General Motors LLC v. Liu Yuan
Claim Number: FA2106001951678
Complainant is General Motors LLC (“Complainant”), represented by Jennifer M. Hetu of Honigman Miller Schwartz and Cohn LLP, Michigan, USA. Respondent is Liu Yuan (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <mybuickreward.com> and <mychevroletreward.com>, both registered with Alibaba Cloud Computing (Beijing) Co., Ltd.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 18, 2021; the Forum received payment on June 18, 2021. The Complaint was received in English.
On June 23, 2021, Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to the Forum that the <mybuickreward.com> and <mychevroletreward.com> domain names are registered with Alibaba Cloud Computing (Beijing) Co., Ltd. and that Respondent is the current registrant of the names. Alibaba Cloud Computing (Beijing) Co., Ltd. has verified that Respondent is bound by the Alibaba Cloud Computing (Beijing) Co., Ltd. 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 June 30, 2021, the Forum served the English language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of July 20, 2021 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@mybuickreward.com, postmaster@mychevroletreward.com. Also on June 30, 2021, the Chinese language 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 July 26, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 names be transferred from Respondent to Complainant.
The Panel notes the Chinese language Registration Agreement. Under Rule 11(a) the language of these proceedings is therefore Chinese. Nevertheless, Complainant requests that the proceedings continue in the English language and under the Rules the Panel has discretion to allow that request.
In considering similar requests, UDRP panels have taken account of factors which indicate a respondent’s proficiency with the English language[i]. Here, Complainant submits that Respondent is capable of understanding English based on the facts that (i) the domain names themselves add English language words to the trademarks in a grammatically correct sense, and (ii) the resolving websites consists of English language text. The Panel considers this just enough to find that Respondent understands English and could have filed a Response.
In the circumstances the Panel determines that the proceedings should continue in English.
A. Complainant
Complainant asserts trademark rights in MY BUICK and MY CHEVROLET. Complainant submits that the domain names are confusingly similar to the respective trademarks.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant manufactures automobiles under the trademarks, BUICK and CHEVROLET;
2. Complainant owns United States Patent and Trademark Office (“USPTO”) Reg. No. 5,174,755 for MY BUICK and Reg. No. 5,174,754 for MY CHEVROLET, both registered April 4, 2017;
3. there is no relationship between the parties and Complainant has not authorized Respondent to use its trademarks or register any domain name incorporating that trademarks;
4. Respondent registered the disputed domain names on April 19, 2018; and
5. the domain names resolve to websites which promote third party reward and loyalty schemes.
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 based on 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory[ii].
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights[iii]. Complainant provides evidence of its USPTO registrations for the trademarks and so the Panel finds that Complainant has rights in those trademarks.
The domain names incorporate the entire marks and simply adds the term “reward” and the “.com” gTLD. Neither of those additions carries any distinctive value and the trademarks remain the recognizable part of the disputed domain names. It follows that the Panel finds the disputed domain names to be confusingly similar to the trademarks for the purposes of paragraph 4(a)(i) of the Policy[iv].
Accordingly, Complainant has satisfied the first element of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved, based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests[v].
The publicly available WhoIs information shielded the name of the underlying domain name registrant by a privacy service provider but in consequence of these proceedings the Registrar disclosed the name of the holder as “Liu Yuan”. That name does not provide any prima facie evidence that Respondent might be known by either of the disputed domain names. There is nothing else to suggest that Respondent is commonly known by the domain names and there is no evidence it has trademark rights of its own.
Complainant provides screenshots of the resolving webpages which shows various links to third-party businesses unconnected with Complainant but offering loyalty rewards pf some kind. Using a disputed domain name to offer competing pay-per-click hyperlinks is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use under and the Panel finds that Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names[vi].
The onus shifts to Respondent to establish a legitimate interest and, absent a Response, that prima facie case is not rebutted. The Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied this second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered and used in bad faith.
Guidance is found in paragraph 4(b) of the Policy which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.
The Panel finds that paragraph 4(b)(iv) has direct application. The Panel has already found the disputed domain names to be confusingly similar to the trademarks. In terms of the Policy, the Panel finds that Respondent has intentionally used the domain names to attract, for commercial gain, Internet users to the resolving websites by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of that websites.
The Panel finds registration and use in bad faith and so finds that Complainant has satisfied the third and final element of the Policy[vii].
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mybuickreward.com> and <mychevroletreward.com> domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Date: July 27, 2021
[i] See, for example, The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009); see also Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006).
[ii] See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true; Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”)
[iii] See, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”)
[iv] See, for example, Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) finding <suttonpromo.com> confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)).
[v] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[vi] See, for example, Provide Commerce, Inc. v. e on Craze, FA1506001626318 (Forum Aug. 11, 2015) holding that the respondent was not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and 4(c)(iii) where the respondent was using the disputed domain name to host generic links to third-party websites, some of which directly competed with the complainant’s business.
[vii] See, for example, HEB Grocery Company, LP v. Nikolay Schastenko / SEO Ukraine, FA 1789019 (Forum July 3, 2018) (“Complainant provides screenshots of the domain name’s resolving website and claims, without contradiction that Respondent commercially benefits from an “Affiliate Program” in which users are redirected to job-oriented websites such as “Snagajob” and “Monster.” Therefore, Respondent’s use of the <hebcareers.net> domain name to attract users for commercial gain demonstrates bad faith per Policy ¶ 4(b)(iv).”).
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