DaimlerChrysler Corporation v. credoNIC.com/DOMAIN FOR SALE
Claim Number: FA0406000284954
Complainant is DaimlerChrysler Corporation (“Complainant”), represented by George T. Schooff, 5445 Corporate Drive, Suite 400, Troy, MI 48098. Respondent is credoNIC.com/DOMAIN FOR SALE (“Respondent”), P.O. Box 1991, Hallandale, FL 33008.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bankstreetchryslerjeep.com>,
<upperdarbychrysler.com>, <jeepcityusa.com>, <roebuckchryslerjeep.com>,
<old-colony-dodge.com> and <valleydodgemt.com>, registered with Enom, Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Houston Putnam Lowry (Chartered Arbitrator and chair), Tyrus R. Atkinson, Jr. and Karl V. Fink as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 9, 2004; the Forum received a hard copy of the Complaint on June 14, 2004.
On June 9, 2004, Enom, Inc. confirmed by e-mail to the Forum that the domain names <bankstreetchryslerjeep.com>, <upperdarbychrysler.com>, <jeepcityusa.com>,
<roebuckchryslerjeep.com>, <old-colony-dodge.com> and <valleydodgemt.com> are registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 22, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 12, 2004 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com and firstname.lastname@example.org by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On July 27, 2004, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Houston Putnam Lowry (Chartered Arbitrator and chair), Tyrus R. Atkinson, Jr. and Karl V. Fink as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
FACTUAL AND LEGAL GROUNDS
For many years, Complainant, DaimlerChrysler Corporation (“DaimlerChrysler”), has promoted its goods and services throughout the United States under the marks CHRYSLER, JEEP and DODGE, among others, to allow consumers to readily identify those goods and services as emanating from DaimlerChrysler.
DaimlerChrysler has sought and obtained multiple federal registrations for marks that include the words CHRYSLER, JEEP and DODGE, alone and in combination with various designs and/or other marks.
All of the Registered Marks are in full force and effect, unrevoked and uncancelled.
DaimlerChrysler also has common law rights in CHRYSLER, JEEP and DODGE, alone and in combination with various designs and/or other marks (hereinafter referred to as the “Common Law Marks”), due to its long, extensive, and exclusive use of same.
As a result of DaimlerChrysler’s promotion of its goods and services over many years under its trademarks and service marks, including the Registered Marks and Common Law Marks, as well as consumers’ widespread use of those goods and services, DaimlerChrysler’s goods and services have come to be, and now are, well and favorably known to the public under the Registered Marks and Common Law Marks.
DaimlerChrysler has thereby built up and now owns valuable goodwill that is represented by its trademarks and service marks, including the Registered Marks and Common Law Marks.
The Registered Marks and Common Law Marks have thus become famous and distinctive.
In view of the famous and distinctive nature of DaimlerChrysler’s trademarks and service marks, DaimlerChrysler has also registered and used many of its trademarks and service marks as Internet Domain Names, including CHRYSLER, JEEP and DODGE. See, e.g., <JEEP.com>, <CHRYSLER.com>, <DODGE.com> and <4ADODGE.com>.
Consumers associate the famous and distinctive CHRYSLER, JEEP and DODGE marks with DaimlerChrysler, the registration and use of Internet Domain Names that include these marks. These domain names allow consumers to quickly access information about DaimlerChrysler’s goods and services over the Internet.
DaimlerChrysler also permits its authorized dealers to register and use Internet Domain Names that include its famous and distinctive trademarks and service marks, thereby allowing consumers to quickly obtain information about DaimlerChrysler’s goods and services provided by that dealer.
In the metropolitan Detroit area, for example, DaimlerChrysler allows its authorized dealers to use the marks CHRYSLER, JEEP and DODGE in various Internet Domain Names, including:
<rochesterhillsCHRYSLERJEEP.com>; <friendlyCHRYSLERJEEP.com>; <northlandCHRYSLERJEEP.com>; <palaceCHRYSLERJEEP.com>; and
DaimlerChrysler also permitted a Canadian dealer, Bank Street Chrysler Jeep, to register and use the Internet Domain Name <bankstreetchryslerjeep.com>.
