DaimlerChrysler A.G. v. Donald Drummonds

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

DaimlerChrysler

A.G. v. Donald Drummonds

Case No.

D2001-0160

1. The Parties

The Complainant is DaimlerChrysler,

a corporation organized and existing under the laws of Germany, having its principal

place of business Stuttgart, Germany.

The Respondent is Donald

Drummonds, an individual with an address at 4175 Ruby Forest Boulevard, Suwanee,

Georgia, United States of America.

2. The Domain Name and

Registrar

The domain name at issue

is <mercedesshop.com>, which domain name is registered with Network Solutions,

Inc., located in Herndon, Virginia, United States of America ("NSI").

3. Procedural History

3.1 A Complaint was

submitted electronically to the WIPO Center on January 29, 2001, and the signed

original together with four copies forwarded by express courier was received

on January 31, 2001. An Acknowledgment of Receipt was sent by the WIPO Center

to the Complainant, dated February 1, 2001.

3.2 On February 7, 2001,

a Request for Registrar Verification was transmitted to the registrar, Network

Solutions, Inc. ("NSI") requesting it to: (1) confirm that the domain name at

issue is registered with NSI; (2) confirm that the person identified as the

Respondent is the current registrant of the domain name; (3) provide the full

contact details (i.e., postal address(es), telephone number(s), facsimile number(s),

e-mail address(es)) available in the registrar’s Whois database for the registrant

of the disputed domain name, the technical contact, the administrative contact

and the billing contact; (4) confirm that the Uniform Domain Name Dispute

Resolution Policy (the "Policy") is in effect; (5) indicate the current status

of the domain name.

3.3 On February 8, 2001,

NSI confirmed by reply e-mail that the domain name at issue is registered with

NSI, is currently in active status, and that the Respondent is the current registrant

of the name. The registrar also forwarded the requested Whois details, and confirmed

that the Policy is in effect.

3.4 The WIPO Center

determined that the Complaint satisfies the formal requirements of the Policy,

the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules")

and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy

(the "Supplemental Rules"). The Panel has independently determined and agrees

with the assessment of the WIPO Center that the Complaint is in formal compliance

with the requirements of the Uniform Domain Name Dispute Resolution Policy,

adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN")

on August 26, 1999 (the "Policy"), the Uniform Rules, and the Supplemental

Rules. The required fees for a single-member Panel were paid on time and in

the required amount by the Complainant.

3.5 No formal deficiencies

having been recorded, on February 13, 2001, a Notification of Complaint and

Commencement of Administrative Proceeding (the "Commencement Notification")

was transmitted to the Respondent (with copies to the Complainant, NSI, and

ICANN), setting a deadline of March 4, 2001, by which the Respondent could file

a Response to the Complaint. The Commencement Notification was transmitted to

the Respondent by courier and by e-mail to the e-mail addresses indicated in

the Complaint. In any event, evidence of proper notice is provided by the evidence

in the record of the Respondent’s participation in these proceedings.

3.6 A Response was received

electronically on March 2, 2001, and in hardcopy on March 6, 2001. The Respondent

requested a three-member Panel and the required fees for this Panel were paid

on time and in the required amount by Respondent. An Acknowledgment of Receipt

(Response) was sent by the WIPO Center on March 7, 2001.

3.7 On March 7, 2001,

the Complainant's Request For Permission to File a Reply, alleging new facts

and new legal developments, was received by the WIPO Center in electronic format,

and on March 12, 2001, the hardcopy of the request was received. On March 8,

2001, Respondent's Objection to Complainant's Request was received by the WIPO

Center in electronic format, and on March 15, 2001, the hardcopy of the objection

was received.

3.8 On March 23, 2001,

the WIPO Center Sent a Notification of Panel Appointment, appointing Richard

W. Page, Esq. and Professor Milton L. Mueller, each of whom had previously submitted

a Statement of Acceptance and Declaration of Impartiality and Independence.

3.9 On January 29, 2001,

having received a Statement of Acceptance and Declaration of Impartiality and

Independence, the WIPO Center notified the parties that M. Scott Donahey had

been appointed as Presiding Panelist and that Panelist Selection was now complete.

3.10 On May 15 2001,

the parties were advised of the request by the Panel for additional submissions

as follows: "Pursuant to Uniform Rules, Rule 12, the Panel requests further

statements from the Complainant and Respondent. Complainant's statement should

be entitled Complainant's Brief Re New Matter and should be filed no later than

May 21, 2001. Complainant's submission should be limited to addressing the recent

decision in TCPIP Holding Company, Inc. v. Haar Communications, Inc., 2001 WL

197939 (2d Cir. Feb. 28, 2001) and new factual developments related to changes

made to Respondent's web site. Respondent may submit a response to Complainant's

Brief Re New Matter no later than May 28, 2001. The Panel will issue its ruling

no later than June 11, 2001.

