|
|
Home
| Databases
| WorldLII
| Search
| Feedback
Generic Top Level Domain Name (gTLD) Decisions |
DaimlerChrysler Corporation v. LaPorte
Holdings, Inc.
Claim
Number: FA0411000363051
Complainant is DaimlerChrysler Corporation (“Complainant”),
represented by George T. Schooff, 5445 Corporate Drive, Suite 400,
Troy, MI, 48098. Respondent is LaPorte Holdings, Inc. (“Respondent”),
2202 S. Figueroa St., Suite 721, Los Angeles, CA, 90023.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <chryslerfinancialcanada.com>, registered
with Nameking.com, Inc.
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.
Complainant
submitted a Complaint to the National Arbitration Forum electronically November
11, 2004; the National Arbitration Forum
received a hard copy of the Complaint November
12, 2004.
On
November 16, 2004, Nameking.com, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <chryslerfinancialcanada.com>
is registered with Nameking.com, Inc. and that Respondent is the current
registrant of the name. Nameking.com, Inc. verified that
Respondent is bound by
the Nameking.com, Inc. 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").
On
November 22, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of December 13, 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@chryslerfinancialcanada.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 21, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration
Forum appointed Hon.
Carolyn Marks Johnson as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent
registered, <chryslerfinancialcanada.com>, is confusingly similar
to Complainant’s CHRYSLER FINANCIAL mark.
2. Respondent has no rights to or legitimate
interests in the <chryslerfinancialcanada.com> domain name.
3. Respondent registered and used the <chryslerfinancialcanada.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, DaimlerChrysler Corporation, is in the
business of producing automobiles and their structural parts, servicing
automobiles, and providing
automotive financing services.
Complainant holds numerous registrations with the United States Patent
and Trademark Office for the CHRYSLER mark (including Reg.
No. 2,357,408 issued
June 13, 2000; Reg. No. 1,263,266 issued January 3, 1984; and 1,513,942 issued
November 22, 1988); and the CHRYSLER
FINANCIAL mark (Reg. No. 2,752,985 issued
August 19, 2003 and filed May 2, 2002).
Complainant also holds registrations for the
<chryslerfinancial.com>, <chrysler.com> and
<chryslerfinancialcanada.ca>
domain names.
Respondent registered the <chryslerfinancialcanada.com> domain name February 28, 2003. Respondent is using the disputed domain name
to divert Internet users to a website displaying hyperlinks to various webpages
related
to automobiles, car loans, financial services and numerous other goods
and services. The website also includes
a link titled “Chrysler” that links users to a website that features links to
websites containing quotes
for automobiles.
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.
Complainant
established with extrinsic proof in this proceeding that it has rights in the
CHRYSLER FINANCIAL mark through registration
with the United States Patent and
Trademark Office. 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). Although
the date of Complainant’s registration of the CHRYSLER FINANCIAL mark is
subsequent to Respondent’s registration of the <chryslerfinancialcanada.com>
domain name, the relevant date of Complainant’s rights extends back to the
filing date of May 2, 2002, which predates registration
of the disputed domain
name. See FDNY Fire Safety
Educ. Fund, Inc. v. Miller, FA 145235 (Nat. Arb. Forum Mar. 26, 2003)
(finding that Complainant’s rights in the FDNY mark relate back to the date
that its successful
trademark registration was filed with the U.S. Patent and
Trademark Office); see also J. C. Hall Co. v. Hallmark Cards, Inc.,
340 F.2d 960, 144 U.S.P.Q. 435 (C.C.P.A. 1965) (registration on the Principal
Register is prima facie proof of continual use of the mark, dating back to the
filing
date of the application for registration).
The <chryslerfinancialcanada.com>
domain name that Respondent registered is confusingly similar to Complainant’s
CHRYSLER FINANCIAL mark because the domain name incorporates
Complainant’s mark
in its entirety, adding only the geographic term “Canada” and the generic
top-level domain (gTLD) “.com.” The
addition of a geographic term and a gTLD to Complainant’s registered mark is
insufficient to distinguish a confusingly similar
domain name. See VeriSign, Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding
confusing similarity between Complainant’s VERISIGN mark and the
<verisignindia.com>
and <verisignindia.net> domain names where
Respondent added the word “India” to Complainant’s mark); see also CMGI, Inc. v. Reyes, D2000-0572 (WIPO
Aug. 8, 2000) (finding that the domain name <cmgiasia.com> is confusingly
similar to Complainant’s CMGI mark);
see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000)
(finding that the top level of the domain name such as “.net” or “.com” does
not affect the domain
name for the purpose of determining whether it is
identical or confusingly similar).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant
alleges that Respondent has no rights to or legitimate interests in the <chryslerfinancialcanada.com>
domain name, which includes Complainant’s CHRYSLER FINANCIAL mark. Since Respondent has not responded to the
Complaint, the Panel assumes that Respondent lacks rights and legitimate
interests in the
disputed domain name.
