General Motors LLC v. Domain MANAGER / Domain Brokers
Claim Number: FA1503001612132
Complainant is General Motors LLC (“Complainant”), represented by Jennifer M. Hetu of Honigman Miller Schwartz and Cohn LLP, Michigan, USA. Respondent is Domain MANAGER / Domain Brokers (“Respondent”), St. Vincent and the Grenadines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gmccanada.com>, registered with BigRock Solutions 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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 30, 2015; the Forum received payment on March 30, 2015.
On March 30, 2015, BigRock Solutions Ltd confirmed by e-mail to the Forum that the <gmccanada.com> domain name is registered with BigRock Solutions Ltd and that Respondent is the current registrant of the name. BigRock Solutions Ltd has verified that Respondent is bound by the BigRock Solutions 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 April 2, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 22, 2015 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@gmccanada.com. Also on April 2, 2015, 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 April 29, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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.
Complainant
Complainant uses the GMC mark in connection with its business as a manufacturer of cars and trucks. Complainant has registered the GMC mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 646,914, registered June 11, 1957), establishing its rights in the mark. Respondent’s <gmccanada.com> domain name is confusingly similar to the GMC mark because it incorporates the mark entirely and adds the geographic descriptor “Canada” and the “.com” generic top-level domain name.
Respondent has no rights or legitimate interests in the <gmccanada.com> domain name. Respondent is not commonly known by the disputed domain name. Respondent is not making a bona fide offering of goods or services or any legitimate noncommercial or fair use. The resolving website features hyperlinks to Complainant’s websites and the commercial websites of Complainant’s competitors from which Respondent presumably gains click-through fees.
Respondent has registered and used the <gmccanada.com> domain name in bad faith. Respondent is attempting to disrupt Complainant’s business by diverting Internet users to competitors of Complainant. Respondent has exhibited bad faith by attracting Internet users to its site for commercial gain, benefitting from the goodwill associated with the GMC mark. Respondent registered the <gmccanada.com> domain name with actual or constructive knowledge of the GMC mark and Complainant’s rights in the mark.
Respondent
Respondent did not submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 uses the GMC mark in connection with its business as a manufacturer of cars and trucks. Complainant has registered the GMC mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 646,914, registered June 11, 1957), and argues the registration evinces rights in the mark. The Panel agrees that Complainant’s USPTO registration establishes rights under Policy ¶ 4(a)(i) even though Respondent lives or operates in a different country. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant claims that Respondent’s <gmccanada.com> domain name is confusingly similar to the GMC mark because it incorporates the mark entirely and adds the geographic descriptor “Canada” and the generic top-level domain name “.com”. Past panels have found that such alterations to a mark are insufficient in overcoming a finding of confusing similarity under Policy ¶ 4(a)(i). See Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding that the domain name, <walmartcanada.com> is confusingly similar to the complainant’s famous mark). Thus, the Panel agrees that Respondent’s <gmccanada.com> domain name is confusingly similar to the GMC mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
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.”).
Complainant argues that Respondent has no rights or legitimate interests in the <gmccanada.com> domain name. Complainant asserts that Respondent is not commonly known by the disputed domain name. The Panel agrees that, based on the relevant WHOIS information and absent a response, there is no basis for finding that Respondent is commonly known by the disputed 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).
Complainant contends that Respondent is not making a bona fide offering of goods or services or any legitimate noncommercial or fair use of the domain name. The resolving website features hyperlinks to Complainant’s websites and the commercial websites of Complainant’s competitors from which Respondent presumably gains click-through fees. The Panel agrees that such use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does 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).”).
Complainant has proven this element.
Complainant asserts, under Policy ¶ 4(b)(iii), that Respondent is attempting to disrupt Complainant’s business by diverting Internet users to competitors of Complainant. Hyperlinks on the resolving page include: “GMC.com – Official Site”, “Vehicle Car”, “View Our GMC Inventory”, and “Compare Ford® F-150.” The Panel agrees that such links resolve to sites directly in competition with Complainant, and that such sites divert Internet users away from Complainant’s business, demonstrating bad faith under Policy ¶ 4(b)(iii). See Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)).
Complainant argues that Respondent has exhibited bad faith by attracting Internet users to its site for commercial gain, and thereby benefitting from the goodwill associated with the GMC mark, under Policy ¶ 4(b)(iv). The Panel agrees that Respondent presumably benefits from Internet users’ mistake as to the source, sponsorship or affiliation of the website with Complainant, by gaining click-through fees, and that this is evidence of bad faith under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Complainant alleges that Respondent registered the <gmccanada.com> domain name with actual or constructive knowledge of the GMC mark and Complainant’s rights in the mark because of Complainant's widespread use of the mark and its trademark registrations with the USPTO. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel finds there is evidence that Respondent had actual notice of Complainant's mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant's mark when it registered the domain name, panels can find bad faith); 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").
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <gmccanada.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: May 1, 2015
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