WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DaimlerChrysler Corporation v. Worshiping, Chrisler, and Chr, aka Dream Media and aka Peter Conover
Case No. D2000-1272
1. The Parties
Complainant: DaimlerChrysler Corporation, a corporation organized under the laws of the State of Delaware with its principal place of business in Auburn Hills, Michigan, USA.
Respondent: Worshiping, Chrisler, and Chr aka Dream Media and aka Peter Conover, having a recorded mailing address of P.O. Box 14, Richmond, Kentucky 40476, with an administrative, technical, zone and billing contact identified as "Michael Sanders" and "Traffic Lords" with a recorded mailing address of P.O. Box 539, Richmond, Kentucky 40476, USA. (Footnote 1)
2. The Domain Names and Registrar
Domain Names: , , , and
Registrar: Network Solutions, Inc. ("NSI")
3. Procedural History
The procedural history of this proceeding is summarized as follows:
On September 26, 2000, Complainant, DaimlerChrysler, initiated this proceeding by filing with the World Intellectual Property Organization ("WIPO") Arbitration and Mediation Center ("Center") a complaint against Respondent, Worshiping, Chrisler, and Chr.
A copy of the complaint was provided to NSI as registrar of the domains serving as the basis of the present proceeding. NSI responded to the Center�s verification request on October 2, 2000, confirming receipt of the complaint and confirming that it was the registrar of the domain name registrations. The Panel notes that the NSI verification report indicates that two of the domain names had the registrant of "Chr." (Footnote 2) The remaining two domain names had distinct registrants of "Worshiping" and "Chrisler." All the registrants are indicated as having the same address of P.O. Box 14, Richmond, KY 40476. The NSI report also confirmed that the Uniform Domain Name Dispute Resolution Policy applies to the domain names (Footnote 3), confirmed that the status of the domain names was "active," and provided information regarding the registrant of the domain names at issue in this proceeding.
The complaint was reviewed by the Center to determine whether it satisfied the requirements of the Internet Corporation for Assigned Names and Numbers Uniform Domain Name Dispute Resolution Policy ("Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules").
On October 17, 2000, a Complaint Deficiency Notification was sent to the Complainant and on the same date the Complainant sent an amended complaint to the Center via e-mail and DHL and to the Respondent via e-mail and U.S. mail.
The Center reviewed the amended complaint and found that it was filed in compliance with the requirements of the Policy, the Rules, and the Supplemental Rules.
The Panel agrees with the Center�s conclusions regarding compliance of the amended complaint with the requirements set forth under the Policy, the Rules, and the Supplemental Rules.
The Complainant paid the requisite fee and requested a single panelist.
On October 24, 2000, the Notification of Complaint, Commencement of Administrative
Proceedings, and the amended complaint were sent via e-mail by the Center to "Postmaster@," "Postmaster@," "Postmaster@," "Postmaster@," and "Trafficlord@." On October 25, 2000, notice and a copy of the amended complaint was also sent via certified mail by the Center to the Respondent at the address provided in the WHOIS database of NSI. (Footnote 4) The Panel notes that the administrative contact for all four domain names is identical.
The notice indicated that the present administrative proceeding had been commenced and that Respondent had twenty days from the date of commencement of the proceeding to file a response to the administrative complaint (i.e., Respondent was given until November 12, 2000). No response was received by WIPO from the Respondent by this date, and WIPO has not indicated that it has received any other communication from the Respondent subsequent to this date.
The Panel concludes that the complaint was properly notified in accordance with WIPO practices under the Rules, Paragraph 2(a).
On November 16, 2000, WIPO transmitted via e-mail notification to Respondent at "Trafficlord@" of its default in responding to the complaint. (Footnote 5)
On December 5, 2000, the parties were notified via e-mail by WIPO of the appointment of the undersigned as the Administrative Panel ("Panel") in this matter and projected a decision date for the Panel of December 19, 2000. The Panel provided a Statement of Acceptance and Declaration of Impartiality and Independence prior to its appointment.
Neither the Complainant nor the Respondent filed further submissions before WIPO.