When 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 G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has
asserted that Respondent has no rights or legitimate
interests with respect to
the domain name it is incumbent on Respondent to come forward with concrete
evidence rebutting this assertion
because this information is “uniquely within
the knowledge and control of the respondent”); see also 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 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).
Furthermore,
since Complainant made the prima facie showing and Respondent failed to
respond, the Panel is entitled to accept all reasonable allegations and
inferences in the Complaint
as true. See
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 the Complaint to be
deemed true); see also Ziegenfelder
Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (drawing two
inferences based on Respondent’s failure to respond: (1) Respondent does not
deny
the facts asserted by Complainant, and (2) Respondent does not deny
conclusions which Complainant asserts can be drawn from the facts).
Respondent is
using the <chryslerfinancialcanada.com> domain name to divert
Internet users to a website that displays various hyperlinks to webpages for
automobiles, automobile loans,
and financial services. The website also contains a link entitled
“CHRYSLER,” which links users to a website containing links to various sites
unrelated to
Complainant but that purport to offer price quotes for Complainant’s
products and services. The Panel finds
that Respondent’s use of a domain name that is confusingly similar to
Complainant’s registered mark to redirect Internet
users interested in
Complainant’s products and services to a website containing links to websites
that offer similar products and
services is not in connection with a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is
not 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).
Nothing in the
record suggests that Respondent is commonly known by the <chryslerfinancialcanada.com>
domain name and Respondent has provided no evidence to prove that it was
commonly known by the disputed domain name.
Therefore, the Panel finds that Respondent has not established rights to
or legitimate interests in the disputed domain name pursuant
to Policy ¶
4(c)(ii). See RMO, Inc. v.
Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶
4(c)(ii) "to require a showing that one has been commonly known
by the
domain name prior to registration of the domain name to prevail"); 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).
Thus, the Panel
finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <chryslerfinancialcanada.com> domain name to attract
Internet users seeking goods and services from Complainant’s CHRYSLER FINANCIAL
to Respondent’s commercial
website by creating a likelihood of confusion
between Complainant’s registered mark and the content of Respondent’s website. The Panel finds that Respondent’s practice
of diversion for commercial gain is evidence of bad faith registration and use
pursuant
to Policy ¶ 4(b)(iv). See
H-D Michigan, Inc. v. Petersons Auto, FA 135608 (Nat. Arb. Forum Jan. 8,
2003) (finding that the disputed domain name was registered and used in bad
faith pursuant to
Policy ¶ 4(b)(iv) through Respondent’s registration and use
of the infringing domain name to intentionally attempt to attract Internet
users to its fraudulent website by using Complainant’s famous marks and likeness);
see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933
(Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used
the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv) because Respondent
was using the confusingly similar domain name to attract Internet users to its
commercial website);
see also 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)).
Furthermore,
while 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 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”); see also Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b)
are intended to be illustrative, rather than exclusive.”).
Respondent’s
registration of the <chryslerfinancialcanada.com> domain name,
which incorporates Complainant’s CHRYSLER FINANCIAL mark in its entirety,
adding only a geographic term, suggests that
Respondent knew of Complainant’s
rights in the CHRYSLER FINANCIAL mark.
Furthermore, the disputed domain name registered by Respondent leads
Internet users to a website offering services similar to Complainant’s
products
and services. Therefore, the Panel
concludes that Respondent chose the <chryslerfinancialcanada.com>
domain name 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); see also Exxon
Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that
Respondent had actual and constructive knowledge of Complainant’s EXXON mark
given
the worldwide prominence of the mark and thus Respondent registered the
domain name in bad faith).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <chryslerfinancialcanada.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: January 4, 2005
WorldLII:
Copyright Policy
|
Disclaimers
|
Privacy Policy
|
Feedback
URL: http://www.worldlii.org/int/other/GENDND/2005/135.html