WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Daimler AG v. William Wood Case No. D2008-1712 1. The Parties
The Complainant is Daimler AG, of Stuttgart, Germany, represented by Debevoise & Plimpton, United States of America.
The Respondent is William Wood, of Georgia, United States of America, represented by John Berryhill, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2008. On November 10, 2008, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On November 10, 2008, Network Solutions, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 13, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed on November 17, 2008 an amendment to the Complaint. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced November 19, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response December 11, 2008. The Response was filed with the Center on December 12, 2008.
On December 29, 2008, the Complainant filed a Reply to the Respondent's Response stating that the Reply was “designed to address factual issues about which Respondent [sic] could not reasonably have been aware or have anticipated at the time of the filing of the Complaint”. On January 9, 2009, the Respondent filed a Response to the Complainant's Unauthorized Filing for “the event that the Panel deems to consider the Complainant's unauthorized filing”.
The Center appointed David J.A. Cairns, The Honourable Neil Anthony Brown QC and David E. Sorkin as panelists in this matter on January 22, 2009. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is the owner of various United States and international trademark registrations consisting of or including the word MERCEDES, including USPTO registration Nº 0100958 for the word mark MERCEDES, registered on November 3, 1914 and based on a first use in commerce of December 11, 1909.
The disputed domain name was originally registered on February 14, 1999 by Donnald Drummonds and the current Respondent was listed as the Administrative, Technical Contact. Later that year, Donnald Drummonds, Lee Scheeler and the Respondent created MercedesShop, LLC. In 2004, the Respondent acquired Donnald Drummonds' share of the LLC and the disputed domain name was transferred to his name.
There was a prior case against the original registrant, Donnald Drummonds, involving the same Complainant and the same domain name: DaimlerChrysler A.G. v. Donnald Drummonds,WIPO Case No. D2001-0160, dated June 18, 2001 (hereinafter, the “Prior Decision”). The majority of the Panel found that the complainant had “failed to prove that the respondent had no rights or legitimate interests in respect of the domain name at issue. The majority view in the Prior Decision was based on the findings that the website (i) was “descriptive of the business conducted there” because the respondent was “serving as a clearinghouse for information concerning Complainant's vehicles and is selling parts and accessories exclusively for Complainant's vehicles” and (ii) it contained “a clear disclaimer”. Obiter dicta, on the issue of bad faith, the majority of the Panel found that “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 [sic], Panel decisions have not found that the respondent acted in bad faith [quotations omitted]”.
The minority found that the 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 minority also found 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)”.
The home page of the website that the disputed domain name leads to tells Internet users prominently that they “have just arrived at the ultimate site devoted to Mercedes-Benz automobiles”. There are a number of photographs of MERCEDES cars and insignia. Under the question “What would you like to do?”, there are links entitled firstly ‘AllPartsExpress' with the legend “Shop for Mercedes Parts in our AllPartsExpress Store”; and secondly ‘Shop Forum', with the legend “Get Technical Support and much more!”. There are various other links on the home page, including ‘', ‘Mercedes Car Sale' and ‘Ask a Mercedes Mechanic'. There is an explanation of the website that reads as follows:
“Since we began in February 1999 our foremost priority has been providing a free exchange of technical information and ideas regarding Mercedes-Benz vehicles. We also provide informative Do-It-Yourself articles complete with detailed pictures, descriptions, part #'s, and instructions.”
“Several certified master technicians with decades of experience as well as thousands of very competent do-it-yourselfers participate in our Shop Forum. Our unique bulletin board has sections devoted to Car Care, Classifieds, Performance, and of course Tech Help. By either posting your questions directly to the Shop Forum or searching through our extensive database with the provided search engines you can easily access their vast experience.”
“Need Mercedes parts? Check out FastLane and AllPartsExpress. We've got Mercedes parts AND lots of other parts available in our on-line catalogs. MercedesShop is supported by the parts we sell. ”
“We encourage all guests to register as a member of our thriving Shop Forum community. Among other perks, members have the option of being notified immediately via email when their question has been answered but, you are not flooded with unnecessary e-mails that don't interest you. Guests may also read our detailed reviews of both current model cars and old favorites.”