But when Bank Street Chrysler Jeep changed its name to Dilawri Chrysler Jeep, it did not renew the <bankstreetCHRYSLERJEEP.com> Domain Name.
Similarly, when Roebuck Chrysler Jeep changed its name to Benchmark Chrysler Jeep, it too allowed its registration of the <roebuckCHRYSLERJEEP.com> Domain Name to lapse, and began using the Domain Name <benchmarkCHRYSLERJEEP.com> instead.
In addition, authorized DaimlerChrysler dealers also registered and used <upperdarbyCHRYSLER.com> and <valleyDODGEmt.com> but have since allowed those registrations to lapse.
Finally, an authorized DaimlerChrysler dealer uses <oldcolonyDODGE.com> as a Domain Name.
(ii) The domain names registered and used by Respondent, credoNIC.com, are confusingly similar to marks that DaimlerChrysler owns
Respondent, credoNIC.com/DOMAIN FOR SALE, registered and is using the Domain Names <valleyDODGEmt.com>, <JEEPcityusa.com>, <bankstreetCHRYSLERJEEP.com>, <upperdarbyCHRYSLER.com>, <old-colony-DODGE.com> and <roebuckCHRYSLERJEEP.com>.
Each of the Domain Names includes one or more of DaimlerChrysler’s Registered Marks and Common Law Marks.
Therefore, the Internet Domain Names that are the subject of this Complaint are identical or confusingly similar to DaimlerChrysler’s Registered Marks and Common Law Marks.
Highlighting the confusion inherent in credoNIC’s registration and use of the Domain Names <bankstreetCHRYSLERJEEP.com>, <upperdarbyCHRYSLER.com>, <valleyDODGEmt.com> and <roebuckCHRYSLERJEEP.com> is the fact that each domain name was previously registered and used by an authorized DaimlerChrysler dealer.
As a result, numerous websites still include those Domain Names as hotlinks under the mistaken belief that Internet users clicking on the link will be directed to the authorized DaimlerChrysler dealer’s homepage rather than credoNIC’s website.
For example, the Montana Business Directory (located at <businessmt.com>) includes a hotlink to <valleyDODGEmt.com>, along with a general description of Valley Dodge of Montana, and the DaimlerChrysler goods and services that Valley Dodge of Montana provides.
Rather than taking the user to Valley Dodge of Montana’s homepage, however, the user is instead hijacked to credoNIC’s pornographic website.
Furthermore, credoNIC’s registration and use of the <old-colony-DODGE.com> Domain Name is virtually identical to the <oldcolonyDODGE.com> Domain Name that is currently used by one of DaimlerChrysler’s authorized dealers, Old Colony Motors.
Thus, Internet users hoping to access Old Colony Motors’ homepage that mistakenly add hyphens between the words will also be hijacked to credoNIC’s pornographic website.
(iii) Respondent credoNIC has no legitimate rights or interest in the domain names that are the subject of this Complaint
Prior to credoNIC’s registration and use of the Domain Names that are the subject of this Complaint, credoNIC has not used any trademark or service mark in commerce that is either identical or confusingly similar to those Domain Names.
In fact, credoNIC simply waits for the prior user’s Domain Name registration to expire, whether intentionally or inadvertently, and then “snaps up” the registration to try and resell the Domain Name at an amount substantially in excess of its out-of-pocket costs.
(iv) Respondent credoNIC’s registration and use of the domain names that are the subject of this Complaint are in bad faith
As the annexed documentary evidence demonstrates, consumers inputting any of the Domain Names at issue are initially taken to credoNIC’s website featuring hard-core pornographic material.
Consequently, consumers trying to locate information about DaimlerChrysler’s goods or services through a Domain Name previously used by an authorized DaimlerChrysler dealer will instead be taken to an adult-oriented website.
Or, consumers attempting to locate information about DaimlerChrysler’s goods or services through Old Colony Motors, a name still used by an authorized DaimlerChrysler DODGE dealer, will likewise be directed to the same adult website if the Internet Domain Name <old-colony-DODGE.com> is entered.
Moreover, by including DaimlerChrysler’s famous and distinctive JEEP mark in the <JEEPcityusa.com> Domain Name, credoNIC is luring unwitting consumers to its adult website as a result of the confusion that necessarily follows.
credoNIC is therefore attempting to attract Internet users to its pornographic website for commercial gain by creating a likelihood of confusion with DaimlerChrysler.
