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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

DaimlerChrysler Corporation, DaimlerChrysler Services North America LLC v. LaPorte Holdings, Inc.

Case No. D2005-0143

 

1. The Parties

The Complainant is DaimlerChrysler Corporation, DaimlerChrysler Services North America LLC, Southfield, Michigan, United States of America, represented by Kilpatrick Stockton, LLP, United States of America.

The Respondent is LaPorte Holdings, Inc., Attn: mbccredit.com, c/o Nameking, Inc., , Los Angeles, California, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <mbccredit.com> is registered with NameKing.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2005. On February 9, 2005, the Center transmitted by email to NameKing.com a request for registrar verification in connection with the domain name(s) at issue. On February 9, 2005, NameKing.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 on February 15, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 7, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 9, 2005.

The Center appointed Craig Edward Stein as the sole panelist in this matter on March 18, 2005. The Panel finds that it was properly constituted. 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 full record in this matter, which includes the complaint and attached exhibits, as well as the other documents contained in the case file, establish the following facts:

The Complainants in this administrative proceeding are DaimlerChrysler Corporation (“DaimlerChrysler”), a corporation organized under the laws of the State of Delaware with its principal place of business located in Auburn Hills, Michigan, and DaimlerChrysler Services North America LLC (“DaimlerChrysler Services”), a limited liability company organized under the laws of the State of Michigan with its principal place of business located in Farmington Hills, Michigan. DaimlerChrysler is an affiliate of DaimlerChrysler A.G.which owns the “MBCC” service mark upon which the Complaint is based and licenses its use to DaimlerChrysler.

DaimlerChrysler Services is the dedicated finance source for DaimlerChrysler A.G.’s automotive products, including Mercedes-Benz automobiles, sold in the United States, Canada and Mexico. A predecessor to DaimlerChrysler Services was Mercedes-Benz Credit Corporation, known as MBCC. For a number of years prior to the merger of Chrysler Corporation and Daimler Benz A.G., Mercedes-Benz Credit Corporation used the MBCC mark. After the merger in 1998, DaimlerChrysler Services began doing business as Mercedes-Benz Credit. DaimlerChrysler Services began using the MBCC mark in connection with its operations as the third largest financial services provider in the world. DaimlerChrysler Service’s automotive financial services have been advertised and promoted under the MBCC mark through a wide range of media, including online at the domain name <mbcc.com>. Complainants’ <mbcc.com> website has been registered since 1996 and first appeared on the Internet in July 1998. Since its inception, the “mbcc.com” website has had hundreds of thousands of visitors.

Complainants’ <mbcredit.com> website has been registered since 1996 and first appeared on the Internet in March 2003 when DaimlerChrysler Services commenced marketing its services using the mark and domain name <mbcredit.com>. DaimlerChrysler Services makes extensive and prominent use of the <mbcredit.com> domain name and mark. Indeed, the <mbcredit.com> website received over seven million hits in the period September 2003 through September 2004 alone. Thus, both the MBCC.COM and the <mbcredit.com> domain name have been strong source identifiers for Complainants and their services.¹

There is no record evidence concerning Respondent, LaPorte Holdings, Inc.’s (“LaPorte”) business particulars. Thus, whether such an entity even formally exists is uncertain. Nevertheless, according to the Registrar, LaPorte registered the disputed domain name <mbccredit.com> on December 7, 2003. The website to which the disputed domain name resolves includes links and “pop-up” advertisements that lead the user to the websites that offer services which compete with that of Complainants.