“Don't forget to visit us often to see ‘What's New' as we are constantly updating and improving the site for your satisfaction.”
It is apparent, therefore, that despite its commercial content, a substantial element of the website is devoted to a discussion forum.
The AllPartsExpress link leads to pages containing two drop down lists: “make” and “year”. Under the first one, users may select between over 80 car brands or ‘makes' including ‘Mercedes-Benz'.
The TireR link has a drop down list of vehicle names and the year of manufacture. The first name is ‘Mercedes-Benz' but there then follows a long list of other automotive trends such as ‘Audi', ‘BMW', ‘Buick', Cadillac' etc.
The home page also carries, at least in some jurisdictions where the website is accessible, “Ads by Google” which include an advertisement in the form of a link to ING Insurance, which promotes car insurance for Mercedes vehicles, but also for other brands of automobiles and for house, life and other forms of insurance.
At the bottom of the home page, in small print and not easily readable in the Panel's experience when the page is loaded, is a purported disclaimer that reads as follows:
“MercedesShop recognizes that ‘Mercedes', ‘Mercedes-Benz', the three pointed star and various model numbers are registered trademarks of Daimler AG. These terms are used for identification purposes only. MercedesShop is not affiliated in any way with Daimler AG.”
The Panel also investigated the history of the use of the Respondent's website through the Internet Archive Wayback Machine at “”. The Internet Archive Wayback Machine is a service that allows people to visit archived versions of Web sites. In particular the Panel examined the web pages of the Respondent archived at various dates since May 22, 2001. The Panel notes that the Internet Archive is a resource that is well known and often relied to by counsel and Panels in UDRP domain name disputes. In the same way as the Panel examines the actual use of a website, so it may examine its historic use.
The Panel notes that there are limitations to the information available on the Internet Archive, as is clear from the explanations of the Internet Archive under the links ‘Frequently Asked Questions' and ‘FAQ section for lawyers'. In particular, the Internet Archive does not collect all sites on the web, and nor is every site archived 100% complete. Further, the date assigned to archived material in the Internet Archive does not mean that material existed on that date, as where there is an incomplete archived site ‘the Wayback Machine will grab the closest available date...for the links that are missing'. Similarly, images that appear on the printed page may not have been archived at the same time as the HTML file. For the actual date of a link or an image the user must look at the date code embedded in the archived url of that particular webpage, as explained in the Frequently Asked Questions. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to the MERCEDES trademark because (i) the trademark is incorporated in its entirety; (ii) “shop” is a generic word; and (iii) “shop” only adds to the confusion because the user is led to believe that there is an association with the Complainant.
The Complainant contends that the Respondent lacks rights or legitimate interests in the disputed domain name because the Complainant has not authorized the Respondent to use the MERCEDES trademark, and the Respondent lacks rights or legitimate interests under all three provisions of Rule 4(c) of the Policy. Specifically, the Complainant states that: (i) the fact that the Respondent operates the site under MercedesS, LLC is insufficient to establish a legitimate interest since the Respondent began using it after having registered the disputed domain name and long after rights had been established by the Complainant in the MERCEDES trademark; and (ii) the disputed domain name is not being used in connection with a bona fide offering of goods and services because the Respondent also sells non-genuine MERCEDES-BENZ parts and parts for vehicles of the Complainant's competitors. In this regard, the Respondent fails the second requirement of the test established by the decision Oki Data Americas, INC. v. ASD, Inc.,WIPO Case No. D2001-0903 in so far as the Respondent does not only sell the trademarked goods. The Respondent equally fails the third requirement of the Oki Data test because the content of the website confuses Internet users as to the Respondent's relationship with the Complainant and the use of a tiny disclaimer does not dispel any initial interest confusion.
The Complainant contends that the disputed domain name was registered and is being used in bad faith since: (i) the Respondent must have been aware of the Complainant's mark at the time of registration; and (ii) the Respondent registered the disputed domain name to attract users to its commercial site by creating the impression that it is affiliated to or endorsed by the Complainant.