4. Factual Background
The following facts appear on the complaint and have not been contested by the Respondent:
The Complainant is the owner of United States registration numbers 428,619; 570,186; 1,263,266; and 1,513,942. The trademarks and service marks owned by the Complainant were issued by the United States Patent and Trademark Office on March 25, 1947, February 10, 1953, January 3, 1984, and November 22, 1988, respectively. The registration cites a first use of the mark on January 1, 1924.
The Complainant is the owner of the "CHRYSLER" mark, and the Complainant and its
predecessors have used that mark continuously since 1924, in connection with automobiles, trucks, vans, and structural parts therefor; automobile, truck, and van dealership services; and automobile, truck, and van repair and maintenance services. (Footnote 6) The products and services are advertised and promoted through a variety of media and are sold throughout the United States. The Complainant has substantial sales of its "CHRYSLER" automobiles and has sold at least 265,000 vehicles in the United States bearing the "CHRYSLER" mark each year since 1995.
Information regarding "CHRYSLER" vehicles can be accessed at the domain addresses "" and "." The Complainant uses the Internet to promote the "CHRYSLER" products.
The mark "CHRYSLER," as applied to DaimlerChrysler�s services and products, pursuant to the representations of the Complainant in paragraphs 12(c)(ii), 12 (c)(iii), 12(c)(iv), and 12(c)(v) of its complaint, is famous.
The Respondent is the registrant of the domain names "," "," "," and "."
The domain names "," "," "," and "" differ from the "CHRYSLER" mark by the omission of an "h" after the first letter; the substitution of an "i" for a "y" for the fourth letter; the insertion of a "t" after the fifth letter; and the substitution of an "i" for a "y" for the fourth letter and the insertion of a "t" after the fifth letter, respectively.
Individuals who key in "," "," or "" into the Internet are taken to a screen that displays portals to sites that feature pornographic images. Individuals who key in "" into the Internet are taken to a web-site that displays pornographic images.
DaimlerChrysler has received at least one complaint from a third party who mistyped the domain name "" and was subject to one of the pornography sites described above.
5. Parties� Contentions
A. Complainant
The Complainant asserts that the domain names at issue are similar to Complainant�s mark because the domain names are very slight misspellings and thereby constitute predictable typographical and/or phonetic misspellings of the "CHRYSLER" mark.
Complainant asserts that the Respondent has no right or legitimate interest with the domain names because the first use and first registration of the "CHRYSLER" mark, on January 1, 1924, predate any use by Respondent of the contested
domain names, first registered in February 1999. Thus, Complainant contends that any use of the contested domain names by Respondent would have occurred after the Respondent had knowledge of the Complainant�s use of the "CHRYSLER" mark.
The Complainant also asserts that (i) the Respondent registered the domain names under fictitious business names none of which is registered as a business in the State of Kentucky; (ii) neither the Respondent nor any related entities have been commonly known by the domain names; and (iii) the Respondent is not making any legitimate non-commercial or fair use of the domain names.
Finally, the Complainant asserts that the domain names were registered and have been used in bad faith. In particular, Complainant contends that the Respondent registered the domain names and used them intentionally to attract, for commercial gain, Internet users to their web-site by creating a likelihood of confusion with Complainant�s famous marks as to the source, sponsorship, affiliation or endorsement of the web-sites or their products or services.
Complainant contends that the Respondent, prior to its adoption of the domain names, was aware that Complainant was the owner of the "CHRYSLER" mark because of Complainant�s widespread and long-standing promotion and distribution of "CHRYSLER" vehicles. Complainant asserts that Respondent relies on consumers misspelling of the Complainant�s mark on the Internet to draw persons to its site. By using confusingly similar imitations of Complainant�s mark, Complainant contends that Respondent�s revenue will grow due to the increase in the number of hits Respondent receives on its sites. As such, this case presents tarnishment and dilution of the "CHRYSLER" mark.
B. Respondent
No response was received from the Respondent.
6. Discussion and Findings
A. Respondent�s Failure to Answer
Paragraph 14(a) of the Rules directs that where the Respondent has defaulted in providing a response to the allegations of the complaint, the Panel is to proceed to a decision on the basis of the complaint. Paragraph 14(b) further directs that the Panel shall draw such inferences from the undisputed allegations in the complaint, as the Panel considers appropriate.