In addition, LaPorte has been a named, defaulting Respondent in a rash of recent WIPO proceedings. In each and every such dispute, LaPorte (or its predecessor) has been determined to have registered the challenged domain name in bad faith. See, Medco Health Solutions, Inc. v. LaPorte Holdings, Inc., WIPO Case No. D2004-0800 (finding Respondent’s domain name <medcoheath.com> confusingly similar to trademark “<medcohealth.com>” and ordering transfer); Sociйtй des Hфtels Mйridien v. LaPorte Holdings, Inc., WIPO Case No. D2004-0849 (finding Respondent’s domain name <lemeriden.com> confusingly similar to trademark Le Meridien and ordering transfer); Krome Studios Pty, Ltd. v. LaPorte Holdings, Inc., WIPO Case No. D2004-0707 (finding Respondent’s domain name <tythetasmaniantiger.com> confusingly similar to trademark “Ty The Tasmanian Tiger” and ordering transfer); Sociйtй Franзaise du Radiotйlйphone - SFR v. LaPorte Holdings, WIPO Case No. D2004-0926 (finding Respondent’s domain name <cegtl.com> confusingly similar to trademark “CEGETL” and ordering transfer); Karl’s Sales and Services Company, LLC v. LaPorte Holdings, Inc., WIPO Case No. D2004-0929 (finding Respondent’s domain name <karlsappliances.com> confusingly similar to common law trademark Karl’s Appliances and ordering transfer); CavinKare Private Limited v. LaPorte Holdings, Inc. and Horoshiy, Inc.. WIPO Case No. D2004-1072 (finding Respondent’s domain name <cavincare.com> confusingly similar to unregistered trademark “CavinKare” and ordering transfer); Specialty Store Services, Inc. v. Horoshiy, Inc. and LaPorte Holdings, Inc., WIPO Case No. D2005-0015 (finding Respondent’s domain names <specialitystoreservices.com> and <specialtystoresservice.com> confusingly similar to service mark “SPECIALTY STORE SERVICES” and ordering transfer); HBH, L.P.v. LaPorte Holdings, WIPO Case No. D2004-0864 (finding Respondent’s domain names <honeybakedstore.com>, <honeybakeonline.com> and <thehoneybakedhamstore.com> confusingly similar to several trademarks including “HONEY BAKED HAM”, “HONEYBAKED” and “THE HONEY BAKED HAM COMPANY”, transfer ordered); Nokia Corporation v. Horoshiy, Inc. and LaPorte Holdings, WIPO Case No. D2004-0851 (finding Respondent’s domain names <howtonokia.com>, <nokiapcsuite.com>, <nokiausa.com.> and <nokiasoftwaremarket.com> confusingly similar to “hundreds” of trademarks containing the word “NOKIA” and ordering transfer); Fuji Photo Film U.S.A., Inc. v. LaPorte Holdings, WIPO Case No. D2004-0971 (finding Respondent’s domain names <fuijifilm.com> confusingly similar to trademark “FUJI” and ordering transfer); AT&T Corp v. LaPorte Holdings, Inc., WIPO Case No. D2004-1088 (finding Respondent’s domain name <mobileatt.com> confusingly similar to numerous trade and service marks containing the name “AT &T” and ordering transfer); Consitex S.A., Lanificio Ermeneglido Zegna & Figli S.p.A., Ermeneglido Zegna Corporation v. LaPorte Holdings, Inc., WIPO Case No. D2005-0030 (finding Respondent’s domain name <hermeneglidozegna.com> confusingly similar to numerous trade and service marks containing the name “ERMENEGILDO ZEGNA” and ordering transfer); Robert H. Ham Associates, Limited v. LaPorte Holdings, Inc., WIPO Case No. D2004-1051 (finding Respondent’s domain name <roberthamm.com> confusingly similar to common law trademark “ROBERT M. HAM” and ordering transfer); Knight Transportation, Inc. v. LaPorte Holdings, Inc., WIPO Case No. D2004-1022 (finding Respondent’s domain name <knighttrans.com> confusingly similar to trademark “KNIGHT TRANSPORTATION” and ordering transfer).

 

5. Parties’ Contentions

A. Complainant

1. The domain name <mbccredit.com> is confusingly similar to Complainants’ MBCC mark and to Complainants’ <mbcc.com> and <mbcredit.com> domain names because:

a) Respondent’s <mbccredit.com> domain name includes Complainants’ MBCC mark exactly and in its entirety, is a slight misspelling of the <mbcredit.com> mark, and, in fact, consists of a combination of Complainants’ <mbcc.com> and <mbcredit.com> domain names.

b) With respect to the MBCC mark, the use of the word “credit” in Respondent’s domain name does not differentiate the domain name from Complainants’ MBCC mark. The mere addition of a term to a registered mark is not sufficient to overcome a likelihood of confusion. See Coca-Cola Bottling Co. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 U.S.P.Q. 105 (C.C.P.A. 1975) (“BENGAL” and “BENGAL LANCER”). Rather, in this case, it renders confusion even more likely because Complainants’ MBCC mark is used in connection with financial services, and consumers are likely to associate Respondent’s domain name incorporating the word “credit” with Complainants’ services.

