DECISION

DaimlerChrysler AG v. mercedesbenzpromo

Claim Number:  FA0405000271201

PARTIES

Complainant is DaimlerChrysler AG (“Complainant”), represented by Stefan Volker, of Gleiss Lutz Rechtsanwalte, Maybachstr. 6, 70469, Stutgart, Germany. Respondent is mercedesbenzpromo (“Respondent”), Backhausweg 6, 74223 Flein, Germany.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <mercedesbenzpromo.com>, registered with Domain People 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.

Louis E. Condon as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on May 12, 2004; the Forum received a hard copy of the Complaint on May 13, 2004.

On May 17, 2004, Domain People Inc. confirmed by e-mail to the Forum that the domain name <mercedesbenzpromo.com> is registered with Domain People Inc. and that Respondent is the current registrant of the name. Domain People Inc. has verified that Respondent is bound by the Domain People 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 May 17, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 7, 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@mercedesbenzpromo.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 June 17,2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Louis E. Condon 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 <mercedesbenzpromo.com> domain name is confusingly similar to Complainant’s MERCEDES BENZ mark.

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

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

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

FINDINGS

Complainant DaimlerChrysler AG and its legal predecessors have used the MERCEDES mark since December of 1900 in connection with automotive vehicles. Complainant and its legal predecessors have also used the BENZ mark since July of 1896 for similar purposes. Currently, Complainant holds numerous trademarks worldwide for the combined MERCEDES BENZ mark, from Germany (e.g. German Trademark No. 989,996, priority date of April 2, 1979) to the European Union (e.g. E.C. Trademark No. 139,865, priority date of April 1, 1996) to the United States (e.g. U.S. Reg. No. 285,557, priority date of August 21, 1926). Complainant has spent billions of dollars in the past ten years promoting the MERCEDES BENZ mark worldwide, and in that time has sold over 1,000,000 MERCEDES BENZ branded automobiles annually.

Respondent, mercedesbenzpromo, registered the <mercedesbenzpromo.com> domain name on January 9, 2004, without license or authorization to use Complainant’s MERCEDES BENZ mark for any purpose. By March of 2004 Respondent was using the <mercedesbenzpromo.com> domain name to hold a fraudulent online lottery which rewarded the supposed “lucky winners” of a Mercedes Benz automobile by asking them to submit advance shipping costs of EUR 1,750 to a questionable postal address. Internet users taken by this ruse were solicited by a Mr. Armstrong Fitcher and a Mr. David Kahn and asked to register at the disputed domain name in order to take part in the online lottery, which claimed to be sponsored by a “mercedes-benz promotional advertising company.”

Later that same March the above-mentioned Mr. Kahn sent numerous e-mail messages to individuals worldwide informing those persons that they had won a new Mercedes Benz SLR automobile worth about EUR 435,000 through the online lottery at the domain name, and that those individuals should pay EUR 1,750 for shipment in advance, via Western Union, to a Mr. William Brobbey, Promo Offices, Tercero Planta, Plaza Cervantes, Avenida de America, 28808 Madrid, Spain. Several of these e-mails also noted that “all unclaimed award [sic] before the 30th of March will be returned to the Mercedes Benz company as unclaimed award [sic].”

Complainant has never had any business relationship with Respondent, Mr. Fitcher, Mr. Kahn, or Mr. Brobbey, and never authorized Respondent to hold an online lottery in Complainant’s name. Complainant and its subsidiaries nonetheless received numerous complaints from disappointed “winners” of Respondent’s alleged lottery.

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 rights in the MERCEDES BENZ mark through registration of the mark worldwide, as well as through widespread use of the mark in commerce for over a century. See Janus In’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).

Respondent’s <mercedesbenzpromo.com> domain name is confusingly similar to Complainant’s MERCEDES BENZ mark. The chief characteristic of the domain name is the inclusion of the famous MERCEDES BENZ mark. Respondent’s addition of the word “promo” (a common abbreviation for the word “promotion”) does not eliminate the confusing similarity between Complainant’s mark and the domain name. See Oki Data Ams., 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 despite the addition of other words to such marks”); see also J.W. Spear & Sons PLC v. Fun League Mgmt. (FA 180628) (Nat. Arb. Forum Oct. 17, 2003) (finding the domain name <scrabblemania.com> confusingly similar to Complainant’s SCRABBLE mark because the addition of the descriptive word “mania” to the mark did not significantly distinguish it from the mark while noting that “the addition of the word ‘mania’ to SCRABBLE does little to break the obvious connection between the domain name and the complainant company”).

Accordingly, the Panel finds that the <mercedesbenzpromo.com> domain name is confusingly similar to Complainant’s MERCEDES BENZ mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent used the disputed domain name to perpetrate a fraud upon numerous individuals who believed that Respondent’s “promotion” was sponsored by Complainant. Respondent’s unauthorized use of Complainant’s famous MERCEDES BENZ mark and the goodwill that Complainant has built up around that mark aided Respondent and its agents in its “lottery,” while at the same time tarnishing Complainant’s mark. Such use of a domain name does not qualify for any protections afforded a respondent by Policy ¶¶ 4(c)(i)-(iii) and operates as prima facie evidence that Respondent lacks rights and legitimate interests in the disputed domain name. See Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate”); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that as Respondent attempted to pass itself off as Complainant online Respondent had no rights or legitimate interests in the disputed domain name); see also Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <mercedesbenzpromo.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent registered and used the disputed domain name in bad faith. By capitalizing on the goodwill that Complainant has developed around the MERCEDES BENZ mark, Respondent ensnared individuals worldwide into buying into its online lottery scam. Such use is evidence that Respondent was aware of Complainant’s rights in the MERCEDES BENZ mark when it registered the disputed domain name, knew that it had no right to use the MERCEDES BENZ mark, and could anticipate the probable tarnishment of that mark as a result of its fraudulent activities. This is evidence that Respondent registered and used the <mercedesbenzpromo.com> domain name in bad faith. See Am. Int’l Group, Inc., FA 156251 (finding that the disputed domain name was registered and used in bad faith where Respondent hosted a website that gave “every appearance of being associated or affiliated with Complainant’s business . . .  In a nutshell, Respondent used the disputed domain name to perpetrate a fraud”); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that Respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that Complainant endorsed and sponsored Respondent’s website, evidence of bad faith).

The Panel thus finds that Respondent registered and used the <mercedesbenzpromo.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.

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

Louis E. Condon, Panelist

Dated:  June 30, 2004

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