B. Applicable Rules and Principles of Law
Paragraph 15(a) of the Rules instructs the Panel of the principles the Panel is to use in resolving a dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that in order for the Complainant to prevail on the merits, the Complainant must establish that the following three elements exist with respect to the domain names in question:
(i) Respondent�s domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain names; and
(iii) Respondent�s domain names have been registered and are being used in bad faith.
Each of these elements will be discussed in order below.
C. Findings
1. The domain names are confusingly similar to the registered mark "CHRYSLER" in which the Complainant has rights
The Complainant is a holder of the registered mark "CHRYSLER" in the United States. Under U.S. trademark law, a registered mark is prima facie evidence that the holder of the mark has, among other things, an exclusive right to use the trademark in commerce. (Footnote 7) Respondent has not challenged the validity of Complainant�s mark.
Further, Complainant has established that it possesses rights in the registered mark in relation to its use in commerce in connection with automobiles, trucks, vans, and structural parts therefore; automobile, truck, and van dealership services; and automobile, truck, and van repair and maintenance services. Evidence provided by the Complainant shows that DaimlerChrysler has spent millions of dollars in advertising and promoting its "CHRYSLER" products through the media and has enjoyed a substantial volume of sales of its automobiles each year since 1995. Evidence provided by the Complainant additionally shows that DaimlerChrysler uses and promotes the "CHRYSLER" mark extensively on the Internet, receiving, for example, in the course of one three month period over 269,724 visits per week. Therefore, the Panel determines that the Complainant has rights to the "CHRYSLER" mark.
Complainant also has provided evidence that demonstrates that the domain names are confusingly similar to the marks in which the Complainant has rights. The domain names are slight misspellings of the "CHRYSLER" mark. The only distinction between the domain names and the Complainant�s mark is, in most cases, a single change in a letter in the middle of the word that constitutes the mark. The domain names, which are otherwise identical to the Complainant�s mark, either (1) substitute an "i" for the letter "y" in the mark (""); (2) omit an "h" as the second letter of the mark (""); (3) add a "t" as the sixth letter of the mark (""); or (4) add a "t" and substitute an "i" for the letter "y" in the mark (""). Given the evidence provided, this Panel finds that Respondent�s domain names, while not identical, are without doubt confusingly similar to Complaint�s mark.
Additionally, evidence has been provided that demonstrates that at least one third party has made a typographical error that led to the user mistakenly being directed to the Respondent�s web-site due to a misspelling.
In light of the foregoing, the Panel finds that the Complainant has met its burden of proving that the Respondent�s domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
2. The Respondent has no rights or legitimate interests in respect of the domain names
There is no evidence in the record that the Respondent has any rights or legitimate interests in respect of the domain names. The Respondent has filed no response to the complaint and thus has not made any assertion of its rights to or interest in the domain names at issue. Evidence on the record regarding the nature of the web-sites associated with Respondent�s domain names reveals that there is no relationship between the content or the purpose of the web-sites and the domain names. Thus, the Panel finds that the Respondent has no rights or legitimate interests in respect of the domain names.
In light of the foregoing, the Panel finds that the Complainant has met its burden of proving that the Respondent has no rights or legitimate interests in respect of the domain names at issue herein.
3. The domain names have been registered and are being used in bad faith by the Respondent
Paragraph 4(b) of the Policy identifies various circumstances that shall be considered evidence of the registration and use of the domain name in bad faith. Of the specific examples listed in the Policy, Paragraph 4(b)(iv) is the most applicable to this case. Paragraph 4(b)(iv) provides, in relevant part, that the following, if found by the Panel, shall be evidence of the registration and use of a domain name in bad faith: "by using the domain name, [the Respondent] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent�s] web site . . . by creating a likelihood of confusion with the complainant�s mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent�s] web site or location or of a product or service on [the Respondent�s] web site or location."
