ONSTAR, LLC v. Super Privacy Service LTD c/o Dynadot
Claim Number: FA2002001884043
Complainant is ONSTAR, LLC (“Complainant”), represented by Jennifer M. Hetu of Honigman LLP, Michigan, USA. Respondent is Super Privacy Service LTD c/o Dynadot (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <onstarguardian.com>, registered with Dynadot, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 20, 2020; the Forum received payment on February 20, 2020.
On February 25, 2020, Dynadot, LLC confirmed by e-mail to the Forum that the <onstarguardian.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 25, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 16, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@onstarguardian.com. Also on February 25, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 20, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant provides remote roadside emergency and telecommunications services. Complainant has rights in the ONSTAR trademark through its registration with United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,088,310, registered Aug. 12, 1997). Complainant also claims rights in the ONSTAR GUARDIAN trademark. Respondent’s domain name <onstarguardian.com> is identical and/or confusingly similar to Complainant’s ONSTAR and ONSTAR GUARDIAN trademarks as Respondent incorporates the trademarks in their entirety and adds the generic term “guardian” and/or the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <onstarguardian.com> domain name as Respondent is not commonly known by the disputed domain name, nor did Complainant authorize Respondent to use the ONSTAR trademark in any way. Respondent fails at making a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent fails to make an active use of the disputed domain name.
Respondent registered and uses the <onstarguardian.com> domain name in bad faith as Respondent attempts to sell the disputed domain name. Respondent attempts to create confusion with Complainant’s ONSTAR trademark. Respondent had actual knowledge of Complainant’s rights in the ONSTAR trademark prior to registration of the domain name due to the fame of the ONSTAR trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 4,080,213 ONSTAR (word), registered January 3, 2012 for goods in class 9;
No. 2,088,310 ONSTAR (word), registered August 12, 1997 for services in class 38; and
No. 4,176,877 ONSTAR REMOTELINK (word), registered July 17, 2012 for goods in class 9.
The Complainant is also the owner of the pending U.S. trademark application No. 88327678 ONSTAR GUARDIAN (word), filed on March 6, 2019.
The <onstarguardian.com> domain name was registered on March 9, 2019.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims to have rights in the ONSTAR trademark through its registration with the USPTO. Registration of a trademark with the USPTO is sufficient to establish rights in a trademark per Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT trademark). Here, Complainant has provided copies of its USPTO registrations for the ONSTAR trademark (e.g., Reg. No. 2,088,310, Registered Aug. 12, 1997). Therefore, the Panel find that Complainant has adequately shown rights in the trademark per Policy ¶ 4(a)(i).
The Complainant also argues rights in the ONSTAR GUARDIAN trademark. However, Complainant has only a pending trademark application (Serial No. 88327678, filed on Mar. 6, 2019) Since the trademark is not yet registered with a trademark agency nor has Complainant argued common law rights in the trademark, therefore Complainant has not shown rights in the ONSTAR GUARDIAN trademark per Policy ¶ 4(a)(i). However, see further under “Registration and Use in Bad Faith” below.
Complainant argues that Respondent’s <onstarguardian.com> domain name is confusingly similar to Complainant’s ONSTAR trademark as Respondent adds a modifier and a gTLD to the mark. Registration of a disputed domain name that includes a trademark in its entirety and adds a generic word and gTLD does not distinguish the domain name from the trademark per Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a trademark under Policy ¶ 4(a)(i)). The Panel find that the disputed domain name <onstarguardian.com> is confusingly similar to Complainant’s ONSTAR trademark per Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent lacks rights or legitimate interest in the <onstarguardian.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the ONSTAR trademark or register domain names using Complainant’s trademark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s trademark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Super Privacy Service LTD c/o Dynadot” and there is no other evidence to suggest that Respondent was authorized to use the ONSTAR trademark or was commonly known by <onstarguardian.com>. Therefore, the Panel find that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent fails to make an active use of the <onstarguardian.com> domain name. Failure to make active use of a domain name does constitute as a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii). See Michelin North America, Inc. v. Energie Media Group, FA 451882 (Forum Aug. 7, 2012). In Michelin North, the panel found that inactive use, or “passive holding,” of the disputed domain name by a respondent “permits the inference that [the respondent] lacks rights and legitimate interests in the domain names.” Here, Complainant has provided the Panel with screenshots the resolving webpage found at the disputed domain name. Therefore, the Panel finds that Respondent failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
Complainant argues that Respondent registered and uses the <onstarguardian.com> domain name in bad faith by attempting to sell the disputed domain name. General attempts to sell a disputed domain name may be evidence of bad faith per Policy ¶ 4(b)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”). Here, Complainant has provided screenshots that show Respondent’s attempts to sell <onstarguardian.com>. Therefore, the Panel find that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(i).
Complainant contends that Respondent attempts to create confusion with Complainant’s ONSTAR trademark. Use of a disputed domain name to create confusion between a trademark and a disputed domain name may be evidence of bad faith per Policy ¶ 4(b)(iv). See BBY Solutions, Inc. v. Grant Ritzwoller, FA 1703389 (Forum Dec. 21, 2016) (finding bad faith because the <bestbuyus.com> domain name was obviously connected with the complainant’s well-known BEST BUY mark, thus creating a likelihood of confusion strictly for commercial gain). Here, Complainant argues that Respondent uses the ONSTAR trademark in its domain name to confuse internet users into thinking that Respondent is associated with Complainant. Therefore, the Panel agrees and find that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Lastly, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the ONSTAR trademark prior to registration of the <onstarguardian.com> domain name due to the fame and use of the trademark. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, actual knowledge of Complainant’s rights in the trademark prior to registering the disputed domain name is adequate to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Use of a disputed domain name that contains a well-known and famous trademark may be evidence of actual knowledge per Policy ¶ 4(a)(iii). See Coachella Music Festival, LLC v. ALEXANDER DE ALMEIDA LOPES, FA 1705267 (Forum Jan. 9, 2017) (finding the respondent had actual knowledge of the complainant’s COACHELLA mark when it registered and used the <coachellastuff.com> domain name—and thus did so in bad faith—because the complainant presented adequate evidence that its mark was well-known and famous). Here, Complainant has provided the Panel with the use of its ONSTAR trademark in commerce and the fame generated by the trademark.
The Panel further notes that the disputed domain name <onstarguardian.com> domain name was registered on March 9, 2019, which is only three days after the Complainant filed a new U.S. trademark application for the combined ONSTAR GUARDIAN trademark. Both Complainant and Respondent are based in USA, and the combination and time frame further strongly indicates Respondent’s bad faith. Panel finds that Respondent had actual knowledge of Complainant’s rights in the ONSTAR trademark prior to registration of the disputed domain name which constitutes bad faith per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <onstarguardian.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: March 29, 2020
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