BAILII is celebrating 24 years of free online access to the law! Would you consider making a contribution?
No donation is too small. If every visitor before 31 December gives just £1, it will have a significant impact on BAILII's ability to continue providing free access to the law.
Thank you very much for your support!
 |
[Home] [Databases] [World Law] [Multidatabase Search] [Help] [Feedback] | |
Nominet UK Dispute Resolution Service |
||
|
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Mercedes-Benz UK Ltd v Honda [2008] DRS 6138 (17 October 2008) URL: http://www.bailii.org/uk/cases/DRS/2008/6138.html Cite as: [2008] DRS 6138 |
||
[New search] [Printable RTF version] [Help]
Complainant: Mercedes-Benz UK Limited
Country: GB
Respondent: Rahul Honda
Country: GB
mercedescars.co.uk
3.1 On 13th August 2008 the Complaint was filed electronically with Nominet in accordance with the Nominet UK Dispute Resolution Service Policy ("the Policy"). Annexes to the Complaint and its attachments were received in hard copy by Nominet on 18th August 2008.
3.2 On 18th August 2008 Nominet validated the Complaint and sent a copy of the Complaint to the Respondent, advising the Respondent that the Complainant was using Nominet's Dispute Resolution Service to complain about the registration or use of the Domain Name and allowing the Respondent 15 working days within which to respond to the Complaint.
3.3 No response was received from the Respondent. The Complainant requested a short extension of time in order to pay the relevant fees for an expert (due to internal procedural issues), which was allowed by Nominet. On 2nd October 2008 the Complainant paid the relevant fee to Nominet in order for the matter to be referred to an independent Expert for a full Decision. On 8th October 2008 Bob Elliott was duly appointed as Expert.
3.4 Although no response has been received from the Respondent, the Expert is satisfied that Nominet has used the correct contact details according to its records. In the circumstances, the Expert does not believe that there are any exceptional circumstances which would prevent him from proceeding to a Decision on the Complaint.
4.1 The Complainant is a wholly-owned subsidiary of Daimler AG ("DAG") of Stuttgart, Germany, which is the owner of amongst other marks Community Trade Mark No. 1339998 "Mercedes", which dates from 1996. The Complainant says that it is authorised to make this complaint on behalf of DAG.
4.2 The Complainant provides three links to web pages, which refer to surveys concerning the brands with "the finest reputations" in the United Kingdom (Superbrands). In 2006 Mercedes-Benz was the fourth highest "Superbrand", after Microsoft, the BBC and British Airways. In 2008 Mercedes-Benz was again the UK's highest-rated car brand and third overall after Google and Microsoft.
4.3 The Complainant also asserts "it is well known that Mercedes-Benz manufactures, markets, sells and repairs cars all over the world".
4.4 The Domain Name was registered by the Respondent on 13th April 2004 without authorisation from DAG. No information is provided as to the Respondent himself.
4.5 As at the date of this Decision the use made of the Domain Name is to provide links through a website to third parties' websites offering for sale Mercedes-Benz cars and parts and also to websites selling other brands of cars and their respective parts. The website is apparently operated through TrafficZ, which describes itself as "a Domain Management Service Provider". The website also contains links to TrafficZ's disclaimer and copyright/trade mark policies, the latter of which contains the information that TrafficZ's clients must abide by its Domain Name Management Services Agreement, which strictly prohibits using its services for any domain name that infringes in any way the trade mark rights of any third party.
Complainants' Submissions
Rights
5.1 The Complainant relies upon DAG's registration of the Community Trade Mark 139998, Mercedes, as establishing that it has Rights under the Policy. Those Rights pre-date the registration of the Domain Name.
5.2 The Domain Name includes the word "Mercedes", which is identical to that mark.
Abusive Registration
5.3 The Complainant relies upon section 3.a.(ii) of the Policy and says that the Respondent's use of the words "Mercedes" and "cars" in the Domain Name will lead to confusion in the minds of the public about the Domain Name's connection with the Mercedes-Benz brand. The Complainant says that it is likely that members of the public will think that this website has been endorsed by Mercedes-Benz as a means of listing links to Mercedes-Benz suppliers and repairers.
5.4 The Complainant does not consider that the manner in which the Respondent has used the Domain Name is in accordance with honest practices in industrial or commercial matters, because the registration and use of the website "Mercedescars" take unfair advantage of the distinctive character and reputation of Mercedes-Benz brand.