The evidence provided by the Complainant demonstrates that users who key in the terms "," "," "," or "" into the Internet will be led to the Respondent�s web-sites. None of these sites offers services related to those provided by the Complainant. The registration of the domain names appears to serve no other purpose other than to capture the user who mistakenly or inadvertently enters an incorrectly spelled version of the Complainant's registered trademark when he or she is attempting to access the Complainant�s web-site. This evidence supports Complainant�s contention that the Respondent is intentionally attempting to redirect users to its web-site by creating a likelihood of confusion with Complainant�s mark.
Finally, the Complainant asserts that the Respondent deliberately used confusingly similar imitations of Complainant�s marks to increase the number of hits on Respondent�s web-sites thereby increasing the Respondent�s revenues. Respondent does not dispute these allegations. The Panel is aware of no contrary evidence. Thus, the Panel finds that the Complainant has shown that the apparent purpose of the misdirection is to create commercial opportunities for Respondent.
In light of the foregoing, the Panel finds that the Complainant has met its burden of proving that the Respondent registered and used the domain names at issue in bad faith as that term is defined in Paragraph 4(b)(iv) of the Policy.
As the Panel finds evidence exists that the Respondent registered and used the domain names in bad faith on the basis of Paragraph 4(b)(iv), the Panel finds it unnecessary to address alternative arguments or evidence concerning bad faith raised by the Complainant in its complaint.
7. Decision
The Panel finds that the Complainant has sustained its burden of demonstrating that (a) the domain names are identical or confusingly similar to the mark "CHRYSLER" in which the Complainant has well-established rights; (b) Respondent has no rights and no legitimate interests in respect of the domain names; and (c) the domain names have been registered and are being used in bad faith by the Respondent.
Accordingly, pursuant to the authority of Paragraph 4(i) of the Policy, the Panel requests that the registration of the domain names ("," "," "," and "") be transferred to the Complainant, DaimlerChrysler.
Jeffrey P. Kushan
Sole Panelist
Dated: December 19, 2000
Footnotes:
1. Paragraph 3(c) of the Rules provides that "[t]he complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder." Although according to the WHOIS database of NSI, the domain name registrants are listed as three separate registrants (Worshiping, Chrisler, and Chr), the domain name registration information provided under these names, including the address for the registrants and the administrative, technical, zone, and billing contacts for the domain names, is identical. Therefore, the Panel is satisfied that, for the purposes of this administrative proceeding, the registrant for "," "," "," and "" is the same.
The Panel further notes that as all four of the domain names that form the basis of this dispute are listed as having the same address for the registrants and the same administrative, technical, zone, and billing contacts, the complaint appears to be aimed at one Respondent. For the purposes of this decision, therefore, the Panel will use the term "Respondent."
2. The NSI verification response identifies only three registrants and three domain names. The Panel notes that the fourth domain name is also registered to the registrant "Chr" and confirmed this fact through a search on the whois database.
3. The NSI verification response indicates that the Network Solutions� Service Agreements were in effect for the domain names at issue. The Complainant states that the Registration Agreement to which the domain names that are subject to the complaint were registered incorporates the Uniform Domain Name Dispute Resolution Policy adopted by the Internet Corporation for Assigned Names and Numbers on August 26, 1999. This Panel finds the uncontested statements made by the Complainant in its complaint in combination with the information provided by the NSI sufficient to demonstrate that the Policy applies to the domain names at issue.
4. Paragraphs 2(a) and 4(c) of the Rules for Uniform Domain Name Dispute Resolution Policy require that the Provider send the complaint to the Respondent via postal-mail, facsimile and e-mail to commence the proceeding. The courier mail from WIPO to Respondent did not technically originate until October 25, 2000. However, the Rules provide WIPO with discretion to extend the period of time for filing a response to a complaint (Rules, para. 5(d)), and in the absence of any such request by the Respondent, the Panel considers it reasonable for WIPO to have considered the date on which it transmitted the complaint to Respondent by e-mail as the date on which these proceedings commenced.
5. The Panel is not clear as to the why e-mail notification was not provided to other e-mail addresses.
6. The "CHRYSLER" marks were assigned from Chrysler Corporation to DaimlerChrysler Corporation. The assignment was recorded on November 24, 1998.
7. See 15 U.S.C. � 1057(b).
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