c) Similarly, Respondent’s combination of Complainants’ <mbcc.com> and <mbcredit.com> domain names to form the <mbccredit.com> domain name does not differentiate Respondent’s domain name from Complainants’ domain names. The addition of the word “credit” to Complainants’ <mbcc.com> domain name is not sufficient to overcome a likelihood of confusion. Given the fact that <mbcc.com> was the website for DaimlerChrysler Services’ predecessor by merger, Mercedes-Benz Credit Corporation, for more than five years, Respondent’s use of the word “credit” under the circumstances strongly suggests an affiliation with Complainants. Moreover, the addition of one letter in Respondent’s <mbccredit.com> domain name does not differentiate the domain name from Complainants’ <mbcredit.com> domain name. Minor spelling mistakes are not sufficient to differentiate a mark from a domain name for purposes of determining confusing similarity.

2. The Respondent has no rights or legitimate interests with respect to the domain name because:

a) Complainants’ first use of the MBCC and MBCREDIT.COM marks and domain names predate any use Respondent may have made of <mbccredit.com> or MBCCREDIT. Any use by Respondent would have taken place only recently and after Respondent undoubtedly knew of Complainants’ rights, as set forth in this Complaint. Respondent first registered the domain name at issue more than eight years after DaimlerChrysler Services’ predecessor registered the <mbcc.com> and <mbcredit.com> domain names.

b) Complainants reasonably believe that Respondent was aware of Complainants’ <mbcc.com> and <mbcredit.com> domain names and websites before it registered the domain name <mbccredit.com> since the domain names would have appeared in the search for available domain names made prior to registration. Further, the Complainants’ <mbcredit.com> website was operational at the time Respondent registered the disputed domain name, and thus was easily accessible to the Respondent. Because the Complainants’ common law use of the MBCC mark and registration and continuous use of the domain names <mbcc.com> or <mbcredit.com> predate the Respondent’s domain name registration, Respondent has no intellectual property rights or legitimate interests in the disputed domain name.

c) On information and belief, Respondent has not previously done business under the name “MBCCredit.” Respondent appears to have no corporate, partnership, or fictitious business name or business listing registration under the name “mbccredit.com.” Having searched relevant databases, Complainants have found no evidence that Respondent has ever registered (other than Respondent’s domain name registration) the trademark or used the trade name “mbccredit.com” or MBCCREDIT.

3. The domain name was registered in bad faith based on the following facts:

a) On information and belief, Respondent registered the domain name with the intent to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainants’ MBCC mark and <mbcc.com> and <mbcredit.com> domain names, as to source, sponsorship, affiliation, or endorsement of the Respondent’s website, which indicates bad faith under the Policy.

b) Complainants reasonably believe that Respondent, prior to its adoption and use of the domain name <mbccredit.com>, was aware of Complainants’ use and ownership of the MBCC mark and domain names because of the widespread and long-standing marketing and distribution of Complainants’ publications, including on the Internet through the domain names <mbcc.com> and <mbcredit.com> and in print. Indeed, in the year 2004 alone, Complainants and their affiliates expended many millions of dollars in marketing of Mercedes-Benz automobiles and of Complainant’s financing services offered for those automobiles under the MBCREDIT.COM mark.

c) Moreover, as indicated above, Complainants reasonably believe that Respondent was aware of Complainants’ <mbcc.com> and/or <mbcredit.com> domain names and websites before it registered the domain name <mbccredit.com> since the domain names would have appeared in the search for available domain names made prior to registration.

d) Complainants’ <mbcc.com> website has been registered since 1996 and first appeared on the Internet in July 1998. Complainants’ <mbcredit.com> website has been registered since 1996 and first appeared on the Internet in March 2003. The <mbcredit.com> website reached more than 7.6 million visitors from September 2003 through September 2004. It is thus inconceivable that Respondent did not know about Complainants and the MBCC mark and <mbcc.com> and <mbcredit.com> domain names. As in Ford Motor Co. and Land Rover Ltd. v. Institution, WIPO Case No. DBIZ 2001-0045 (Mar. 26, 2002), the fact that Respondent undoubtedly knew of Complainants is an indicia of its bad faith.

e) Respondent’s use and design of the website also indicates its knowledge of Complainants and Complainants’ services and intent to trade on the goodwill of Complainants’ marks and domain names. Respondent’s website contains the following menu items, which launch numerous pop-up advertisements: “Online Payment, Online Bill Pay, Mercedes-Benz, Payment, Payments, Lease, Credit.”

