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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

DaimlerChrysler AG v. 3v Networks a/k/a Com & Networks

Case No. D2006-0450

 

1. The Parties

The Complainant is DaimlerChrysler AG, Stuttgart, Germany, represented by Dickinson Wright, PLLC, United States of America.

The Respondent is 3v Networks a/k/a Com & Networks, Daegu, Republic of Korea.

 

2. The Domain Name and Registrar

The disputed domain name <mbf.com> is registered with Cydentity, Inc. dba Cypack.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 10, 2006. On April 13, 2006, the Center transmitted by email to Cydentity, Inc. dba Cypack.com a request for registrar verification in connection with the domain name at issue. On April 13, 2006, Cydentity, Inc. dba Cypack.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 April 21, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May 11, 2006. The Response was filed with the Center on May 11, 2006.

The Center appointed Ik-Hyun Seo as the sole panelist in this matter on May 19, 2006. 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.

The Complaint was filed in the English language, and provided Complainant’s reasons for requesting the proceedings to be conducted in English. The Center notified the Parties that the Complaint would initially be accepted in English, reserving the ultimate decision for the Panel, and allowing the parties to submit documents in either English or in Korean. The Respondent filed its Response in Korean.

 

4. Factual Background

The Complainant is one of the world’s leading automotive companies, which began producing automotive vehicles over 100 years ago. It presently employs over 384,000 people worldwide, and its annual revenues for 2004 were in excess of US$ 190 billion. Complainant owns registrations throughout the world for its MERCEDES-BENZ mark. In 1990, it established Mercedes-Benz Finance, which is the financing and leasing company of DaimlerChrysler. Complainant has used the mark MBF (acronym for Mercedes-Benz Financing) extensively for over 15 years. However, the Complaint does not have a trademark registration for “MBF” itself.

The Respondent is a Korean company, which asserts that it is in the business of internet searching and providing information to the public, as well as providing web solutions to its customers. Respondent also states that it operates “www.search.co.kr“ (a search site) as well as “www.dc.co.kr“ (an on-line discount mart).

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to marks in which the Complainant has rights. More specifically, the subject domain name is an acronym for “Mercedes-Benz Financing”, and is also identical to MBF, a mark that is not registered, but to which the Complainant asserts it has acquired common law rights through long and extensive use.

The Complainant also contends that the Respondent has no rights or legitimate interest in the subject domain name. More specifically, the Complainant asserts that the Respondent’s use of the disputed domain name thus far cannot be viewed as a bona fide offering of goods or services, since it has been used only in connection with a linking service.

Finally, the Complainant contends that the domain name was registered and is being used in bad faith. More specifically, the Complainant asserts that the Respondent is a well-known cybersquatter citing prior domain name disputes involving the Respondent and/or affiliated entities. Also, an offer for sale is displayed in the content for the disputed domain name. In fact, several exchanges of emails took place in an attempt to negotiate the purchase of the subject domain name, in which Respondent made reference to a price of US$ 275,000. Complainant also notes that Respondent holds other domain names that incorporate others’ trademarks: <unicef.net>, <visacash.com>, <vodafoneairtouch.com>, <herrypotter.com>, <herrypoter.com>, and <herypotter.com>.

B. Respondent

The Respondent, while conceding that “Mercedes-Benz” is famous, contends that Complainant has no trademark rights to MBF, as there is no trademark registration in any jurisdiction. The Respondent further asserts that MBF is not famous in Korea or anywhere else.

The Respondent contends that it has a right or legitimate interest in the disputed domain name. The Respondent primarily asserts that the subject domain name is generic, as it merely consists of three letters, and is therefore available for registration by anyone.

The Respondent denies any bad faith in its registration and use of the disputed domain name. Respondent asserts that because the domain name is one that was available to anyone (i.e. not subject to any trademark registrations held by the Complainant), there was no bad faith. Further, Respondent asserts that, while admitting that a price of US$ 50,000 was mentioned in response to an offer for US$ 10,000 by the Complainant’s agents, there was no bad faith involved in proposing such a price.

 

6. Discussion and Findings

A. Language of the Proceedings

The default language of the proceedings is Korean, but the Complainant has submitted arguments in the Complaint as to why the proceedings may proceed in English, without the necessity of submitting a translated Complaint in the Korean language. The Center proceeded, and advised the Parties that the Center would accept the Response in either Korean or English. The parties were further advised that the ultimate decision regarding the language of the proceedings would be within the discretion of the Panel, and that the Panel may request translations from either party. The notice provided by the Center to the parties was in both English and in Korean. Respondent subsequently submitted its Response in the Korean language.

Complainant has stated that it cannot communicate in the Korean language. On the other hand, it appears that Respondent has sufficient ability to communicate in English. First, the entire content displayed at the disputed domain name is in English, as well as the websites to which the provided links resolve. In fact, no Korean language is used by the Respondent in connection with the disputed domain name.¹ Also, the Respondent was able to communicate in English without any apparent problems with the Complainant’s agents during the negotiations for the purchase of the disputed domain name. In view of the Respondent’s apparent competency in English and the Complainant’s inability to communicate at any level in Korean, the Panel finds that the principles of paragraph 11 of the Rules would be best served by accepting the filings in the preferred language of the parties, and rendering the decision in the English language see Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679.

