1.1 Complainant is Mercedes-Benz Grand Prix Limited of Brackley, United Kingdom of Great Britain and Northern Ireland ("UK"), represented by Oliver Rumsey, UK.
1.2 Respondent is Identity Protect Limited of Uxbridge, UK / Stuart Howatson of Southam, UK.
2.2 The disputed domain name <mercedesf1.net> is registered with Mesh Digital Limited (the "Registrar").
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 20, 2014. On August 20, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 27, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on September 15, 2014.
3.2 The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), 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").
3.3 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceeding commenced on September 17, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 7, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on October 8, 2014.
3.4 The Center appointed David Perkins as the sole panelist in this matter on October 22, 2014. 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.A.1 Complainant, which was founded in 1964, is a majority owned subsidiary of Daimler A.G. of Germany. Doing business as Mercedes AMG Petronas, Complainant owns and operates the Mercedes racing car team in the FIA Formula One World Championships.
4.A.2 Complainant states that it is an authorised licensee of the following registered trade marks of which Daimler A.G. is the proprietor:
|
Territory |
Registration Number |
Mark |
Classes of Goods and Services |
Dates of application and registration |
|
Community Trade Mark (CTM) |
EU000139865 |
MERCEDES-BENZ |
1-42 |
April 1, 1996 applied for and February 2,1999 registered |
|
CTM |
EU000139964 |
MERCEDES-BENZ |
1-42 |
April 1, 1996 applied for and February 2,1999 registered |
|
CTM |
EU000139998 |
MERCEDES |
1-42 |
April 1, 1996 applied for and November 3, 2000 registered |
The above listed CTMs are based on earlier trade mark registrations in the United Kingdom, the first registration of the word mark MERCEDES dating as far back as the early years of the twentieth century.
4.B.1 In the absence of a Response, what is known of Respondent is set out in the Complaint and its Annexes, the publicly available WhoIs information and the Registrar verification.
4.B.2 The disputed domain name, of which Respondent is the registrant, was created on January 8, 2014.
4.B.3 The disputed domain name resolves to Complainant's Official Website at "www.mercedesamgf1.com".
4.B.4 Complaint asserts that Respondent has been convicted in the United Kingdom of fraud-related offences and, to the best of its information and belief, has received at least one custodial sentence for those offences.
5.A.1 Identical or Confusingly Similar
5.A.1.1 As noted above, Complainant states that it is licensed to use the MERCEDES and MERCEDES-BENZ CTMs and is authorised to bring this Complaint by the registered proprietor, Daimler A.G.
5.A.1.2 The disputed domain name incorporates the MERCEDES mark in its entirety. It also incorporates the F1 trade mark, which is owned by a third party. Complainant's case is that, because the disputed domain name incorporates the MERCEDES trade mark, it is identical or confusingly similar to that mark.
5.A.2 Rights or Legitimate Interests
5.A.2.1 Complainant states that neither it nor Daimler A.G. has licensed or otherwise authorised use by Respondent of the MERCEDES trade mark.
5.A.2.2 Complainant explains that it uses the MERCEDES mark in connection with its Formula One racing activities, namely the manufacture, testing, qualifying, racing and marketing of Formula One cars in the FIA Formula One World Championships. Complainant states its belief that Respondent uses the disputed domain name to defraud third parties into believing that he is a senior member of Complainant's Management Team. In that respect, annexed to the Complaint is a schedule of communications from third parties - whose identities have been anonymised - reporting that Respondent has so represented himself. For example:
- January 17, 2014: Received a phone call from F to ask if we were still interested in product X as MGP (MERCEDES-BENZ Grand Prix) had apparently had a free sample of such product. This was not received by MGP and was apparently requested by "Stuart Howatson". Mr. Howatson does not work at MGP.
- February 4, 2014: MGP received a call from H to inform MGP that Mr. Howatson had stayed in the [redacted] Hotel, Bewdley between January 15 and 28 and informed the hotel that his MGP PA/Travel Administrator had booked rooms for him and sort out payment. Mr. Howatson claimed to be the Chief Operations Officer at MGP.
- April 23, 2014: I contacted MGP Reception to inform them that Mr. Howatson tried to open up a Business Currency Card Account using the email address "[redacted]@mercedesf1.net" and the MGP company name.
- June 16, 2014: J from a Software Company reported that Mr. Howatson had approached the CEO of Iris to purchase payroll software. The details Mr. Howatson gave them were [phone number redacted], email "[redacted]@mercedesf1.net" and job title as Chief Operating Officer.
- July 25, 2014: Received an invoice from L - an IT software supplier for GBP 10,260.00 using "mercedesf1.net" as a contact address. MGP did not order this software and MGP informed K that this order was fraudulently placed using MGP's name.
5.A.3 Registered and Used in Bad Faith
5.A.3.1 In sum, Complainant's case is that there is evidence of circumstances falling within paragraphs 4(b)(iii) and (iv) of the Policy. Complainant puts its case in the following ways.
5.A.3.2 First, as noted in paragraph 4.B.3 above, without license or other authorisation, the disputed domain name resolves to Complainant's Official Website.