5.5 The Complainant seeks the transfer of the Domain Name to itself.
Respondent's Submissions
5.6 The Respondent has not replied
General
6.1 In order to succeed in these proceedings, paragraph 2.b of the Policy requires the Complainant to prove on the balance of probabilities that both elements of the test set out in paragraph 2.a are present, namely that:
i. the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and
ii. the Domain Name, in the hands of the Respondent, is an Abusive Registration.
Complainant's Rights
6.2 The Complainant's parent company DAG clearly has Rights in the name Mercedes arising out of its Community trade mark registration. The links to the brand surveys provided by the Complainant show the extent to which the name Mercedes-Benz is very widely recognised and respected as a brand.
6.3 The Complainant has also asserted (without contradiction) that it is authorised by DAG to bring this Complaint. It is clearly part of the DAG group within the UK. This, combined with its own company name, is sufficient for the Expert to conclude that the Complainant has rights in the Mercedes name.
6.4 The Domain Name is not identical to the Mercedes mark, but the addition of the words "cars" is essentially only descriptive of part of the Complainant's business. "Mercedes" remains the predominant feature of the Domain Name. Therefore, the Expert considers it is similar to the Mercedes mark, and that the Complainant has established that it has Rights for the purposes of the Policy.
Abusive Registration
6.5 The Complainant also has to show that the Domain Name is an Abusive Registration. Paragraph 1 of the Policy defines "Abusive Registration" as a Domain Name which either:
i. was registered or otherwise acquired in a manner, which at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; or
ii. has been used in a manner, which took unfair advantage of or was unfairly detrimental to the Complainant's Rights.
6.6 A non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration is set out in paragraph 3.a. of the Policy. Those include, under paragraph 3.a.(ii): "Circumstances indicating that the Respondent is using or threatening to use the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant".
6.7 In paragraph 4.e of the Policy there is a note that "sale of traffic (i.e. connecting domain names to parking pages and earning click-per-view revenue) is not of itself objectionable. However, the Expert will take into account:
i. the nature of the Domain Name;
ii. the nature of the advertising links on any parking page associated with the Domain Name; and
iii. that the use of the Domain Name is ultimately the Respondent's responsibility".
6.8 In this case, the Domain Name has been used to misdirect those potentially seeking the Complainant's website to websites with links which, if followed, would in all probability generate "click-per-view" income for the Respondent. Those websites are a mixture of sites, some of which may well involve the promotion of the Complainant's own goods or services, but others of which direct users to competitors' websites (or websites advertising competitors' products or complementary goods). The Domain Name itself is one which may well be taken by a member of the public to denote an "official" Mercedes-Benz website (or one which is authorised by Mercedes-Benz) as it does not suggest that it is in some way distinct from Mercedes-Benz itself. The company apparently responsible for the parking site (TrafficZ) also says that it warns its clients as to the misuse of others' trade marks.
6.9 The Respondent has not sought to justify his acquisition of the Domain Name, and without such explanation the clear conclusion from his use of a very well-known brand name, without significant adornment, must be that he has intended to misappropriate the Complainant's property, namely its goodwill in the Mercedes name, with the intention of unfairly profiting from the use of the Domain Name. In doing so, the registration and use of the Domain Name have taken unfair advantage of and/or been unfairly detrimental to the Complainant's rights. Having had regard to the note in paragraph 4.e of the Policy, the Expert concludes that the registration of the Domain Name is abusive.
6.10 For the sake of completeness, the Expert would note that he has considered the Complainant's reference to "honest practices in industrial or commercial matters" set out in paragraph 5.4 above. However, he does not consider that it adds materially to the Complaint in this case, being directed to trade mark use, rather than specifically to any of the factors which the Expert is required to consider under the Policy.
6.11 The Expert therefore finds that the Domain Name, in the hands of the Respondent, is an Abusive Registration within the meaning of the Policy.
7.1 The Expert finds that the Complainant has rights in the name or mark Mercedes which is similar to the Domain Name. The Expert further finds that the Domain Name, in the hands of the Respondent, is an Abusive Registration.
7.2 The Expert therefore decides that the Domain Name should be transferred to the Complainant.
Signed: Bob Elliott Dated 17th October 2008