B. Identical or Confusingly Similar

The Complainant has trademark registrations throughout the world for various MERCEDES-BENZ marks, but it appears that there is no trademark registration for “MERCEDES-BENZ FINANCE” or its acronym “MBF”. Rather, the Complainant asserts that it has trademark rights in MERCEDES-BENZ FINANCE and MBF through long and extensive use throughout the world.

Mercedes-Benz Finance was established in 1990 as a finance and leasing company of DaimlerChrysler. For more than 15 years, it has provided a range of financing and leasing products to Mercedes-Benz customers. The Complainant also included evidence of its extensive use of “MERCEDES-BENZ FINANCE” and “MBF”, as well as unsolicited third party articles identifying Mercedes-Benz Finance by its full name as well as its acronym MBF. Given the credibility of the evidence submitted by the Complainant, this Panel concludes that the Complainant, notwithstanding the lack of trademark registration, has acquired rights in the marks MERCEDES-BENZ FINANCE as well as MBF.

When comparing the disputed domain name with the asserted marks (i.e. MERCEDES-BENZ FINANCE and MBF), the disputed domain name is identical to the Complainant’s mark MBF. Also, the disputed domain name is a simple acronym for the Complainant’s mark MERCEDES-BENZ FINANCE.

For the reasons given above, this Panel finds that the disputed domain name is identical and/or confusingly similar to the Complainant’s asserted marks, and the first element (paragraph 4(a)(i) of the Policy) has been established.

C. Rights or Legitimate Interests

The Respondent rebuts the Complainant’s assertions on this point by asserting essentially one argument – the domain name consists of three simple letters which are generic, and therefore available for anyone to hold. Such an argument is not persuasive under the circumstances of the present case. Respondent has not offered an explanation as to his reasons or the basis for choosing “MBF”. If there were some legitimate or rational basis for his registration of <mbf.com>, it defies common sense for the Respondent to not offer comments or an explanation.

For the reasons given above, this Panel finds that the second element (paragraph 4(a)(ii) of the Policy) has been satisfied.

D. Registered and Used in Bad Faith

The Respondent denies that any bad faith was involved in his registration or use of the subject domain name, primarily raising two points: (1) the domain name consists of three letters that are generic and therefore available to anyone, and (2) the mentioned sales price of US$ 50,000 is appropriate since three letter domain names are generally valuable.

The Panel disagrees. A term is not generic merely because it consists of 3 letters, and the Panel is not aware of any legal principles that support such a proposition. In fact, many examples to the contrary come to mind, particularly for marks used by television broadcast companies in both the United States and in the Republic of South Korea (e.g. ABC, NBC, CBS, FOX, etc.), and even in the industry of the Complainant (e.g. BMW).

With regard to the price of US$ 50,000 suggested by the Respondent, this price is well in excess of actual costs incurred by the Respondent in registering and maintaining the disputed domain name. In fact, during the email negotiations between the Respondent and the Complainant’s agents, the Respondent even made references to a figure of US$ 275,000. The Respondent has offered no reasonable explanation or justification for such exorbitant figures (aside from its belief that three letter domain names are commercially valuable), and without such, requesting such amounts leads to a strong inference that bad faith is involved.

In addition to these points, the Complainant raised other facts that demonstrate bad faith, which are not addressed in the Respondent’s filing. For example, the Respondent and/or affiliated entities have been involved in prior domain name disputes. Further, the Respondent and/or affiliated entities presently hold other domain names that appear to have been registered in bad faith: <unicef.net>, <visacash.com>, <vodafoneairtouch.com>, <herrypotter.com>, <herrypoter.com>, and <herypotter.com>. These domain names incorporate or are misspellings of well-known trademarks. Again, the Respondent’s silence on such damaging assertions/evidence is rather suspect, and the Panel finds the Complainant’s assertions relevant and convincing.

Based on the above, the Panel finds it more likely that the Respondent registered the domain name in order to freeride on the goodwill created by the Complainant in MBF, as opposed to register the domain name in good faith as described in Builder’s Best, Inc. v. Yoshiki Okada, WIPO Case No. D2004-0748. In that case, the Panel found in favor of the Complainant with respect to the first two elements, but eventually concluded that there was insufficient evidence to establish bad faith. In this case, however, there is strong and ample evidence. The Panel finds that the third element (paragraph 4(a)(iii) of the Policy) has been satisfied.

 

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 <mbf.com> be transferred to the Complainant.

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Ik-Hyun Seo
Sole Panelist

Dated: June 12, 2006

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¹ The printout of the content for the disputed domain name provided by the Complainant shows everything to be in English, with no Korean language. The printout is dated April 8, 2006, just 2 days before the Complaint was filed. Sometime since then, the Respondent has changed all the content to the Korean language, and provides no explanation in his Response regarding this change. Regardless of the Respondent’s reasons for changing the language of the displayed content, the Korean content now displayed is irrelevant for two reasons. First, the changes appear to have been made after receiving notice of this dispute and therefore cannot serve to support the Respondent’s position without a further showing that the changes were not motivated by the dispute. Further, the fact that Korean content is now displayed does not change the fact that the Respondent demonstrated sufficient English ability in the past.