General Motors LLC v. Fernando Leiva / AUTOMOVIL CLICK
Claim Number: FA1405001561397
Complainant is General Motors LLC (“Complainant”), represented by Anessa Owen Kramer of Honigman Miller Schwartz and Cohn LLP, Michigan, USA. Respondent is Fernando Leiva / AUTOMOVIL CLICK (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chevroletpanama.com>, which is registered with GODADDY.COM, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on May 27, 2014; the National Arbitration Forum received payment on May 27, 2014.
On May 28, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <chevroletpanama.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, 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 May 30, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 19, 2014 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@chevroletpanama.com. Also on May 30, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respond-ent via post and fax, to all entities and persons listed on Respondent’s registra-tion as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 26, 2014, pursuant to Complainant's request to have the dispute decid-ed by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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" through submission of Electronic and Written Not-ices, 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 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
Complainant has used the CHEVROLET mark for over a century to identify its automotive products.
Complainant’s CHEVROLET trademark is protected by United States Patent and Trademark Office ("USPTO") registrations (including Registry No. 1,661,627, reg-istered October 22, 1991).
Respondent registered the <chevroletpanama.com> domain name on or about April 16, 2012.
The domain name is confusingly similar to Complainant’s CHEVROLET mark.
Respondent has never been commonly known by the <chevroletpanama.com> domain name.
Respondent has no association with Complainant, and Complainant has never authorized Respondent’s use of the CHEVROLET mark.
Respondent uses the domain name in connection with the operation of a website that promotes the unauthorized sale of CHEVROLET goods.
Respondent is without rights to or legitimate interests in the domain name.
By its use of the domain name Respondent intends to profit from confusion caused among Internet users as to the possibility of Complainant’s affiliation with the domain name.
Respondent registered the domain name with knowledge of the CHEVROLET mark’s existence and the value of that mark to Complainant.
Respondent registered and uses the <chevroletpanama.com> domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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.”
Complainant has rights in the CHEVROLET trademark for purposes of Policy
¶ 4(a)(i) by virtue of its registration of the mark with a national trademark auth-ority, the USPTO. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010), finding that: “USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights ….”
This is true without regard to whether Complainant’s rights in its mark arise from its registration in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Chile). See, for example, Renais-sance Hotel Hldgs, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether a UDRP complainant has registered its trademark in the country in which a respondent resides, only that it can establish rights in its mark in some jurisdiction).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <chevroletpanama.com> domain name is confusingly similar to complainant’s CHEVROLET trademark. The domain name contains the entire mark, with only the addition of the geographic term “panama” and the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save the domain name from the realm of confusing similarity under the standards of the Policy. See, for exam-ple, Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding under Policy ¶ 4(a)(i) the <indiaticketmaster.com> domain name con-fusingly similar to a UDRP complainant’s TICKETMASTER mark).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has never been commonly known by the disputed domain name <chevroletpanama.com>, that Respondent has no association with Complainant, and that Complainant has not authorized Respondent’s use of its CHEVROLET mark. Moreover, the WHOIS record for this domain name identifies the registrant only as “AUTOMOVIL CLICK,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the <chevroletpanama.com> domain name so as to have acquired rights to or legit-imate interests in it within the meaning of Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a respondent was not commonly known by the <lilpunk.com> domain name, and so failed to show tht it had rights to or legitimate interests in it under Policy ¶ 4(c)(ii), where there was no evidence in the record, including the WHOIS information, showing that that respondent was commonly known by that domain name, and where a UDRP complainant asserted that it did not authorize or license that respondent’s use of its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the <chevroletpanama.com> domain name to operate a website that promotes the unauthorized sale of CHEVROLET goods, and that Respondent seeks to profit from this employment of the domain name. This use of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Diamond Mattress Co v Diamond Mattress, D2010-1637 (WIPO November 23, 2010), a panel there finding, under Policy ¶ 4(c), no rights or legitimate inter-ests in a respondent who was an unauthorized reseller of a UDRP complainant’s goods, where that respondent took no steps to avoid consumer confusion as to the relationship between that respondent and that complainant, and where that respondent’s website failed to disclose the lack of a relationship between them.
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s employment of the domain name <chevroletpanama.com>, which is confusingly similar to Complainant’s CHEVROLET trademark, to profit by the unauthorized marketing of Complain-ant’s goods demonstrates bad faith in the registration and use of the domain name under Policy ¶ 4(b)(iv). See Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that a respondent came within the bad faith provisions of Policy ¶ 4(b)(iv) by creating a likelihood of confusion with a UDRP complainant's mark by using a domain name derived from that complain-ant’s mark to sell that complainant’s products).
We are also convinced by the evidence that Respondent knew of Complainant and its rights in the CHEVROLET trademark when it registered and began using the <chevroletpanama.com> domain name. This is independent proof of Re-spondent’s bad faith in the registration and use of the domain name. See, for example, Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014):
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.
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <chevroletpanama.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 27, 2014
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