General Motors LLC v. NENAD BANJAC
Claim Number: FA1603001666959
Complainant is General Motors LLC (“Complainant”), represented by Jennifer M. Hetu of Honigman Miller Schwartz and Cohn LLP, Michigan, USA. Respondent is NENAD BANJAC (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chevrolet2017.com>, registered with eNom, Inc.
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.
Luiz Edgard Montaury Pimenta as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 22, 2016; the Forum received payment on March 22, 2016.
On March 23, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <chevrolet2017.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 March 24, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 13, 2016 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@chevrolet2017.com. Also on March 24, 2016, 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.
A timely Response was received and determined to be complete on March 25, 2016.
On April 4, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Luiz Edgard Montaury Pimenta 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant basically asserts that:
Complainant uses the CHEVROLET mark in connection with its automotive business. Complainant has registered the CHEVROLET mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 216,070, registered August 3, 1926), which demonstrates rights in the mark.
Respondent’s <chevrolet2017.com> domain name is confusingly similar to Complainant’s CHEVROLET mark as it incorporates the mark in its entirety and adds the descriptive term “2017,” which is a reference to GM 2017 model year vehicles, and the generic top-level domain (“gTLD”) “.com”.
Respondent neither has rights nor legitimate interests in <chevrolet2017.com> disputed domain name. Moreover, Respondent is not commonly known by the disputed domain name.
Complainant also argues that Respondent has attempted to attract Internet users to its site for commercial gain by creating confusion with Complainant’s trademark. Complainant also contends that in light of the fame and notoriety of Complainant's CHEVROLET mark, it is inconceivable that Respondent could have registered the <chevrolet2017.com> domain name without actual or constructive knowledge of Complainant's rights in the mark.
B. Respondent
Respondent alleges that the disputed domain name redirects to the website www.idrivechevy.com, which does not use the CHEVROLET mark in its domain name or anywhere on the site.
Complainant is a well-known manufacturer of cars and trucks, being considered one of the world's largest automakers. Complainant's vehicles are sold in more than 120 countries around the world. Complainant's first began business under the CHEVROLET mark in 1911.
Complainant uses the CHEVROLET mark for automotive business and has registered it with the USPTO, establishing its rights in the mark.
Complainant also owns the domain name <chevrolet.com> and other domain names that incorporate the CHEVROLET mark.
Respondent registered the <chevrolet2017.com> domain name on January 16, 2016 and it is currently resolving to the website www.idrivechevy.com.
DISCUSSION
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.
The Panel verifies that Complainant has rights and uses the CHEVROLET mark in connection with its automotive business.
The Panel notes that the disputed domain name is in fact confusingly similar to Complainant’s CHEVROLET mark as it incorporates the mark in its entirety and adds the descriptive term “2017”. The website makes reference to GM 2017 model year vehicles. Panels have found the addition of descriptive terms and gTLDs to be insufficient in overcoming a finding of confusing similarity. See H-D Michigan, LLC v Finnegan, Henderson, Farabow, Garret & Dunnet, L.L.P., NAF Claim No. FA1006001328876 (<harleydavidsonmotorcyclejackets.com>).
Therefore, the Panel concludes that the disputed domain name <chevrolet2017.com> is confusingly similar to Complainant’s CHEVROLET mark, satisfying Policy 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 is not commonly known by the disputed domain name, and points to the WHOIS record, which identifies Nenad Banjac as registrant. Complainant states that it has not authorized Respondent’s use of the CHEVROLET marks and Bow Tie Logo. In the absence of any evidence to the contrary in this case, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Further, the Panel finds that Respondent is neither making a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy (Société pour l’Oeuvre et la Mémoire d’Antoine de Saint Exupéry v. The Holding Company, WIPO Case No. D2005-0165). Rather, evidence presented by the Complainant reveals that the disputed domain name has been used to redirect internet users to an infringing website, which exposed advertisement with hyperlinks to the commercial websites of Complainant’s competitors.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
First, the Panel finds that the trademark CHEVROLET is widely known and had been in use for many decades before Respondent's registration of the disputed domain name. In light of the fame and notoriety of Complainant's mark, it is inconceivable that Respondent could have registered the <chevrolet2017.com> domain name without actual and/or constructive knowledge of Complainant's rights in the mark.
The Panel observes that the Respondent has not offered any explanation for having registered a domain name that is practically identical to the Complainant’s well-known mark and then using it to redirect internet users to a website exposing advertisement with hyperlinks to the commercial websites of Complainant’s competitors.
The Panel finds that Respondent has attempted to attract Internet users to its website for commercial gain by creating confusion as to the source, sponsorship, affiliation or endorsement of the website. Respondent has registered the disputed domain name to create a likelihood of confusion with Complainant’s mark in order to profit from internet users looking for Complainant’s site via click-through fees.
For the reasons above, the Panel finds that Respondent has registered and is using the domain name <chevrolet2017.com> in bad faith, establishing 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 <chevrolet2017.com> domain name be TRANSFERRED from Respondent to Complainant.
Luiz Edgard Montaury Pimenta, Panelist
Dated: April 18, 2016
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