f) Respondent’s website displays a host of links that provide a variety of options to web-users in the form of bogus search results. In some cases, Respondent’s website provides links to companies that directly compete with DaimlerChrysler Services in the sale of automotive financial services. For example, the “Mercedes-Benz” menu presents the web-user with a list of “top sites” that link web-users to the websites of companies that offer for sale vehicle financing services.

g) Respondent’s website also launches a variety of “pop-up” advertisements, which, on information and belief, provide Respondent a stream of “click thru” revenue based on the number of “hits” received. In this instance, Respondent’s “pop-up” advertisements and links present a diversion to web-users that sought to access information about Complainants’ services, and who may seek potentially to use Complainants’ automotive finance services. Respondent uses the renowned and commercial magnetism of Complainants’ MBCC mark and <mbcredit.com> domain name and marks to attract the Internet-using public to its website, and then divert them to the websites of unaffiliated companies. This harms Complainants in several ways, including causing a loss of goodwill when Complainants’ potential customers are diverted to unrelated sites, fail to communicate with Complainants as anticipated, and become frustrated with their inability to reach Complainants’ authorized websites.

h) Respondent is not entitled to the “click-thru” revenues it receives from its <mbccredit.com> website because that Internet traffic is generated by the commercial magnetism of the MBCC mark and the confusing similarity between Respondent’s domain name and Complainants’ domain name.

i) Respondent is creating a likelihood of confusion for commercial gain by using the commercial magnetism of Complainants’ MBCC mark and the confusing similarity of Complainants’ domain names to attract Complainants’ customers to Respondent’s website, then divert them to unrelated websites, or to Complainants’ competitor’s websites – all while receiving “click thru” revenues for the pop-up advertisements and for the links themselves. Such conduct constitutes evidence of bad faith under Paragraph 4(b) (iv) of the ICANN Policy.

j) On information and belief, Respondent has engaged in exactly this type of bad faith conduct in the past, having registered the domain name <chrystlerfinancial.com>, which is confusingly similar to another of Complainants’ domain names, <chryslerfinancial.com>. Indeed, in previous domain dispute proceedings, Respondent has been found to have registered in bad faith domain names that are confusingly similar to the marks of others. Previous panel decisions have found that registration of as few as two or three infringing domain names can constitute a "pattern" of bad faith conduct. See Nikon, Inc. v. Photocom Korea, WIPO Case No. D2000-1338 (December 27, 2000) (two names constitute pattern); Bellevue Square Managers, Inc. v. Redmond Web and Branden F. Moulton, WIPO Case No. D2000-0056 (March 27, 2000) (three names constitute pattern).

k) Respondent does not have any affiliation, association, or connection with Complainants and has not been authorized to use the MBCC mark.

l) Respondent is not making any legitimate noncommercial or fair use of the domain name at issue.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

Pursuant to Paragraph 15(a) of the Rules, the Panel has fully reviewed the statements and documents submitted in accordance with the Policy, the Rules and the applicable principles of law that apply to this dispute. In so doing, not only has the Panel conducted a review of the submissions of Complainants, but also, pursuant to Paragraph 14 (b), has drawn appropriate inferences from Respondent’s default, which is deemed a failure to comply with the Rules. After considering all the relevant facts and law, the Panel makes the following findings in accordance with Paragraph 4 (a) of the Policy.

A. Identical or Confusingly Similar

There is no question but that the Complainants have legitimate rights to the service mark “MBCC”. It is of no consequence that the mark may be held, not by registration, but rather, as Claimants maintain here, by common law. True Blue Productions, Inc. v. Chris Hoffman, WIPO Case No. D2004-0930. Accordingly, further discussion of this legal conclusion is unnecessary.

So too, for all the reasons put forward by Complainants, the challenged domain name is “confusingly similar” as that term is used in the Policy. In sum, this dispute presents yet another clear example of “typosquatting”. See generally, Sharman Licensed Holdings, Limited v. IcedIt.com, WIPO Case No. D2004-0713. In fact, several of this Respondent’s previous registrations were found to contain similar inclusions of an extra letter. See, e.g., Sociйtй des Hфtels Mйridien, WIPO Case No. D2004-0849; CavinKare, WIPO Case No. D2004-1072; Karl’s Sales, WIPO Case No. D2004-0929; and, Specialty Store Services, WIPO Case No. D2005-0015.

