General Motors LLC v. Isaac Goldstein / POSTE RESTANTE
Claim Number: FA1612001708716
Complainant is General Motors LLC (“Complainant”), represented by Jennifer M. Hetu of Honigman Miller Schwartz and Cohn LLP, Michigan, USA. Respondent is Isaac Goldstein / POSTE RESTANTE (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mybuick.com>, registered with Arab Internet Names, Incorporated.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 20, 2016; the Forum received payment on December 20, 2016.
On December 21, 2016, Arab Internet Names, Incorporated confirmed by e-mail to the Forum that the <mybuick.com> domain name is registered with Arab Internet Names, Incorporated and that Respondent is the current registrant of the name. Arab Internet Names, Incorporated has verified that Respondent is bound by the Arab Internet Names, Incorporated 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 December 21, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 10, 2017 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@mybuick.com. Also on December 21, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On January 23, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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.
A. Complainant
Complainant states that it is a manufacturer of cars and trucks, and is one of the world’s largest automakers. In connection with this business, Complainant uses the BUICK mark to sell and market its BUICK line of automobiles. Complainant has rights to the BUICK mark based upon registration in the United States in 1949. The mark is also registered elsewhere around the world.
According to Complainant, the disputed domain name is confusingly similar to Complainant’s BUICK mark, as the disputed domain name incorporates the mark in its entirety coupled with the descriptive term “my” and the generic top-level domain (“gTLD”) “.com.” Complainant cites UDRP precedents to support its position.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not now and has never been commonly known by the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use its mark. The disputed domain name resolves to a web page featuring advertisements with hyperlinks to various commercial websites of Complainant’s competitors. This use of the disputed domain name amounts to neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under the Policy. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent’s registration and use of the disputed domain is in bad faith under the Policy. Respondent has been the named respondent in more than 30 other UDRP proceedings where the panel has made findings adverse to Respondent, evidence that Respondent’s registration of the disputed domain name is part of a pattern of bad faith registration as described by Policy ¶ 4(b)(ii). Additionally, Respondent’s use of the disputed domain name to link to competitors of Complainant is evidence of Policy ¶¶ 4(b)(iii) and 4(b)(iv) bad faith. Furthermore, because of the fame and well-known status of the BUICK mark, Respondent had actual or constructive knowledge of Complainant’s rights in the mark when it registered and used the disputed domain name. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the mark BUICK dating back to 1949. The mark is famous.
The disputed domain name was registered in 2016.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
Respondent is using the disputed domain names to resolve to a web site that contains links to products and services that compete with those of 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."
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(f), 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 (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.”).
The disputed domain name is confusingly similar to Complainant’s BUICK mark, as the domain name contains the mark in its entirety and merely appends the descriptive term “my” and the gTLD “.com.” Addition of a descriptive term and a gTLD to a mark in order to form a domain name does not distinguish the domain name in a Policy ¶ 4(a)(i) analysis for confusing similarity. See Illumina, Inc. v. Ryan G Foo / PPA Media Services, FA 1693460 (Forum Oct. 26, 2016) (finding the respondent’s <myillumina.com> to be confusingly similar to the complainant’s ILLUMINA mark, as it incorporated the mark entirely, adding the term “my” and the gTLD “.com”). Accordingly, the Panel finds the disputed domain name to be confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Respondent is not commonly known by the disputed domain name: the WHOIS information of record identifies Respondent as “Isaac Goldstein” with “POSTE RESTANTE.” Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name.), The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
Respondent’s lack of rights or legitimate interests in the disputed domain name is evinced by its failure to use the name for a bona fide offering of goods or services or legitimate noncommercial or fair use. The disputed domain name resolves to a website which features advertisements with hyperlinks to the commercial websites of Complainant’s competitors. Presumably, Respondent collects click-through profits when an Internet user clicks one of the links. Use of a resolving website to hosts advertisements which link to a complainant’s competitors is not a use granting rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii). See Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Forum May 11, 2007) (Panelist Tyrus R. Atkinson, Jr., dissenting) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business 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 finds that Respondent’s use of the disputed domain name is evidence of its lack of rights or legitimate interests in the disputed domain name and failure to make a bona fide offering of goods or services or a legitimate non-commercial or fair use.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s famous mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, the disputed domain name resolves to a web page featuring advertisements of and links to Complainant’s competitors and presumably generates commercial benefit though click-through advertising fees. This is evidence of bad faith under Policy ¶¶ 4(b)(iii) and 4(b)(iv). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”); see also Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”). The Panel finds Respondent to be acting in bad faith pursuant to Policy ¶¶ 4(b)(iii) and/or 4(b)(iv).
Respondent is a serial cybersquatter and Respondent’s registration of the disputed domain name is part of a pattern of bad faith registration. Respondent has been the named respondent in 15 cases with the Forum, and 16 with the World Intellectual Property Organization where the panel has made findings adverse to Respondent (e.g., Wells Fargo & Company v. Isaac Goldstein, FA 1321448 (Forum June 9, 2010)). A showing of a pattern of bad faith registration can itself be evidence of bad faith per Policy ¶ 4(b)(ii). Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum November 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)). The Panel finds that Respondent’s history of adverse UDRP findings is evidence of its bad faith in this case pursuant to Policy ¶ 4(b)(ii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mybuick.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: January 23, 2017
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