In its Reply to the Respondent's Response, the Complainant: (i) contends that even if Mr. Drummonds was merely a proxy for the LLC, this does not change the fact that the Complaint against the current Respondent is entirely appropriate since the Complaint has been filed against a “different Respondent” for the purposes of the Policy; (ii) highlights the changes underwent by the website of the disputed domain name since it was transferred to the current Respondent; and (iii) contests certain statements made by the Respondent. B. Respondent
The Respondent contends that the present dispute is a second attempt by the Complainant to have disputed domain name transferred.
Under the heading “Identity or Confusing Similarity”, the Respondent contends that there is no evidentiary basis for concluding that a relevant consumer would assume that “MercedesS” is authorized, sponsored, or endorsed by the Complainant because: (i) the search engine will display a disclaimer stating “We are not affiliated in any way with Daimler AG” prior to entering the website; and (ii) Internet users are unlikely to type in “MercedesShop” when searching for the Complainant.
Under the heading “Legitimate Rights or Interests”, the Respondent makes several contentions including that: (i) the facts scarcely differ from the original proceedings; (ii) the most extensive feature of the site is the “Shop Forum”; (iii) the website is extensively used and has been used for many years; (iv) MercedesS is not a simple parts vendor or retailer and therefore it does not fit into “re-seller” cases such as Oki Data; (v) the website has a remarkable and well-known reputation; (vi) users are perfectly aware that it is a third party site not sponsored by Mercedes; (vii) the Respondent has a legitimate interest in continued operation of the website and also claims an interest on behalf of the thousands of users and participants of the website.
Under the heading ‘Bad Faith', the Respondent contends that the Complainant's argument on the point of bad faith revolves primarily around “bait and switch” of the type discussed in the Oki Data decision. The Respondent rejects the applicability of the Oki Data tests to the present case on various grounds, including that the Oki Data test does not apply automatically to all selling sites, and MercedesS is the premier community of Mercedes enthusiasts and not just a parts vendor, or reseller, website. The Respondent further contends that: (i) he is not using the Mercedes “star” logo but a photo-montage of Mercedes cars that includes a photograph of a Mercedes hood ornament; (ii) the Respondent has sought to have any errors corrected in the catalog operated by Sophio Software LLC and Worldpac which, as far as was known to the Respondent, have consistently presented items as “Genuine”, “OEM” or “OES”. The Respondent finally contends that the Complainant has not shown how any of the alleged changes of the website since the transfer occurred relate to any bad faith intention on the part of the Respondent.
In his Response to the Complainant's Unauthorized Filing, the Respondent makes several contentions including that: (i) the “real” Respondent in these proceedings and in the prior WIPO case that dealt with the same domain name are the same, namely, MercedesS, LLC; (ii) the forum is the first feature of the website; and (iii) this case raises factually complex issues that are inappropriate for resolution in a summary proceeding. The Respondent further emphasizes some of the contentions made in his Response. 6. Discussion and Findings
A preliminary procedural issue is the admissibility of the supplemental filings by each party, for which there is no provision in the Rules. This Panel considers that it has discretion in this regard, and that it is appropriate to consider the circumstances of each case before deciding whether to admit unsolicited additional submissions (see Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447; SC FARMEC S.A. and S.C. SICOMED S.A. v. JN Prade,WIPO Case No. D2005-0701).
In the present instance the Panel has decided, in the exercise of its discretion and having regard to all of the circumstances, to accept the unsolicited submissions of both the Complainant and the Respondent for the following reasons: (i) both parties have submitted supplementary responses that have been of assistance to the Panel; (ii) the exceptional circumstances of this case, including its factual complexity and the need to address matters that could not have been reasonably addressed in the initial submissions; and (iii) the Panel is satisfied that the acceptance of these supplementary responses is in all respects consistent with its obligation in paragraph 10(b) of the Rules to ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
Another preliminary procedural issue refers to whether this Complaint involves a refiled case. As stated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, the consensus view is that “[a] refiled case involves the complainant submitting a second complaint involving the same domain name(s) and the same respondent(s) as in an earlier complaint that had been denied”. The Panel is satisfied that, even if MercedesS, LLC enjoys the use of the disputed domain name registration, the current registrant and legal owner is William Wood, the Respondent, while the registrant, legal owner and respondent in the prior proceedings was Donnald Drummonds. Therefore, the Panel considers that the Complaint has been filed against a different respondent for the purposes of the Policy.
The Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems appropriate.
Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the Respondent's domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name. A. Identical or Confusingly Similar
The Panel accepts that the Complainant owns various registered trademarks for the word mark MERCEDES.
The disputed domain name is not identical with the MERCEDES trademark, but does incorporate this mark entirely. The fact that a trademark is incorporated in its entirety in a domain name is a solid indication, but does not ipso facto mean, that the domain name is confusingly similar to the trademark. The similarity of the trademark and the domain name depends on many factors, including “the relative distinctiveness of the trademark and the non-trademark elements of the domain name, and whether the non-trademark elements detract from or contradict the function of the trademark as an indication of origin.” (See Pfizer Inc v. The Magic Islands,WIPO Case No. D2003-0870). However, this is another case of the addition to a registered trademark of the suffix ‘shop' which, as other UDRP decisions demonstrate, is unlikely to prevent the disputed domain name from being confusingly similar to the registered trademark (see Audi AG v. Jun Suk Min WIPO Case No. D2007-0200 (); Ferrari S.p.A. v. Pierangelo FerrariWIPO Case No. D2001-1004 ().
In the present case, the disputed domain name is confusingly similar to the MERCEDES trademark for the following reasons: (i) it incorporates the Complainant's tradename in its entirety; (ii) ‘Mercedes' (a woman's name) is neither a common nor descriptive word; (iii) ‘shop' is an ordinary descriptive word; (iv) in the disputed domain name, ‘shop' refers specifically to ‘mercedes', suggesting that a website to which the domain name resolves is an on-line sales outlet for MERCEDES products, thereby emphasising the trademark function of the ‘mercedes' element of the disputed domain name; (v) the MERCEDES trademark is widely-known internationally and Internet users will associate the disputed domain name with the Complainant's trademark.
Therefore the suffix ‘shop' does not avoid a confusing similarity between the MERCEDES trademark and the disputed domain name, and so the first element of the Policy is satisfied. B. Rights or Legitimate Interests
The Panel notes the following circumstances in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (i) there is no evidence before the Panel that the Respondent has any proprietary or contractual rights in any registered trademark corresponding in whole or in part to the disputed domain name; (ii) the Respondent is not authorized or licensed by the Complainant to use the MERCEDES trademark or to register and use the disputed domain name; and (iii) notwithstanding that a substantial element of the website is devoted to a discussion forum, there is no question as to its commercial purpose of the sale of MERCEDES and other brands of automobiles and auto parts, tyres and insurance.
The Complainant states that the Respondent does not have rights or legitimate interests in the domain name in the terms of paragraph 4(c)(i) of the Policy because the use is not in connection with a bona fide offering of goods or services. In relation to the interpretation of bona fide, the Complainant refers to the well known decision in Oki Data Americas, Inc. v. ASD, Inc. WIPO Case No. D2001-0903 (“Oki Data”).
Oki Data is accepted, for example in the recent decision in ITT Manufacturing Enterprises, Inc., ITT Corporation v. Douglas Nicoll, Differential Pressure Instruments, Inc., WIPO Case No. D2008-0936, as “the prevailing view” on whether an offering of goods or services by a reseller may be regarded as bona fide for the purposes of paragraph 4(c)(i) of the Policy.
Oki Data laid down four requirements that must be met before it may be said that such a reseller of goods or services is making a bona fide offering. Those four requirements are as follows:
“Respondent must actually be offering the goods or services at issue. E.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306 (January 24, 2001) (respondent failed to show demonstrable preparations to use the domain name in connection with a bona fide offering).
- Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods. Nikon, Inc. v. Technilab,WIPO Case No. D2000-1774 (February 26, 2001) (use of Nikon-related domain names to sell Nikon and competitive cameras not a legitimate use); Kanao v. J.W. Roberts Co., Case No. 0109 (CPR July 25, 2001) (bait and switch is not legitimate).
