WIPO Domain Name Decision: DRO2006-0003

WIPO

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

DaimlerChrysler Corporation v. Web4COMM SRL ROMANIA

Case No. DRO2006-0003

1. The Parties

The Complainant is DaimlerChrysler Corporation, of United States of America, represented by Abelman Frayne & Schwab, of United States of America.

The Respondent is Web4COMM SRL ROMANIA, of Bucharest, Romania, represented by Andrei Bulinga-Neagu, of Bucharest, Romania.

2. The Domain Name and Registrar

The disputed domain name <chrysler.ro> is registered with RNC.ro.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2006. On June 1, 2006, the Center transmitted by email to RNC.ro a request for registrar verification in connection with the domain name at issue. On June 2, 2006, RNC.ro 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. On June 8, 2006, the Center requested by email clarification from RNC.ro whether the language of the Registration Agreement is Romanian and whether the registrant had submitted in the Registration Agreement to the Courts in the location of the principle office of the registrar. On 9 June, 2006, RNC.ro transmitted by email to the Center its response confirming that the language of the Registration Agreement is Romanian, and that the registrant had not submitted in the Registration Agreement to the Courts in the location of the principle office of the registrar.

In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 20, 2006. 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”), 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 June 21, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July 11, 2006. The Response was filed with the Center on July 11, 2006.

The Center appointed Ms. Beatrice Onica Jarka as the sole panelist in this matter on August 21, 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 Panel considers that the language of the present proceeding should be English, although the Registrar of the disputed domain name has informed the Center that the language of the relevant registration agreement was Romanian.

The Panel concludes that, according to Rules, paragraph 11 (b), the language of the proceedings shall be English for the following reasons:

- the Complainant opted for the English language to be used in these proceedings;

- there are no provisions on Registrar’s website for a domain name applicant to choose between English or Romanian as the controlling language of the registration agreement at this moment, and in the past the registration agreement was simultaneously English and Romanian, so the domain applicant accepts the use of both languages;

- the content of the Response does not deny the English language of the proceedings; and

- the Respondent has been involved as Respondent in several administrative proceedings in English before WIPO panels (see for eg OSRAM GmBh v. WEB4COMMSRL Romania, WIPO Case No. DRO2005-0004).

4. Factual Background

The Complainant is a famous automotive manufacturing company, incorporated in 1925, by Walter P. Chrysler as the Chrysler Corporation who has first adopted and used the CHRYSLER mark in 1924 in the United States in respect of motor vehicles.

The Complainant owns numerous registrations in the United States for CHRYSLER, or marks containing CHRYSLER, for a variety of goods and services.

Complainant owns a trademark registration for CHRYSLER no. 2R011189 in Romania dating to 1979. Complainant owns trademark registrations for CHRYSLER in most jurisdictions.

The Complainant also owns the domain name <chrysler.com> registered on June 16, 1993, which operates a website associated with its domain name chrysler.com providing information and services related to CHRYSLER branded products.

As a result of a long, continuous and extensive use, advertising, and promotion, the CHRYSLER trademark is among the most famous marks in the automotive industry and is renowned throughout the world, including in Romania.

Respondent has been involved as Respondent in different other cases before WIPO (see for eg under Factual Background above).

5. Parties’ Contentions

A. Complainant

Complainant alleges in the English language that:

- it is the owner of numerous registrations in the United States for CHRYSLER, or marks containing CHRYSLER, for a variety of goods and services:

- it owns a trademark registration in Romania for CHRYSLER dating to 1979;

- Respondent’s domain name <chrysler.ro> is identical or confusingly similar to the Complainant’s CHRYSLER trademark;

- Respondent has not been licensed, authorized, contracted or otherwise permitted by Complainant in any way to use the CHRYSLER trademark or to apply for any domain name incorporating the CHRYSLER trademark or any mark confusingly similar to CHRYSLER, nor has the Complainant acquiesced in any way to such use or application by the Respondent;

- Respondent did not use CHRYSLER or any mark containing CHRYSLER as a trademark, company, business or trade name and it is not commonly known in reference to CHRYSLER or any combination of this;

- Respondent had constructive notice of the CHRYSLER trademark at the time when it registered the domain name <chrysler.ro>, which is both an indicator of no legitimate interest or right in the disputed domain name, and of bad faith registration of the disputed domain name by the Respondent;

- the disputed domain name <chrysler.ro>, is passively held from its registration and passive holding of a domain name for a period of 28 months or more gives rise to an inference that the holder has no bona fide intent to use the domain name and thus no legitimate interest or rights in the domain name;

- Respondent has engaged in a pattern of registering domain names incorporating famous trademarks of others as domain names and the Complainant sites in support several WIPO Panel decisions in which Respondent has been found to have engaged in such conduct.

