daimlerchrysler-uae.com>, <daimlerchrysleruae.info>, and <mercedesworld.info>, registered with Bulkregister, Llc. and R146-Lrms.

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 (the "Forum") electronically July 22, 2004; the Forum received a hard copy of the Complaint July 28, 2004.

On July 28, 2004, Bulkregister, Llc. confirmed by e-mail to the Forum that the domain names <daimlerchrysleriran.com>, <daimlerchrysler-iran.com>, <daimlerchryslerme.com>, and <daimlerchrysler-uae.com> are registered with Bulkregister, Llc. and that Respondent is the current registrant of the names. Bulkregister, Llc. verified that Respondent is bound by the Bulkregister, Llc. 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").

Likewise, on July 28, 2004, R146-Lrms confirmed by e-mail to the Forum that the domain names <daimlerchrysleriran.info>, <daimlerchryslerme.info>, <daimlerchrysleruae.info>, and <mercedesworld.info> are registered with R146-Lrms and that Respondent is the current registrant of the names. R146-Lrms verified that Respondent is bound by the R146-Lrms registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with the Policy.

On August 4, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 24, 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@daimlerchrysleriran.com, postmaster@daimlerchrysler-iran.com, postmaster@daimlerchrysleriran.info, postmaster@daimlerchryslerme.com, postmaster@daimlerchryslerme.info, postmaster@daimlerchrysler-uae.com, postmaster@daimlerchrysleruae.info, and postmaster@mercedesworld.info 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 August 31, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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. The domain names that Respondent registered, <daimlerchrysleriran.com>, <daimlerchrysler-iran.com>, <daimlerchrysleriran.info>, <daimlerchryslerme.com>, <daimlerchryslerme.info>, <daimlerchrysler-uae.com>, <daimlerchrysleruae.info>, and <mercedesworld.info> domain names are confusingly similar to Complainant’s DAIMLERCHRYSLER and MERCEDES marks.

2. Respondent has no rights to or legitimate interests in the domain names <daimlerchrysleriran.com>, <daimlerchrysler-iran.com>, <daimlerchrysleriran.info>, <daimlerchryslerme.com>, <daimlerchryslerme.info>, <daimlerchrysler-uae.com>, <daimlerchrysleruae.info>, and <mercedesworld.info>.

3. Respondent registered and used the following domain names in bad faith, <daimlerchrysleriran.com>, <daimlerchrysler-iran.com>, <daimlerchrysleriran.info>, <daimlerchryslerme.com>, <daimlerchryslerme.info>, <daimlerchrysler-uae.com>, <daimlerchrysleruae.info>, and <mercedesworld.info>.

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

FINDINGS

Complainant registered its DAIMLERCHRYSLER mark with the German trademark authority May 7, 1998 (Reg. No. 39,825,488) in connection with automotive vehicles and telecommunication.  Similarly, Complainant registered its DAIMLERCHRYSLER mark with the Iran trademark authority April 17, 2002 (Reg. No. 101,292) in connection with the same.  Complainant registered its DAIMLER-CHRYSLER mark with the European Community July 17, 1998 (Reg. No. 879,759) in connection with automotive vehicles and advertising.  Complainant also registered its MERCEDES mark with a variety of worldwide jurisdictions including the United States Patent and Trademark Office.  Complainant registered the MERCEDES mark October 20, 1902, in connection with “motor-cars.” (Reg. No. 41,127). In the last ten years, Complainant and its legal predecessors have sold worldwide some 1,000,000 and more automotive vehicles annually bearing the MERCEDES mark.

Respondent registered the disputed domain names <daimlerchrysleriran.com>, <daimlerchrysler-iran.com>, <daimlerchrysleriran.info>, <daimlerchryslerme.com>, <daimlerchryslerme.info>, <daimlerchrysler-uae.com>, and <daimlerchrysleruae.info> between October 18 and 19, 2002.  Respondent registered the disputed domain name <mercedesworld.info> October 8, 2001.

These disputed domain names connect to a single page that is used as an auction site for the resale of the corresponding domain names.  The attached websites display the title “Domain Planet,” followed by the greeting: “Welcome to Domain Planet.”  Under the greeting, it says: “Congratulations!  [Domain Name] is available!” 

The domain names are listed in a table with their respective asking prices.  The table lists the following disputed domain name registrations as being for sale for the following sums: <daimlerchrysleriran.com> ($3,000), <daimlerchrysler-iran.com> ($100), <daimlerchrysleriran.info> ($500), <daimlerchryslerme.com> ($45,000), <daimlerchryslerme.info> ($28,000), <daimlerchrysler-uae.com> ($7,000), <daimlerchrysleruae.info> ($5,000), and <mercedesworld.info> ($55,000).