The site must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents. E.g., Houghton Mifflin Co. v. Weatherman, Inc.,WIPO Case No. D2001-0211 (April 25, 2001) (no bona fide offering where website's use of Complainant's logo, and lack of any disclaimer, suggested that website was the official Curious George website); R.T. Quaife Engineering v. Luton,WIPO Case No. D2000-1201 (November 14, 2000) (no bona fide offering because domain name improperly suggested that the reflected site was the official U.S. website for Quaife, an English company; moreover, respondent's deceptive communications with inquiring consumers supported a finding of no legitimate interest); Easy Heat, Inc. v. Shelter Prods.,WIPO Case No. D2001-0344 (June 14, 2001) (no bona fide use when respondent suggested that it was the manufacturer of complainant's products).
The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. Magnum Piering, Inc. v. Mudjackers,WIPO Case No. D2000-1525 (January 29, 2001) (‘a single distributor is extremely unlikely to have a legitimate interest in precluding others from using numerous variants on a mark').”
The Complainant argues that the Respondent fails the second and third requirements of bona fide referred to in this decision. In view of the decision at which the Panel has arrived on the second requirement, it is not necessary for the Panel to express a concluded view on whether the third requirement has been met in this case.
As already noted, the second requirement referred to in Oki Data is that “Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods”. Similar reasoning appears in many other UDRP decisions and is reflected in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions.
There is no doubt that the Respondent is selling non-MERCEDES parts on its website. It is offering parts for other brands of automobile, other brands of automobiles as well as Merecedes, tyres sold by TireR, and insurance sold by ING Insurance. Accordingly, it cannot be said that it is using the site “to sell only the trademark goods”. It has therefore not satisfied the second requirement. That conclusion is consistent with other UDRP decisions on analogous facts, such as Control Techniques Limited v. Lektronix Ltd.,WIPO Case No. D2006-1052 where the panel said: “Applying the Oki Data principles and this important qualification on those principles, to the facts of the present case, it is clear that the Respondent cannot rely on it to show a bona fide offering of goods and services, or, consequently, a right or legitimate interest in the domain name. That is so because the websites to which the domain names and resolve, promote the repair of and spare parts for, Control Techniques products, but they also promote them for other and rival brands.”
The Oki Data case related to domain name use by an authorized sales or service agent. The Respondent argues that the website hosted at the disputed domain name is of a different type, manifesting a ‘brand culture' with sophisticated users. The Respondent refers to the extensive use of the Respondent's discussion forum, and states that “Respondent's site is a leading independent source of information about the Complainant's product”. It states that the Complainant is trying “to shoehorn this situation into a ‘reseller UDRP' case, [which] demonstrates the unfitness of the Policy to factually complex and disputed situations”.
However, the second requirement in the Oki Data case recognises that the use of a trademark to sell (or to offer for sale) products of another manufacturer is an abuse and misappropriation of the goodwill attaching to the trademark. This abuse occurs equally with sophisticated purchasers who, initially intending to buy a MERCEDES branded or approved product, might change their minds at the point of sale if offered a generic alternative. Accordingly, the Respondent cannot rely on the alleged sophistication of its customers to justify offering for sale non-MERCEDES products.
Further, the fact that a website has a substantial legitimate element, either in the form of sales of trademark products or a widely used discussion forum, does not mitigate the wrong of misappropriation of goodwill through potential bait-and-switch selling.
The Panel has also considered whether it may be legitimate to use an automobile trademark not only to sell authorised parts, but also to sell parts made by other manufacturers for that brand of automobile. In a website devoted to the MERCEDES enthusiast, where many of the visitors to the website may wish to repair or replace parts in models no longer in production and where authorised parts might be no longer available or readily available, then may it be legitimate to use the MERCEDES trademark to sell parts compatible with MERCEDES automobiles but not manufactured or authorised by the Complainant? The position of aftermarket parts as they are called has been considered in earlier decisions without qualification from the Oki Data test (see Volvo Trademark Holding AB v. Peter LambeWIPO Case No. D2001-1292; Toyota Motor Sales, U.S.A., Inc. v. Pick Pro Parts IncWIPO Case No. D2005-0562), but also without consideration of the question of the age of the models or availability of authorised parts. Whatever the answer to this question may be, this Panel does not need to decide it in the present case, as here the Respondent is not simply offering aftermarket parts for MERCEDES cars, but also parts for many other brands of automobile, identified by their brand names.