B. Respondent

Respondent contends in the Romanian language that:

- WIPO Arbitration and Mediation Center, and by extension the Panel, has no jurisdiction in this case, as it has never accepted a “compromisory clause” as provided by art.1 of WIPO Center’s Mediation Rules “ Arbitration Agreement”;

- it never accepted a set of rules applicable to it in connection with the registration and use of the disputed domain names;

- it does not have any conventional relationship with the Complainant and therefore it did not conclude any “compromisory clause” with the Complainant.

6. Discussion and Findings

Panel’s Jurisdiction

The disputed Domain Name is registered with RNC.ro. Therewith the Respondent has accepted the Registration Agreement and the Domain Name Dispute Resolution Policy of the RNC.ro. Art. 32 of the Registration Rules and article 6 of the RNC.ro Registration Agreement together incorporate and thereby rend applicable to this dispute the Uniform Domain Name Dispute Resolution Policy endorsed and approved by ICANN.

It is the Complainant’s discretion to select the administrative dispute resolution provider from among those approved by ICANN (paragraph 4(d) of the Policy). The Center is one of those providers.

In addition, the Respondent is obviously familiar with the Policy and the proceedings (see Praktiker AG v. web4COMM SRL Romania, WIPO Case No. DRO2003-0001), and the Panel therefore concludes as other Panel in similar cases in which the Respondent was involved (see Beiersdorf AG v. Web4comm Srl Romania, WIPO Case No. DRO2005-0002) that the jurisdiction objection is merely filed in bad faith in an attempt to confuse the Panel and avoid filing a substantial reply to the allegations made by the Complainant.

For these reasons the Panel finds that the dispute is properly within the scope of the Policy and that the Panel has jurisdiction to decide the dispute.

A. Identical or Confusingly Similar

A.1. The Complainant’s trademark or service mark rights

It is undisputed that the Complainant has rights in the trademark CHRYSLER as it owns numerous registrations in the United States, Romania and most jurisdictions for CHRYSLER, or marks containing CHRYSLER.

The Complainant also owns the domain name <chrysler.com> registered on June 16, 1993, which operates a website associated with its domain name <chrysler.com> providing information and services related to CHRYSLER branded products.

The CHRYSLER trademark is among the most famous marks in the automotive industry and is renowned throughout the world, including Romania.

A.2 The disputed domain name is identical with the Complainant trademark CHRYSLER

Respondent’s domain name CHRYSLER.RO is identical to the Complainant’s CHRYSLER trademark, as it incorporates entirely this mark. It is well established that the specific top level of the domain name such as “.com” or “.ro” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (see Magnum Piering, Inc. v. The Mudjackers and Garwood & Wilson, Sr., WIPO Case No. D2000-1525, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429, Auchan v. Web4comm Srl Romania, WIPO Case No. DRO2005-0001; and OSRAM GmbH, v. web4COMM SRL Romania Case No. DRO2005-0004)

For these reasons, the Panel finds the Complainant has established the first element of the Policy.

B. Rights or Legitimate Interests

It is the opinion of the Panel that the Complainant has established a prima facie showing that none of the three circumstances establishing legitimate interests or rights apply. Having done so, the burden of proof on this element shifts to the Respondent to rebut the showing.

The Response consists of a claim that the Center has no jurisdiction in this case and contains no substantial facts. The Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the Domain Name.

In addition, the fact that the Domain Name does not resolve to any active webpage indicates, that before any notice to the Respondent of the dispute, Respondent has not made any use of, or preparations to use, the Domain Names in connection with a bona fide offering of goods or services.

The Panel therefore concludes that the Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

The registration and use in any form of a famous trademark which belongs to somebody else, without proving any rights or legitimate interests in it, represents bad faith registration and use.

It is the Panel’s opinion that the Respondent knew about the fame of the CHRYSLER trademark in the world and in Romania when it registered it as a Romanian domain name, and as it did not have any rights and legitimate interests in this trademark, one can infer from this only that the disputed domain name was registered and further used in bad faith.

The disputed domain name also appears to contain a number of sponsored links from which it may reasonably be inferred that the Respondent is using the site to profit from confusion with the Complainant and to in effect free-ride on the fame of it’s mark.

In addition, the involvement of the Respondent in different WIPO proceedings as a Respondent for breaching others’ rights in famous trademarks, (see OSRAM GmbH, v. web4COMM SRL Romania, WIPO Case No. DRO2005-0004, Accor v. Catalin Alexandra Tibulca / WEB4COMM SRL Romania, WIPO Case No. DRO2005-0003, Auchan v. Web4comm Srl Romania, WIPO Case No. DRO2005-0001, Praktiker AG v. web4COMM SRL Romania, WIPO Case No. DRO2003-0001, Beiersdorf AG v. Web4comm SRL Romania, WIPO Case No. DRO2005-0002) represents a pattern of conduct of the Respondent, which is further indication of bad faith.

The Panel therefore finds 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 <chrysler.ro> be transferred to the Complainant.

Beatrice Onica Jarka
Sole Panelist

Dated: September 12, 2006