3.11 The Complainant

and the Respondent each submitted the requested additional statements by the

deadlines indicated.

4. Factual Background

4.1 Complainant holds

registrations for the MERCEDES trademark, the earliest of which dates back to

1909. Complaint, Annex C.

4.2 Complainant has

used the mark in connection with various motor vehicles, and parts therefor,

devices and mechanisms for internal combustion engines, tools, filter elements,

speedometers, gauges, pistons, and various other parts and accessories.

4.3 Complainant promotes

its products and marks through a wide range of media, including on the World

Wide Web, in the United States and throughout the world. Complainant has spent

many millions of dollars in this promotional effort. Complainant has during

the last few years sold more than one million motor vehicles annually. There

is no doubt that Complainant has created a significant brand awareness and that

its mark is a famous mark.

4.4 Complainant has

registered the domain names <mercedes.com> and <mercedes-benz.com>

which resolve to web sites maintained by the Complainant.

4.5 Respondent registered

the domain name at issue on February 14, 1999.

4.6 Respondent maintains

a web site on which appears a discussion forum where mechanics and owners of

Complainant's products discuss the care, maintenance and performance of those

products. Respondent also offers genuine Mercedes parts and accessories for

sale, which parts and accessories were obtained through fully authorized channels

of distribution. Respondent also offers clearly identified quality, re-built,

and used parts.

4.7 Respondent does

use the trademarked Mercedes-Benz design logo, although not as prominently as

in the past versions of the web site attached to the Complaint. Complaint, Annexes

F and G. The site also contains photographs of Complainant's products and uses

the trademarked numerical identification of Complainant's vehicles.

4.8 Respondent's web

site has the following disclaimer at the bottom of the home page: "MercedesShop

recognizes that "Mercedes", "Mercedes-Benz", the three pointed star and various

model numbers are registered trademarks of DaimlerChrysler. These terms are

used for identification purposes only. MercedesShop is not affiliated in any

way with Daimler Chrysler."

4.9 The site includes

a feature for the exchange of information between owners, admirers and mechanics

of Complainant's vehicles, and the site has 3000 free members, including employees

of authorized Mercedes-Benz dealerships who engage in such discussion and exchange.

Although this was initially the only feature of the site, the site was later

expanded to include the offering for sale of parts and accessories, including

the authorized service manual CD-ROMs published by Complainant, the latter being

the best-selling item on the site.

5. Parties’ Contentions

5.1 Complainant contends

that Respondent has registered as a domain name a mark which is identical and/or

confusingly similar to the trademarks registered and used by Complainant, that

Respondent has no rights or legitimate interests in respect of the domain name

at issue, and that Respondent has registered and is using the domain name at

issue in bad faith, because the attachment of the word "shop" to the MERCEDES

mark suggests that the site is operated by an authorized representative of Complainant.

5.2 Respondent contends

that he is merely identifying the subject matter of the site, that there is

no likelihood of confusion since there is a disclaimer, and since users who

would intuitively seek the web site of Complainant would enter <mercedes.com>

or <mercedes-benz.com> and would in fact be taken to Complainant's web

site. Respondent further contends that he has rights and legitimate interests

in respect of the domain names at issue, since he established the site shortly

after registration in February 1999, that it has been used to facilitate owners

and mechanics of Complainant's motor vehicles to exchange ideas and experiences,

which service is provided free of charge, and that in certain respects it is

analogous to a "fan site" for aficionados of Complainant's motor vehicles. Finally,

Respondent contends that it did not register and is not using the domain name

at issue in bad faith. The name was originally registered with the intent to

use and indeed was used for some period as a non-commercial information site.

Moreover in the more than two years that the web site has been operational,

Respondent never received a complaint from Complainant. Respondent has been

engaged commercially in the sale of parts and accessories exclusively related

to Complainant's motor vehicles.

6. Discussion and Findings

Paragraph 15(a) of the

Rules instructs the Panel as to the principles the Panel is to use in determining

the dispute: "A Panel shall 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

directs that the Complainant must prove each of the following:

(1) that the domain

name registered by the Respondent is identical or confusingly similar to a trademark

or service mark in which the Complainant has rights; and,

(2) that the Respondent

has no legitimate interests in respect of the domain name; and,

(3) that the domain

name has been registered and is being used in bad faith.

We must first determine

whether the domain name at issue is identical or confusingly similar to a mark

in which Complainant has rights. Respondent has affixed the word "shop" to Complainant's

MERCEDES trademark and registered it in the .com gTLD. The addition of

such words to a recognized mark has been held to create a confusingly similarity

between the domain name and the mark of the Complainant. See, e.g., Gorstew

Limited, Jamaica, and Unique Vacations v. Shop A-Z.com, Inc., ICANN Case

No. FA94941 ("shop" added to mark SANDALS in <shopsandals.com> and <shop-sandals.com>);

Unites States Olympic Committee v. MIC, ICANN Case

No. D2000-0189 ("store" added to mark OLYMPIC in <usolympicstore.com>);

Seiko Epson Corporation and Epson America, Inc. v. Distribution Purchasing

& Logistics Corp, ICANN Case No. FA94129 ("store," added to EPSON mark

in <epsonstore.com>). We find that Respondent's domain name is confusingly

similar to Complainant's mark.

