GMAC LLC v. indian domainer
Claim Number: FA0905001262254
Complainant is GMAC
LLC (“Complainant”), represented by Linda
E. Monge, of Rader, Fishman & Grauer PLLC,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <gmacsf.com>, registered with LEAD NETWORKS DOMAINS PVT. 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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 12, 2009; the National Arbitration Forum received a hard copy of the Complaint on May 13, 2009.
On May 20, 2009, LEAD NETWORKS DOMAINS PVT. LTD confirmed by e-mail to the National Arbitration Forum that the <gmacsf.com> domain name is registered with LEAD NETWORKS DOMAINS PVT. LTD and that Respondent is the current registrant of the name. LEAD NETWORKS DOMAINS PVT. LTD has verified that Respondent is bound by the LEAD NETWORKS DOMAINS PVT. LTD registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On May 28, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 17, 2009 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@gmacsf.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 22, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <gmacsf.com> domain name is confusingly similar to Complainant’s GMAC mark.
2. Respondent does not have any rights or legitimate interests in the <gmacsf.com> domain name.
3. Respondent registered and used the <gmacsf.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, GMAC LLC, is the owner of multiple registrations of the GMAC mark with the United States Patent and Trademark Office (“USPTO”) (i.e., Reg. No. 623,260 issued March 13, 1956) and other governmental trademark authorities throughout the world. Complainant uses the GMAC mark to provide financial services to consumers all over the world. Complainant operates its primary website at the <gmacfs.com> domain name.
Respondent registered the <gmacsf.com> domain name on November 7, 2007. Respondent is using the domain name to resolve to a website containing click-through links which promote various third-party financial services in competition with Complainant.
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."
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(e), 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. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. 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); see also 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.”).
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.
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i) based on its multiple registrations of for its GMAC mark with the USPTO and other governmental trademark authorities throughout the world. The Policy does not require Complainant to have registered the GMAC mark in the country of Respondent’s residence. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant alleges that Respondent’s disputed domain name is confusingly similar to Complainant’s GMAC mark. The <gmacsf.com> domain name incorporates Complainant’s GMAC mark in its entirety with the addition of the letters “s” and “f” and the generic top-level domain “.com.” The Panel finds that the addition of generic letters fails to alleviate the confusing similarity between Respondent’s <gmacsf.com> domain name and Complainant’s GMAC mark. Additionally, the confusion may be heightened based on the fact that Complainant operates its primary website at the <gmacfs.com> domain name, and Respondent merely transposed the “f” and “s” in the disputed domain name. The Panel finds that the affixation of the generic top-level domain “.com” is insignificant for the purposes of a Policy ¶ 4(a)(i) analysis. See Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly similar to the complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Thus, the Panel concludes that Respondent’s <gmacsf.com> domain name is confusingly similar to Complainant’s GMAC mark under Policy ¶ 4(a)(i).
Complainant has satisfied Policy ¶ 4(a)(i).
Complainant asserts that Respondent lacks rights and legitimate interests in the <gmacsf.com> domain name. For the purposes of a Policy ¶ 4(a)(ii) analysis, Complainant must first make a prima facie case in support of its allegations, and then the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(c). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”). In these proceedings, the Panel finds that Complainant has presented a sufficient prima facie case. However, Respondent has failed to respond to the allegations against it. Based on this failure, the Panel may choose to accept Complainant’s allegations as true. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). The Panel now chooses to examine the record to determine whether Respondent has any rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant contends that Respondent’s disputed domain name,
which resolves to a website featuring click-through links promoting competitors
of Complainant, does not constitute a bona
fide offering of goods or services or a legitimate noncommercial or fair
use under Policy ¶¶ 4(c)(i) or (iii), respectively. See
Expedia, Inc. v. Compaid, FA
520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of
the <expediate.com> domain name to redirect Internet users to a website
featuring links to travel services that competed with the complainant was not a
bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or
a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Wal-Mart Stores, Inc. v.
Power of Choice Holding Co., FA
621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of
domain names confusingly similar to the complainant’s WAL-MART mark to divert
Internet users seeking the complainant’s goods and services to websites
competing with the complainant did not constitute a bona fide offering
of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or
fair use under Policy ¶ 4(c)(iii)). The
Panel agrees and finds that such use, presumably for financial gain, does not
constitute a bona fide offering of
goods or services or a legitimate noncommercial or fair use pursuant to Policy
¶¶ 4(c)(i) or (iii), respectively.
Moreover, Complainant contends that Respondent is not commonly known by the <gmacsf.com> domain name under Policy ¶ 4(c)(ii). The WHOIS information lists the registrant as “indian domainer,” which suggests that Respondent is not commonly known by the disputed domain name. There is no evidence in the record to suggest otherwise. Therefore, the Panel finds that Respondent is not, and has never been, commonly known by the <gmacsf.com> domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent is using a confusingly similar domain name to attract Internet users to Respondent’s website featuring links which resolve to websites of Complainant’s competitors. The Panel concludes that appropriating Complainant’s GMAC mark to divert Internet users is likely disrupting Complainant’s business and constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Respondent is intentionally attempting to attract Internet users to its confusingly similar domain name for financial gain by creating a likelihood of confusion with Complainant’s GMAC mark and Complainant’s <gmacfs.com> website. Additionally, the disputed domain name’s resolving website contains click-through links which promote Complainant’s competitors. The Panel presumes that Respondent is profiting from such use. See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant). Therefore, the Panel concludes that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iv).
Complainant has satisfied 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 <gmacsf.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: July 1 2009
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