Apart from seeking to profit from the confusion, credoNIC is also offering the Domain Names for sale at an amount far in excess of its out-of-pocket costs.
Specifically, as the annexed documentary evidence demonstrates, credoNIC is offering to sell <upperdarbyCHRYSLER.com>, <roebuckCHRYSLERJEEP.com>, <old-colony-DODGE.com>, <valleyDODGEmt.com> and <JEEPcityusa.com> for $500, and <bankstreetCHRYSLERJEEP.com> for $250.
Furthermore, by linking these Domain Names to a pornographic website, credoNIC is trying to coerce their sale at an inflated price due to the strong consumer association between the Domain Names and DaimlerChrysler.
In addition, credoNIC’s bad faith registration and use of the Domain Names is shown through the registration information it provided the Registrar of the Internet Domain Names, eNom, Inc.
In this regard, credoNIC provided no contact information beyond a Post Office Box and email address, neither of which are apparently active.
After all, on April 26, 2004, DaimlerChrysler sent a cease and desist letter to credoNIC at the address provided, but credoNIC never responded.
Finally, under facts identical to ours, credoNIC was already ordered to transfer a domain name as a result of its bad faith registration and use of <PRUDENTIALsf.com>.
Respondent has filed no submission.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
Respondent has no rights or legitimate interests in respect of the domain name; and
the domain name has been registered and is being used in bad faith.
Furthermore, the user is directed to Respondent’s website, which offers the domain name registrations for sale. Respondent lacks rights and legitimate interests in the disputed domain names due to its willingness to sell the domain name registrations. See Mothers Against Drunk Driving v. Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, Respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where Respondent registered the domain name with the intention of selling its rights). In this case, the offer to sell the domain name is even part of the name of the registered owner of the domain names. This strongly suggests the domain names were acquired with the intent to sell.
Furthermore, Respondent registered domain names confusingly similar to Complainant’s marks to divert Internet users seeking Complainant’s products and services to pornographic websites, which evidences bad faith use and registration pursuant to Policy ¶ 4(a)(iii). See Nat’l Ass’n of Stock Car Auto Racing, Inc. v. RMG Inc – BUY or LEASE by E-MAIL, D2001-1387 (WIPO Jan. 23, 2002) (“it is now well known that pornographers rely on misleading domain names to attract users by confusion, in order to generate revenue from click-through advertising, mouse-trapping, and other pernicious online marketing techniques”); see also Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where Respondent attracted users to his website for commercial gain and linked his website to pornographic websites); see also Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that Respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith); see also Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (“[W]hatever the motivation of Respondent, the diversion of the domain name to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith”).
Moreover, Respondent offered the <bankstreetchryslerjeep.com>, <upperdarbychrysler.com>, <jeepcityusa.com>, <roebuckchryslerjeep.com>, <old-colony-dodge.com> and <valleydodgemt.com> domain name registrations for re-sale (and registered them with the intent to re-sell them) and offered no evidence that the sale price of the domain name did not exceed its out of pocket costs. Respondent’s registration of domain names confusingly similar to Complainant’s well-known marks with the intent to sell the domain name registrations evidences bad faith registration and use of the domain names. See Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where Respondent offered the domain names for sale); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (“general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”); see also World Wrestling Fed’n Entmt., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs).
Failure to provide correct whois information (whether contact information or the domain owner’s correct name) is also strong evidence of bad faith. Home Director, Inc. v. HomeDirector, D2000-0111, (WIPO Apr. 11, 2000); Agent Host Co v. Host Dot Com Invs., AF-00343 (eResolution Oct. 16, 2000) and Mattel, Inc. v. KPF, Inc., FA 244073 (Nat. Arb. Forum Apr. 26, 2004). In this case, none of the contact information allowed anyone to contact Respondent.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bankstreetchryslerjeep.com>, <upperdarbychrysler.com>, <jeepcityusa.com>, <roebuckchryslerjeep.com>, <old-colony-dodge.com> and <valleydodgemt.com> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered
Arbitrator and Chair, Panelist
Dated: August 5, 2004