In determining whether

the Respondent has rights or legitimate interests in respect of the domain name

at issue, the Panel turns to paragraph 4(c) of the Policy. 4(c)(i) appears to

be the only paragraph that might be applicable to the present situation. That

subparagraph provides that a respondent can establish rights or legitimate interests

in respect of a domain name if it can show "before any notice to [the respondent]

of the dispute, [the respondent has used], or demonstrably prepar[ed] to use,

the domain name . . . in connection with a bona fide offering of goods or services."

It is undeniable that Respondent

was aware of Complainant's famous mark prior to the registration of the domain

name at issue and the establishment of Respondent's web site. But the majority

does not believe this fact alone to be determinative on the issue. Respondent

is serving as a clearinghouse for information concerning Complainant's vehicles

and is selling parts and accessories exclusively for Complainant's vehicles.

The domain name and the name of Respondent's web site "MercedesShop" is descriptive

of the business conducted there. In conducting the business that Respondent

is conducting, "it would be difficult, if not impossible for [Respondent] to

avoid altogether the use of the word 'Mercedes . . .which [is] the normal term[]

which, to the public at large, signify [Complainant's] cars." Volkswagenwerk

Aktiengesellschaft v. Church, 4111 F.2d 350 (9th Cir. 1969).

Respondent's site contains a clear disclaimer, which states that it is displaying

trademarks that belong to Complainant and that Respondent is in no way affiliated

with Complainant. Moreover, Respondent operated the web site for more than two

years without receiving any notice of dispute from Complainant. Accordingly,

the majority finds that Complainant has failed to prove that Respondent has

no rights or legitimate interests in respect of the domain name at issue.

While it is not necessary

to reach the issue of bad faith, and while the majority is loathe to address

issues it is unnecessary to resolve in order to issue its decision, in this

case the majority feels it is important to address the bad faith issue. The

majority particularly addresses paragraph 4(b)(iv), which is the only provision

that seems closely on point. That subparagraph would establish bad faith where

a Respondent has used the domain name to intentionally attempt to attract, for

commercial gain, Internet users to a web site by creating a likelihood of confusion

with the complainant's mark as to the source, sponsorship, affiliation, or endorsement

of the web site or of a product or service available at the web site.

Despite Respondent's protestation

that the web site was initially established as a non-commercial, informational

site, Respondent cannot and does not deny that it is currently being operated

for commercial gain. However, the majority does not find that Respondent is

attracting users to the site by creating a likelihood of confusion, nor are

such users likely to believe they are dealing with an authorized agent of Complainant

or that Complainant sponsors the site. A user searching for Complainant's Mercedes-Benz

division would surely first enter either <mercedes-benz.com> or <mercedes.com>.

Upon doing so, the user would be taken to Complainant's web site. It is exceedingly

unlikely that any user seeking to find Complainant would enter <mercedesshop.com>.

Moreover, there is a clear disclaimer at Respondent's web site of any affiliation

between Complainant and Respondent. In cases where a respondent has been engaged

in the exclusive sales of a complainant's goods or services and has disclaimed

any relationship with the respondent, Panel decisions have not found that the

respondent acted in bad faith. See, Caterpillar Inc. v. Off Road Equipment

Parts, ICANN Case No. FA95497; America Online, Inc. v. Vadim Eremeev,

ICANN Case No. D2001-0003.

Under the present facts,

if the Panel were to find for the Complainant, the majority can conceive of

no case in which a legitimate competitor in the sale of parts and aftermarket

accessories could ever register a domain name descriptive of that business.

The Policy was designed to deal only with the limited problem of cybersquatting.

It was not designed to establish for the holder of a strong trademark a bar

to entry of online competitors.

The majority also notes

that the Policy was not designed to deal with, nor is the Panel asked to determine,

the issue of trademark infringement. Whether the use of Complainant's trademark

on Respondent's web site constitutes trademark infringement is not for the Panel

to decide. If Complainant wishes to pursue that issue, other forums are available.

7. Decision

For all of the foregoing

reasons, the majority decides that the domain name registered by Respondent

is confusingly similar to the mark in which the Complainant has rights, but

that the Complainant has failed to prove that Respondent has no rights to or

legitimate interests in respect of the domain name at issue, or that the domain

name was registered and is being used in bad faith. Accordingly, the relief

requested in the Complaint is denied.

