General Motors LLC v. Franklin Lujan / All Your Leads Needs.com
Claim Number: FA1409001579458
Complainant is General Motors LLC (“Complainant”), represented by Anessa Owen Kramer of Honigman Miller Schwartz and Cohn LLP, Michigan, USA. Respondent is Franklin Lujan / All Your Leads Needs.com (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gmrecallcenter.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 12, 2014; the National Arbitration Forum received payment on September 12, 2014.
On September 15, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <gmrecallcenter.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 September 16, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 6, 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@gmrecallcenter.com. Also on September 16, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 13, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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" 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 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’s Contentions
1. Complainant claims that GM is used to promote its line of automobiles. Complainant further claims the domain name is confusingly similar as it merely implies a recall center related to GM.
2. Complainant does not believe that Respondent has rights or legitimate interests in the <gmrecallcenter.com> domain name. First, Respondent is not commonly known by this domain name. Further, the domain name is used to suggest Internet users are at a website that will actually complete a recall of their GM vehicle, when this is absolutely not true as Respondent is not associated with Complainant.
3. Complainant states that Respondent registered and used the disputed domain name in bad faith. First, Respondent is disrupting Complainant’s business by pretending to offer legitimate GM recall services. Further, the deceptive nature of the disputed domain name’s website suggests Respondent is seeking to prey upon a likelihood Internet users will confuse Complainant as the source or origin of the recall notices. Finally, Respondent’s actions show that it had actual knowledge of Complainant’s rights when registering and using the disputed domain name.
B. Respondent’s Contentions
1. Respondent did not submit a response.
1. Respondent’s <gmrecallcenter.com> domain name is confusingly similar to Complainant’s GM mark.
2. Respondent does not have any rights or legitimate interests in the <gmrecallcenter.com domain name.
3. Respondent registered or used the <gmrecallcenter.com> domain name 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 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(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.”).
Complainant claims that GM is used to promote its line of automobiles. The Panel notes the mark has been registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 314,823, registered July 10, 1934). The Panel agrees that this trademark registration satisfies Policy ¶ 4(a)(i)’s required showing of rights in a trademark. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Complainant further claims the domain name is confusingly similar as the name merely adds the generic terms “recall” and “center” to the otherwise included GM mark. Prior panels have found confusing similarity in similar circumstances. See, e.g., Cargill, Incorporated v. Domain Privacy Grp., FA 1501652 (Nat. Arb. Forum Jul. 5, 2013) (determining that the disputed domain name, which contains the complainant’s mark, along with two generic terms and a generic top-level domain, is the equivalent of the mark itself for the purposes of Policy ¶ 4(a)(i)). Accordingly, the Panel agrees that the inclusion of the terms “recall” and “center,” plus the generic top-level domain “.com,” fail to negate the resulting name from the incorporated mark, and therefore find the <gmrecallcenter.com> domain name confusingly similar to the GM mark pursuant to Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent 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.”).
First, Complainant argues that Respondent is not commonly known by this domain name. The Panel notes that the WHOIS information lists “Franklin Lujan” as the registrant here. In the absence of a response, the Panel finds Respondent is not commonly known by the <gmrecallcenter.com> domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Further, Complainant argues that the domain name is used to suggest Internet users are at a website that will actually complete a recall of their GM vehicle, when this is absolutely not true as Respondent is not associated with Complainant. The Panel notes the domain name is in fact used to suggest Respondent is taking information for GM-related automobile recalls. See Compl., at Attached Ex N. This Panel finds that Respondent is not making a Policy ¶ 4(c)(i) bona fide offering, or Policy ¶ 4(c)(iii) legitimate noncommercial or fair use by appropriating a domain name for use in a deceptive website. See, e.g., Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
First, Complainant claims that Respondent is disrupting Complainant’s business by pretending to offer legitimate GM recall services. The Panel agrees however that as Respondent is using the domain name to suggest a GM recall center is operated on the domain name, it is questionable at best that Respondent is “competing” with Complainant in such a way as to create Policy ¶ 4(b)(iii) bad faith. See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
Further, Complainant believes that the deceptive nature of the disputed domain name’s website suggests Respondent is seeking to prey upon a likelihood Internet users will confuse Complainant as the source or origin of the recall notices. The Panel agrees that the extent of the website as featured in Exhibit N does give raise to a legitimate concern that Internet users visiting the website might be confused as to Complainant’s association with its contents. As such, this Panel concludes that Respondent’s conduct amounts to Policy ¶ 4(b)(iv) bad faith. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (finding that where the complainant’s mark was appropriated at registration, and a copy of the complainant’s website was used at the domain name in order to facilitate the interception of the complainant’s customer’s account information, the respondent’s behavior evidenced bad faith use and registration of the domain name).
Finally, Complainant claims Respondent’s actions show that it had actual knowledge of Complainant’s rights when registering and using the disputed domain name. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gmrecallcenter.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: October 28, 2014
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