In light of the Respondent's submissions, the Panel has also considered whether or in what circumstances, a domain name owner might have rights or legitimate interests in a domain name incorporating the trademark of another, notwithstanding its use of the trademark to sell products of the trademark owner's competitors. In other words, whether the combination of the special circumstances of this case might justify an exception to the application of the Oki Data standard.
Such special circumstances referred to in the present case include the following: (i) the domain name was registered in 1999 and has been continually used since then; (ii) the Respondent was involved with this website since its inception and became the registrant in 2004 when another of the original partners left; (iii) the Respondent claims that the site has between 23,000 and 46,000 visitors per month and although some of the statistics of the Respondent are disputed by the Complainant there is no doubt that this is a popular and heavily used site; (iv) the Respondent refers to testimonials that confirm the reputation of the website as a source of information; (v) the Complainant has been aware of the Respondent's use of the domain name since at least 2001; and (vi) the Complainant has not explained what steps (if any) it has taken between this proceeding and the earlier UDRP case to monitor the Complainant's use of its website, or to protest at its sale of non-MERCEDES parts.
This inquiry overlaps with the bad faith inquiry of the third element of the Policy. The acquisition of rights or legitimate interests through use and acquiescence over time would require good faith use, which simply does not exist in the present case.
In the Declaration of William Wood attached as Exhibit J to the Respondent's Response, the Respondent states that “[i]n 1999, Donnald … Drummonds, Lee Scheeler and I desired to start an online forum where we could post articles and technical information about Mercedes automobiles and invite others to do so… Soon after we launched the site, we found it was an expensive undertaking, and we sought to obtain advertisers of products of interest to Mercedes enthusiasts to support operation of the site. In 2001, our operation of the website was challenged by Daimler. At that point in time, we had an active forum, a number of advertisers, and we were engaging in affiliate sales of original, OEM and aftermarket parts for Mercedes automobiles”.
According to this statement, the disputed domain name was originally registered in order to create a forum, and only later were advertising and sales introduced. However, the Panel notes that the name of the disputed domain name is . “Shop” and “com” are indicative of commercial activity and revenue expectations. The fact that the disputed domain name does not suggest a discussion site for MERCEDES enthusiasts but a site that sells MERCEDES products indicates that the intention of the registrants has always been to develop a business activity. This is confirmed by the Panel's review of the history of the use of the disputed domain name.
It is a feature of this case, that neither party has given the Panel an analysis of the changes to the website over time, notwithstanding that the Complainant explicitly relies on these changes (Reply paragraph 9). The Panel's own researches (in the Internet Archive, and recognising the care required with this resource for the reasons referred to above) suggest that the Respondent has been selling or preparing to sell parts for other brands of automobile since around the time of the Prior Decision. For example, the webpages archived under the date July 22, 2001,had a link for “FastLane.Shop our online catalog for ALL Import parts”, and then a link to a webpage (url date August 3, 2001) called “on-line Catalog”, where there appeared a drop-down menu with the names of many vehicle manufacturers other than Mercedes.
By webpages archived for July 22, 2001 also have a link (url date August 1, 2001) entitled ‘Check out the shop we're building.' This subsequently changed to ‘Check out our shop' (webpage archived July 22, 2002; link of the same date), thus implying that the shop under construction was now completed. Following this link led to the associated website of MB Autowerks at Sugar Hill in Georgia where Mr. Drummond and Mr. Wood were listed as Managers of the business. The promotion on that website maintained that MB Autowerks offered superior quality service and sales, but only for Mercedes-Benz automobiles.' The website further showed that the shop in question was housed in premises that had by then been built and it was illustrated by photographs of the premises and motor cars that were presumably on sale.
The website clearly offered for sale non-Mercedes-Benz parts by August 2001 and by July 22, 2002 it was offering for sale Mercedes-Benz motor vehicles. These developments show an increasingly commercial use of the disputed domain name.
It can also fairly be said that this trend continued up to and beyond the time when the present Respondent bought Mr. Drummond's interest in the business on August 31, 2004, and acquired the registration of the disputed domain name. While MB Autowerks initially sold only Mercedes Benz vehicles, by May 20, 2004, three months before the sale of the shares, this had changed and the website then said: “MB Autowerks has teamed up with AGN Auto Gallery to offer the finest pre-owned Mercedes and other luxury vehicles.” (emphasis added). Accordingly, at the time of the sale of the shares, the site to which the disputed domain name resolved was promoting the sale of brands of luxury vehicles other than Mercedes-Benz through MB Autowerks.