5.A.3.3 Complainant asserts that Respondent deceives and misleads fans, potential suppliers and/or customers of Complainant using the disputed domain name by diverting them from that name to Complainant's website thereby propagating Respondent's illegal, fraudulent activity. This, Complainant says, creates confusion as to the legitimacy of those associated with the disputed domain name. The evidence is that Respondent deliberately leverages such confusion so as to masquerade as an employee of Complainant.
5.A.3.4 Complainant believes that Respondent acquired the disputed domain name primarily for the purpose of enabling such fraudulent activity. The activities summarised in paragraph 5.A.2.2 above disrupt Complainant's normal day to day business. Complainant says that, if required for the purposes of this Complaint, it will disclose in confidence the identities of the individuals whose communications are summarised in the Annexe, provided those individuals consent and that such confidence can be maintained.
5.A.3.5 Complainant's case is that those communications illustrate that Respondent has used the disputed domain name to defraud "multiple vendors of goods and services to the value of many thousands of pounds." Complainant describes Respondent's modus operandi as follows:
"- Firstly, Respondent uses his own name and claims that he is a senior member of Complainant's personnel (e.g. Stuart Howatson, Chief Operating Officer - Complainant has a Chief Operating Officer but it is not Respondent);
- Secondly, Respondent uses fictitious names and imaginary positions in order to propagate his fraud (e.g. Lizzie Cernik, Assistant - there is no Lizzie Cernik that works at Complainant's business); and
- Thirdly, Respondent pretends to be a real employee of Complainant's organisation (e.g. Matt Harris, Head of IT - Mr. Harris is Complainant's Head of IT but has had no involvement whatsoever in Respondent's fraudulent activities)."
5.A.3.6 Complainant's case is that Respondent's activities using the disputed domain name described in the Complaint and summarised in the Annexe (excerpts from which are set out in paragraph 5.A.2.2) are misleading the public and by so doing inflicting severe harm on the Mercedes brand name, the goodwill associated with that trade mark and, consequently, Complainant's business.
5.B.1 As noted, Respondent has failed to file a Response.
6.1 The Policy, paragraph 4(a) provides that Complainant must prove each of the following in order to succeed in an administrative proceeding:
(i) that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and used in bad faith.
6.2 The Policy, paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate Respondent's rights or legitimate interests in the disputed domain name in issue.
6.3 The Policy, paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel shall be evidence of registration and use of a domain name in bad faith.
6.4 As stated, the circumstances set out in paragraphs 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognises that other circumstances can be evidence relevant to the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.
6.5.1 Clearly, Daimler A.G. is proprietor of the well known MERCEDES trade mark. Although Complainant has not exhibited to the Complaint a license from Daimler to use that trade mark, Complainant is majority owned by Daimler and uses the MERCEDES mark in its business. In the circumstances, for the purposes of this administrative proceeding the Panel is satisfied that Complainant has rights in the mark.
6.5.2 Since the disputed domain name incorporates the MERCEDES trade mark in its entirety, the Panel is also satisfied that the disputed domain name is confusingly similar to that mark. The Panel does not consider that incorporation into the disputed domain name of the separate third party mark F1 avoids a finding of confusingly similarity.
6.5.3 In the circumstances, the Complaint satisfies the requirements of paragraph 4(a)(i) of the Policy.
6.6.1 First, there is no evidence that Respondent has been commonly known by the disputed domain name (Policy, paragraph 4(c)(ii)).
6.6.2 Nor is there evidence that Respondent could bring itself within either of the circumstances set out in paragraphs 4(c)(i) or (iii) of the Policy. Indeed, in the Panel's view, there is compelling evidence that Respondent's use of the disputed domain name is not being made in connection with a bona fide offering of goods or services, nor is such use either a legitimate or fair use of the domain name. That evidence is illustrated in paragraph 5.A.2.2 above.
6.6.3 Consequently, the Complaint meets the requirement of paragraph 4(a)(ii) of the Policy.
6.7.1 MERCEDES is, as stated above, a very well known trade mark. In the Panel's opinion the manner in which Respondent has used the disputed domain name is redolent of bad faith registration and use. In that connection, it is not necessary to repeat the extracts from the Annexe set out in paragraph 5.A.2.2 above. If additional evidence of Respondent's bad faith use is required, Complainant has identified that such use continued between notification of the Complaint on August 20, 2014 and filing of the amended Complaint on September 15, 2014. See, for example, the following entry in the amended Annexe served with the amended Complaint:
August 28, 2014: "MGP received a call from M who asked to speak to a Sue Haynes. When reception informed M that there was no person with that name that worked at MGP he asked for Stuart Howatson our COO. She also informed him that there was no person with that name at MGP. M works for company P and Stuart has received services from them costing GBP 224,408.93. Stuart forged several Daimler documents and used Daimler and MGP employees' names in emails."
Although this entry makes no reference to use of the disputed domain name, it is evidence of similar conduct by Respondent when using that name.
6.7.2 In the circumstances, the Panel finds that the Complaint meets the requirement of paragraph 4(a)(iii) of the Policy.
7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <mercedesf1.net> be transferred to Complainant, without prejudice to any rights that may be asserted by the owner of the F1 mark.
David Perkins
Sole Panellist
Date: October 31, 2014