Under the table, the following message is displayed:

To make an offer on any of our domain names, please read these instructions.  Next to each available domain name you’ll find a link to the Make Your Offer Form.  Please use the form to make your offer.  The Last Bid price for the Domain shall be listed next to the Domain name or the note “Make Offer”.  Bids for the Domain shall be in U.S. Dollars and may be subect to counter offers by others in minimum $500.00 increments until bidding is closed.  Buyer will be notified by e-mail if the offer has been accepted, or if someone else has made a higher bid.  If your offer is accepted, you will be notified by e-mail.

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 will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.

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 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 established by extrinsic proof in this proceeding that it registered its DAIMLERCHRYSLER and MERCEDES marks with appropriate governmental trademark authorities.  Thus, Complainant established rights in each respective mark under paragraph 4(a)(i) of the Policy.  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the 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); see also Wal-Mart Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000) (finding that the failure of Complainant to register all possible domain names that surround its substantive mark does not hinder Complainant’s rights in the mark. “Trademark owners are not required to create ‘libraries’ of domain names in order to protect themselves”).

In determining the similarity between domain names and marks, there is no significance given to generic top-level domains or hyphens under the Policy.  Therefore, additions of the generic top-level domains “.com” and “.info,” as well as the hyphens to the domain names at issue are immaterial in determining the similarity between the domain names and Complainant’s DAIMLERCHRYSLER and MERCEDES marks.  See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that the addition of a top-level domain is without significance); see also Teradyne Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (“[The] addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen."); see also InfoSpace.com v. Ofer, D2000-0075 (WIPO Apr. 27, 2000) (“The domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features.”).

The disputed domain names, <daimlerchrysleriran.com>, <daimlerchrysler-iran.com>, <daimlerchrysleriran.info>, <daimlerchryslerme.com>, <daimlerchryslerme.info>, <daimlerchrysler-uae.com>, and <daimlerchrysleruae.info>, incorporate Complainant’s DAIMLERCHRYSLER mark in its entirety.  The disputed domain name, <mercedesworld.info>, incorporates Complainant’s MERCEDES mark in its entirety.  It is significant in comparing the similarity of a domain name and mark under the Policy that a domain name incorporates a mark in its entirety.  See Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“The fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish identical or confusing similarity for purposes of the Policy.”); see also Nikon, Inc. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2000) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name); see also Magnum Piering, Inc. v. Mudjackers & Wilson, D2000-1525 (WIPO Jan. 29, 2001) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name).

Each of the disputed domain names incorporated one of Complainant’s marks in its entirety and merely added a generic, descriptive, or geographic term such as “Iran,” “me,” “UAE” (a common abbreviation for the United Arab Emirates), and “world.”  A domain name that merely adds a generic, descriptive, or geographic term to a mark has been consistently found to be confusingly similar to the mark under paragraph 4(a)(i) of the Policy.  See Novell, Inc. v. Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the domain name <novellsolutions.com> confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” to the mark because even though “the word 'solutions' is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”); see also Fidelity Int’l Ltd. v. Florida760, FA 203903 (Nat. Arb. Forum Dec. 27, 2003) (“The Panel finds that the <fidelity-international.biz> domain name is confusingly similar to the FIDELITY mark owned by Complainant because the domain name fully incorporates the mark and merely adds the generic term 'international' and generic top-level domain '.biz' to the mark.”); see also Am. Int’l Group, Inc. v. Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (“Respondent's <aigassurance.com> domain name is confusingly similar to Complainant's AIG mark because the disputed domain name appropriates Complainant's entire mark and adds the generic or descriptive term 'assurance' to the end of the mark. The addition of this generic or descriptive term does not significantly differentiate the domain name from the mark under Policy 4(a)(i) because the term 'assurance' relates directly to Complainant's business of providing insurance services.”).

Accordingly, the Panel finds the disputed domain names are confusingly similar to Complainant’s marks pursuant to Policy ¶ 4(a)(i).

Rights to or Legitimate Interests

Complainant established with extrinsic proof in this proceeding that it has rights to and legitimate interests in the marks contained in their entirety within the disputed domain names.  The failure of Respondent to respond to the Complaint is, in and of itself, evidence that Respondent lacks rights and legitimate interests in the disputed domain names.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that, Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Bloomberg L.P. v. GAF, FA 190614 (Nat. Arb. Forum Oct. 20, 2003) (finding that since Respondent did not come forward to explain what legitimate use it may have had in the domain names, the panel could “presume that Respondent lacks rights and legitimate interests in the domain names at issue”).