M. Scott

Donahey

Presiding Panelist

Milton L.

Mueller

Panelist

Dated: June

18, 2001

DISSENT

I respectfully disagree

with my co-Panelists and would find that Respondent should be required to transfer

the domain name <mercedesshop.com> (the "Domain Name") to Complainant.

Identity or Confusing

Similarity.

I would expand the findings

that the Domain Name is confusingly similar to the MERCEDES trademark pursuant

to the Policy paragraph 4(a)(i) as follows:

In addition, Courts have

recognized that consumers expect to find a company on the Internet at a domain

name address comprised of the company’s name or trademark. See Panavision

Int’l, L.P. v. Toeppen, 141 F.3d 1316, 1327 (9th Cir. 1998) ("A customer

who is unsure about a company’s domain name will often guess that the domain

name is also the company’s name . . . . [A] domain name mirroring a corporate

name may be a valuable corporate asset, as it facilitates communication with

a customer base." (citations omitted)).

The Domain Name <mercedesshop.com>

suggests an association or relationship to Complainant, which does not exist

and, if used by parties other than Complainant, will cause confusion in the

marketplace. See Nike, Inc., WIPO Case

No. D2000-0167, id.

Therefore, I agree with

my co-panelists that the Domain Name is confusingly similar to the MERCEDES

trademark pursuant to the Policy paragraph 4(a)(i).

Rights or Legitimate

Interest.

I would find that Respondent’s

use of the Domain Name does not constitute fair use or the bona fide offering

of goods and services, and thus does not satisfy the criteria of paragraph 4(c)(i).

The use of a disclaimer

by Respondents is not sufficient to dispel the likelihood of initial interest

confusion by an Internet user. The Respondent’s Domain Name uses the MERCEDES

trademark in the title of the Domain Name which resolves to Respondent’s website.

Thus the Internet user searching for information regarding Complaint’s products

is drawn to Respondents’ website through initial interest confusion as to the

source, sponsorship, affiliation, or endorsement. Even though a misdirected

user may become aware that the Domain Name does not resolve to a website affiliated

with the Complainant, the fact remains that the Respondent's improper and unauthorized

use of the trademark diverts persons seeking Complainant’s events. This initial

interest confusion violates the DaimlerChrysler’s rights in its trademark. See,

Brookfield Communs, 174 F.3d at 1057 (discussing likelihood of confusion

and noting that "Web surfers are more likely to be confused as to the ownership

of a web site than traditional patrons of a brick-and-mortar store would be

of a store's ownership," and that even where people realize, immediately upon

accessing the complained-of website, that they have reached a site operated

by someone other than the trademark owner, the infringing website will still

have gained a customer by appropriating the goodwill of the trademark owner).

Given the initial interest

confusion created by Respondent’s use of Complainant’s trademark, I would find

that Respondent’s use of the Domain Name does not constitute fair use or the

bona fide offering of goods and services, and thus does not satisfy the criteria

of paragraph 4(c)(i). Therefore, I would find that Respondent has no rights

or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).

Bad Faith.

Respondent admits that

it is intentionally attracting Internet users to its website for the purpose

of commercial gain through the sale of products relating to Mercedes automobiles.

I would find above that the Domain Name creates the likelihood of initial user

confusion as to the source, sponsorship, affiliation or endorsement of DaimlerChrysler.

Therefore, the criteria of the Policy paragraph 4(b)(iv) are met and Respondent

has registered and used the Domain Name in bad faith in violation of the Policy

paragraph 4(a)(iii).

Decision

The majority expresses

a concern that "Under the present facts, if the Panel were to find for

the Complainant, the majority can conceive of no case in which a legitimate

competitor in the sale of parts and aftermarket accessories could ever register

a domain name descriptive of that business." The legitimate competitor

need only register a more generic domain name such as <germanauto.com>,

then disclaim any affiliation to a specific manufacturer on its website. The

disadvantage to this approach is that the competitor cannot trade on the registered

MERCEDES trademark.

I am concerned that by

ruling for Respondent no trademark holder can protect itself against the illegitimate

competitor who would feign fair use, then convert its website to a commercial

venture.

I would conclude (a) that

the Domain Name is confusingly similar to Complainant’s registered MERCEDES

trademark, (b) that Respondent does not have rights or legitimate interest in

the Domain Name and (c) that Respondent did register and use the Domain Name

in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of

the Rules, I would order that all of the Domain Name be transferred to DaimlerChrysler.

Richard

W. Page

Panelist

June 18,

2001

More cases by this complainant

• DaimlerChrysler A.G. — D2001-0229 · Terminated
• DaimlerChrysler A.G. v. James Cruz — D2000-1554 · driveamercedes.com · Transfer · 17 Jan 2001

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• Daimler AG v. William Wood — D2008-1712 · mercedesshop.com · Transfer · 25 Feb 2009