The Panel therefore concludes from that history that the use of the domain name and the website has been increasingly commercial and increasingly away from an exclusive association with Mercedes-Benz spare parts, to non-Mercedes Benz spare parts, followed by Mercedes Benz vehicles and finally non-Mercedes vehicles.
Further evidence would have been helpful, but in the final analysis the legitimate elements of the website (such as the forum, and the sale of MERCEDES parts, and perhaps afterparts for MERCEDES automobiles) cannot redeem the flagrant use of the MERCEDES trademark to sell parts for a wide range of competing automobiles and the other commercial activities that have no connection with Mercedes Benz. The Respondent has chosen to use a successful website for an illegitimate purpose. He has chosen to increase the website traffic and his sales and revenue, by offering parts for a wide range of automobile brands, as well as other products. In doing so, he has forfeited any rights or legitimate interest in the disputed domain name that may once have existed (as recognised in the Prior Decision) and may have continued to exist if the website had remained confined to spare parts for MERCEDES automobiles.
Accordingly, the second element of the Policy is satisfied. C. Registered and Used in Bad Faith
The Panel is satisfied that the Respondent is using the disputed domain name to sell parts for automobiles other than MERCEDES automobiles, and is explicitly referring to other brands of automobile, competitors of Mercedes, on its website. It is a bad faith use of a domain name to use the trademark of a manufacturer to offer for sale parts for automobiles of competing manufacturers as well as the other products and services referred to above. Accordingly, this is a clear case of bad faith use, and the only issue is whether bad faith registration is established.
For the purposes of the determination of registration in good faith, the Panel considers not the good faith of the original registrant of the disputed domain name, but Respondent's good faith at the time of its acquisition: see The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services [23658],WIPO Case No. D2007-1438 (“The general rule established by panels is that a subsequent acquirer of a domain name is held to have ‘registered' that domain name for purposes of the Policy as of the date of acquisition of the registration rights.”); HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager,WIPO Case No. D2007-0062 (“[T]he transfer of a domain name to a third party does amount to a new registration, requiring the issue of bad faith registration to be determined at the time the current registrant took possession of the domain name”). The Respondent acquired the disputed domain name in 2004.
In considering whether the disputed domain name was registered in bad faith at the time of the transfer in 2004, the Panel has considered prior facts that are relevant to determine the intention of the Respondent in 2004 and the circumstances under which the transfer was made. For the reasons already explained, the Panel has no doubt that by the time of the Respondent's registration in 2004, the Respondent knew and had participated in illegitimate use of the MERCEDES name to offer for sale, parts, automobiles and other products of other manufacturers, and therefore the registration at this time was in bad faith.
It may well be that, at least until June 18, 2001, when the Prior Decision was issued, the commercial activity was limited to advertising and selling products for MERCEDES automobiles. This is derived from the Respondent's Declaration and from the text of the Prior Decision, which expressly states that the respondent was “serving as a clearinghouse for information concerning Complainant's vehicles and is selling parts and accessories exclusively for Complainant's vehicles”. However, as has already been shown by the history of the website, the Respondent quickly started offering for sale parts for other brands of automobiles as part of a trend towards increasing commercialization of the site. The Panel rejects the argument that the inclusion of the MERCEDES trademark in the disputed domain name is for identification purposes only, as the site clearly offers parts and other products for brands other than MERCEDES.
Therefore, the Panel finds that on registering the disputed domain name and then in its subsequent use, the Respondent intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. In this sense, the Panel finds that the use of a disclaimer in small print, at the bottom of the home page and not always displayable when the page is loaded is not enough to overcome the likelihood of confusion. Moreover, the text of the disclaimer falls short of disclaiming any type of relationship with or endorsement by the Complainant.
For these reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. 7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, be transferred to the Complainant.
David J.A. Cairns
Presiding Panelist
The Honourable Neil Anthony Brown QC
Panelist
David E. Sorkin
Panelist
Dated: February 25, 2009
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