DECISION

 

GENERAL MOTORS LLC v. Alonso Toscano

Claim Number: FA1807001799246

 

PARTIES

Complainant is GENERAL MOTORS LLC (“Complainant”), represented by Jennifer M. Hetu of Honigman Miller Schwartz and Cohn LLP, Michigan, USA.  Respondent is Alonso Toscano (“Respondent”), Mexico.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <vehiculosgm.com>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on July 30, 2018; the Forum received payment on July 30, 2018.

 

On August 1, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <vehiculosgm.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 August 7, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 27, 2018 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@vehiculosgm.com.  Also on August 7, 2018, 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 August 30, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

1.    Complainant, General Motors LLC, is a well-known manufacturer of cars and trucks and is one of the world’s largest automakers. Complainant has been selling vehicles under the GM mark since as early as 1933. Complainant has rights in the mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 283,227 registered May 19, 1931). See Compl. Ex. K. Respondent’s <vehiculosgm.com> domain name is confusingly similar to Complainant’s mark because Respondent includes the entire GM mark in the disputed domain name plus the generic Spanish term for vehicles “vehiculos” along with the “.com” generic top-level domain (“gTLD”).

2.    Respondent lacks rights and legitimate interests in the <vehiculosgm.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized to use Complainant’s mark in any way. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to pass off as Complainant in an attempt to defraud customers by selling fake vehicles. Furthermore, Respondent uses the disputed domain name to divert internet traffic away from Complainant’s webpage.

3.    Respondent registered and uses the <vehiculosgm.com> domain name in bad faith. Specifically, Respondent attempts to disrupt Complainant’s business by passing off as Complainant by offering competing goods and services. Finally, Respondent had actual/constructive knowledge of Complainant’s rights in the GM mark due the fame of the mark and because Respondent’s use of the disputed domain name is so transparently opportunistic.

 

B.   Respondent

1.    Respondent failed to submit a response in this Proceeding.

 

FINDINGS

1.    Respondent’s <vehiculosgm.com> domain name is confusingly similar to Complainant’s GM mark.

2.    Respondent does not have any rights or legitimate interests in the

<vehiculosgm.com> domain name.

3.    Respondent registered or used the <vehiculosgm.com> domain name in bad faith.

 

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.

 

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.”).

 

Identical and/or Confusingly Similar

Complainant asserts rights in the GM mark based upon its registration of the mark with the USPTO. Registration of a mark with the USPTO may be sufficient to establish Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). Complainant provides a copy of its registration of the mark with the USPTO (e.g., Reg. No. 283,227 registered May 19, 1931). See Compl. Ex. K. Therefore, the Panel finds that the Complainant has rights in the GM mark when conducting its Policy ¶ 4(a)(i) analysis.

 

Next, Complainant argues that Respondent’s <vehiculosgm.com> domain name is confusingly similar to Complainant’s mark because Respondent includes the entire mark in the disputed domain name plus a generic term and a gTLD. The addition of a generic term and a gTLD to a mark may not be sufficient to distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). Here, Respondent includes the entire GM mark in the disputed domain name plus the generic Spanish term for vehicles “vehiculos” along with the “.com” gTLD. Accordingly, under a Policy ¶ 4(a)(i) analysis, the Panel concludes that Respondent’s disputed domain name is confusingly similar to Complainant’s mark.

 

Rights or Legitimate Interests

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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).

 

Complainant argues Respondent lacks rights and legitimate interests in the disputed domain name because Respondent is not commonly known by the disputed domain name and is not authorized by Complainant to use the GM mark. Where a response is lacking, WHOIS information may be used to identify the respondent. 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). Additionally, lack of authorization from complainant to use its mark may be evidence that a respondent is not commonly known by a disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). Complainant provides the relevant WHOIS information which identifies the registrant of the disputed domain name as “Alonso Toscano,” and nothing of the record indicates that Respondent was authorized by Complainant to use the GM mark. See Compl. Ex. A. Therefore, the Panel finds that the Respondent lacks rights and legitimate interests in the disputed domain name when conducting its Policy ¶ 4(c)(ii) analysis.

 

Next, Complainant contends Respondent fails to use the <vehiculosgm.com> domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Specifically, Complainant alleges Respondent attempts to pass off as the Complainant in order to defraud customers. Use of a domain name to pass off as complainant for commercial benefit may not be considered a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business). Complainant provides screenshots of the webpage associated with the disputed domain name which show Respondent replicating Complainant’s GM mark as well as other auto-related marks owned by Complainant. See Compl. Ex. M. Additionally, Respondent includes a fake phone number on its resolving webpage, which upon calling, internet users are asked to deposit money into a false GM bank account. Id. Therefore, under a Policy ¶¶ 4(c)(i) and (iii) analysis, the Panel concludes the Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use.

 

Furthermore, Complainant asserts Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use as, specifically, Respondent offers goods and services that compete directly with those offered by Complainant. Use of a domain name to offer goods and services that compete with those offered by complainant may not be considered a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant provides screenshots of the webpage associated with the disputed domain name which show Respondent offered automobile related goods and services using Complainant’s marks. See Compl. Ex. M. Accordingly, when conducting a Policy ¶¶ 4(c)(i) and (iii) analysis, the Panel finds the Respondent uses the disputed domain name to compete with Complainant’s goods and services.

 

Registration and Use in Bad Faith

Complainant argues Respondent registered and uses the <vehiculosgm.com> domain name in bad faith. Specifically, Respondent attempts to disrupt Complainant’s business by passing off as the Complainant for commercial gain. Use of a domain name to disrupt complainant’s business by passing off as them may be evidence of bad faith per Policy ¶¶ 4(b)(iii) and (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum Jul. 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business). Complainant provides screenshots of the webpage associated with the disputed domain name which show Respondent replicating Complainant’s GM mark as well as other auto-related marks owned by Complainant. See Compl. Ex. M. Accordingly, while conducting a Policy ¶¶ 4(b)(iii) and (iv) analysis, the Panel concludes that the Respondent uses the disputed domain name to pass off as Complainant and disrupt their business.

 

Next, Complainant alleges that Respondent registered and uses the disputed domain name in bad faith. Specifically, Respondent had actual and/or constructive knowledge of Complainant’s rights in the mark prior to registration of the disputed domain name. However, the Panel disregards arguments of bad faith based on constructive notice as UDRP case precedent declines to find bad faith as a result of constructive knowledge. 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."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and find that actual knowledge does adequately evince bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant contends that due to the famous and distinctive nature of the GM mark, Respondent had actual knowledge of Complainant’s rights in the mark prior to registration of the disputed domain names. To support this allegation, Complainant submits multiple awards given to it under the GM mark. See Compl. Exs. F and G. Accordingly, the Panel finds while conducting a Policy ¶ (a)(iii) analysis that Respondent had actual and/or constructive knowledge prior to registration of the disputed domain name.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <vehiculosgm.com> domain name be TRANSFERRED from Respondent to Complainant.

 

John J. Upchurch, Panelist

Dated:  September 11, 2018