The Panel further agrees with Complainants’ argument that the inclusion of the word “credit” in the challenged domain name actually enhances the likelihood of confusion where, as here, the types of services offered by Complainants is precisely described by the offending terminology. Complainants’ market themselves, and consumers identify these entities as providers of “credit” for the purchase and leasing of automobiles. Certainly, the term credit was not selected by happenstance. In light of this Respondent’s past record in other cases, it is obvious to the Panel that the challenged domain name was carefully chosen to insure that an unsuspecting internet user would be misled. There can be no other conclusion drawn from this record and the facts it presents.

B. Rights or Legitimate Interests

The Panel also finds persuasive the points raised by Complainants in support of their contention that Respondent has no legitimate rights or interest in the domain name as required by Paragraph 4 (a) (ii) of the Policy. To briefly reiterate, in the first instance, the challenged registration occurred long after the Complainants had extensively established themselves and their service mark’s identification. Accordingly, Respondent could not conceivably claim any intellectual property rights in the challenged domain name.

Similarly, there is no previous known connection between Respondent and any business entity with the name <mbccredit>. Nor could LaPorte’s registration be classified as having a “legitimate noncommercial or fair use” as described in Policy paragraph 4(a) (ii).

Furthermore, here, the Panel invokes its ability to infer an appropriate negative inference as a result of Respondent’s default. As was the case in Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465, “by …failing to respond, Respondent has failed to offer the panel any of the types of evidence set forth in Paragraph 4(c) of the Policy from which [it] might conclude that Respondent has any rights or legitimate interest in the domain name, such as use or preparation to use the domain name prior to notice of the dispute, being commonly known by the domain name, or making legitimate noncommercial or fair use of the domain name.” On this record, a negative inference that Respondent has no legitimate rights to the domain in dispute is more than justified not only because of its default, but also as a result of its conduct as determined by WIPO Panels in other reported decisions.

C. Registered and Used in Bad Faith

The final criterion is of registration and use of the disputed domain name in bad faith. See, Paragraph 4(c) of the Policy.

The Panel first notes that the Findings set forth in Paragraphs 6.A. and 6.B. above also supports the determination that the Respondent’s registration was in bad faith. As further indicia of its bad faith intent, however, is that although the domain name misspells Complainants’ service marks, the website to which the domain name resolves contains at least one click through button and one link that correctly spell another very well-known trademark related to these Complainants’ -- “Mercedes Benz.” Neither of these links, however, takes the user to Complainants’ websites. Rather, the links are to websites that offer services similar to and in competition to that provided by Complainants.

In addition to these points, however, the Panel also concludes, as submitted by Complainants, that Respondents registration was, as has been documented in prior proceedings, for an improper purpose. As was the case in Compagnie Gйnйrale des Etablissements Michelin CGEM - Michelin & Cie, Michelin Recherche et Technique S.A. v. Horoshiy Inc., WIPO Case No. D2004-0752, here the Panel finds that

“the disputed domain name [was] used for “click-through” revenue generating sites which provide[d] income to the Respondent by inducing Internet users to click through to sponsored links. It is the Panel’s opinion that the purpose of the Respondent’s use of domain names containing the Complainants’ famous trademark [] is merely to capture the Complainants’ customers who are seeking the Complainants’ products and/or services, and to re-direct them to other websites. Such use of domains is neither legitimate, nor of good faith. Using a domain name to intentionally attract, for commercial gain, Internet users to a website by creating confusion with a complainant’s mark is evidence of bad faith registration under the Policy, Paragraph 4(b) (iv).”²

Finally, Respondent’s repeated pattern of bad faith registrations dictates a finding of bad faith in this case. When the WIPO Panel decision in Sociйtй des Hфtels Mйridien, WIPO Case No D2004-0849 was issued this past December, the Panel found no less than seven reported decisions from various Providers, as that term is defined in the Rules, documenting bad faith registrations by Respondent’s predecessor in interest. Those matters are in addition to the fifteen WIPO decisions cited above in the Factual Findings. Manifestly, here, as in the other cases, it can be said without equivocation that the Respondent’s registration and use of the domain name <mbccredit.com> was 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, <mbccredit.com> be transferred to the Complainant.

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Craig Edward Stein
Sole Panelist

Date: April 1, 2005

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¹ The website to which both domain names now resolve is the same and allows the viewer to shop for a variety of Complainants’ automobile financing products.

² Interestingly enough, the Respondent in Compagnie Gйnйrale des Etablissements Michelin, and the Respondent here, have been linked in other WIPO Panel decisions. See, e.g., HBH, L.P. WIPO Case No. D2004-0864 cited above.