mercedesshop.com

WIPO Arbitration and Mediation Center

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.

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").

3.1 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.

4.1 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.

5.1 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.

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 (9^th 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.

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 andRespondent has registered and used the Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).

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