Respondent’s failure to respond also allows the Panel to accept all reasonable allegations set forth in the Complaint as true unless clearly contradicted by the evidence.  See Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29, 2004) (“The failure of Respondent to respond to the Complaint functions both as an implicit admission that Respondent lacks rights to and legitimate interests in the domain names, as well as a presumption that Complainant’s reasonable allegations are true.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant's allegations are true unless clearly contradicted by the evidence); see also Wells Fargo & Co. v. Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that the failure to respond to a complaint allows a panel to make reasonable inferences in favor of a complainant and accept the complainant’s allegations as true).

The record does not contain persuasive evidence to suggest that Respondent is commonly known by the disputed domain names pursuant to paragraph 4(c)(ii) of the Policy and it is unlikely that Respondent could make such a showing.  Respondent is attempting to sell each of its domain name registrations, permitting the reasonable inference that Respondent’s desire is, in fact, not to be commonly known by the domain names at issue.  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply 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 Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding Respondent does not have rights in a domain name when Respondent is not known by the mark).

The evidence before the Panel indicates that Respondent used the disputed domain names for the purpose of auctioning the corresponding domain name registrations to the highest bidder.  No other use of the domain names has been alleged or suggested by the evidence.  Therefore, the Panel must determine whether Respondent’s use of the domain names for the purpose of auctioning the registration rights corresponding to the domain names is either 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).  A panel addressed this question in a case involving a respondent who failed to respond to the complaint and “[r]espondent’s business was formed to register domain names and sell them to the highest bidder.”  J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000).  The Panel in that case found that since Respondent did not provide “any evidence giving rise to a right or legitimate interest in the domain names,” and simply was attempting “to sell them for a profit,” respondent was not offering goods are services in a bona fide manner pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  Id.  Consistent with this prior holding, in the instant case Respondent is not using the disputed domain names 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 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); see also Mothers Against Drunk Driving v. Hyun-Jun 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).

Complainant established that Respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Under paragraph 4(b)(i), bad faith registration and use of a domain name is evidenced when the circumstances indicate that a domain name registrant registered or acquired a domain name primarily to sell the domain name registration to a complainant, who is the owner of a trademark, or to a competitor of that complainant for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name.

Respondent listed each disputed domain name on an auction website soliciting offers for the sale of the domain name registrations.  Merely offering a domain name registration for sale does not evidence bad faith registration and use of a domain name.  As a panel stated in an early decision under the Policy, “[t]here is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy.” CBS Broad. Inc. v. Worldwide Webs, Inc., D2000-0834 (WIPO Sept. 4, 2000).  However, the panel also stated that the registration of domain names for the purpose of selling the domain name registrations “does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent.”  Id.

Years later, the panel in Pocatello Idaho Auditorium Dist. v. CES Mkt’g Group, Inc. stated:

What makes an offer to sell a domain [name in] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner. FA 103186 (Nat. Arb. Forum Feb. 21, 2002).

In the instant case, Respondent did not merely stumble upon a single domain name that, by happenstance, contained a single trademark of a Complainant.  Rather, Respondent acquired eight domain names that are confusingly similar to Complainant’s DAIMLERCHRYSLER and MERCEDES marks, which is sufficient evidence to indicate that Respondent was targeting the trademarks of Complainant in its acquisition of the disputed domain names.  Such evidence establishes that the domain names were registered and used in bad faith because their value is dependent upon the trademarks of Complainant.  Pocatello Idaho Auditorium Dist. v. CES Mkt’g Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002); see also Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (finding that when the domain name itself notes that it is “available for lease or sale,” evidence that the domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(i) can be inferred from the fact that “the sole value of the [<wwwdinersclub.com] domain name is dictated by its relation to Complainant’s registered DINERS CLUB mark).

Further, Complainant provided printouts of Respondent’s auction website that lists the disputed domain name registrations as being offered for sale for amounts up to $55,000., an amount that exceeds reasonable out-of-pocket expenses.  In the absence of any evidence to the contrary, the Panel finds that Respondent registered and used the disputed domain names in bad faith pursuant to paragraph 4(b)(i) of the Policy.  See 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 names for valuable consideration in excess of any out-of-pocket costs); see also Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that Respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name); see also Dollar Rent A Car Sys. Inc. v. Jongho, FA 95391 (Nat. Arb. Forum Sept. 11, 2000) (finding that Respondent demonstrated bad faith by registering the domain name with the intent to transfer it to Complainant for $3,000, an amount in excess of its out of pocket costs); see also Bank of Am. Corp. v. Northwest Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).

Complainant established that Respondent registered and used the disputed domain names in bad faith pursuant to 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 <daimlerchrysleriran.com>, <daimlerchrysler-iran.com>, <daimlerchrysleriran.info>, <daimlerchryslerme.com>, <daimlerchryslerme.info>, <daimlerchrysler-uae.com>, <daimlerchrysleruae.info>, and <mercedesworld.info> domain names be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: September 14, 2004

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