General Motors LLC v Domain Admin / HK+Domains
Claim Number: FA1406001567266
Complainant is General Motors LLC (“Complainant”), represented by Anessa Owen Kramer of Honigman Miller Schwartz and Cohn LLP, Michigan, USA. Respondent is Domain Admin / HK+Domains (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chevroletmalibu.com>, registered with Moniker Online Services LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 27, 2014; the National Arbitration Forum received payment on June 27, 2014.
On June 27, 2014, Moniker Online Services LLC confirmed by e-mail to the National Arbitration Forum that the <chevroletmalibu.com> domain name is registered with Moniker Online Services LLC and that Respondent is the current registrant of the name. Moniker Online Services LLC has verified that Respondent is bound by the Moniker Online Services 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 June 30, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 21, 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@chevroletmalibu.com. Also on June 30, 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 July 24, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant is a well-known manufacturer of cars and trucks, and is one of the world’s largest automakers. The CHEVROLET MALIBU vehicle is a mid-sized car produced by Complainant from 1964 to 1983 and from 1997 until the present day. Complainant sold over 200,000 MALIBU vehicles in 2013 in the United States alone.
The CHEVROLET and MALIBU trademarks symbolize the tremendous goodwill associated with Complainant and Complainant’s goods and services. Due to widespread, continuous, and highly publicized use throughout the United States and the world, the CHEVROLET and MALIBU trademarks have become famous and were famous before Respondent registered the Domain Name. Complainant owns trademark registrations with the United States Patent and Trademark Office (USPTO) for the trademark CHEVROLET and the trademark MALIBU, among others. Complainant’s rights in these trademarks pre-date Respondent’s registration of the at-issue domain name.
The domain name incorporates Complainant’s CHEVROLET mark and MALIBU mark in its entirety and the generic top-level domain (“gTLD”) “.com.” It is well established that a domain name consisting of two combined trademarks is confusingly similar to those marks.
Given the uniqueness and fame of the CHEVROLET and MALIBU marks, there can be no doubt but that Respondent registered the domain name to trade upon Complainant’s goodwill and to attract and divert Complainant’s online customers for profit.
The infringing domain name leads to a parked website with links relating to Complainant, such as “Chevrolet Malibu,” “Malibu Pictures,” “Chevy Malibu,” and “Used Chevrolet Malibu.” Beneath that, there are also links to the commercial websites for competitive products, such as “New Toyota for Sale,” “Audi for Sale Used.” The website contains a banner that states “This domain may be for sale, for more information click here.” Respondent likely collects click-through or pay-per-click profits by directing users to the linked commercial websites. On information and belief, Respondent does not directly sell any of the products it features on the website.
In light of the fame of the CHEVROLET and MALIBU marks, and the fact that there is no other meaning for these terms when they are combined other than Complainant’s products, Respondent’s use of the domain name and referenced website was intentionally designed to cause a likelihood of confusion with Complainant and its services and to divert consumers away from Complainant’s legitimate websites. Moreover, because Complainant’s marks are federally registered and well-known and because Respondent’s use is so clearly opportunistic, Respondent’s use and registration is in bad faith.
Respondent’s misappropriation of the domain name has injured and will continue to irreparably injure the reputation and hard-earned goodwill of Complainant and its CHEVROLET and MALIBU trademarks.
Respondent is not using, has not used, and/or has not demonstrated an intent to use the domain name in connection with a bona fide offering of goods or services. Respondent is not now and never has been commonly known by the Domain Name. Respondent is not making legitimate noncommercial or fair use of the Domain Name, without intending to mislead and divert consumers or to dilute the CHEVROLET and MALIBU marks for commercial gain. The domain name is used to address a website which merely provides links to third-party websites.
Respondent uses the domain name in connection with a referenced website, which does not sell any legitimate products or services. Respondent is not known by the names CHEVROLET or MALIBU, and is not known to deal in Complainant’s products. Respondent also has an offer to sell the domain name on the Infringing Website. Such use does not amount to a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii).
The term CHEVROLET has no meaning other than as Complainant’s CHEVROLET trademark, especially when coupled with the MALIBU mark. Nor does the combination of the term CHEVROLET with the MALIBU mark create any meaning other than an association with Complainant. Respondent uses the domain name to divert internet users to its website, and perhaps derive click-through payments or entice Complainant or a third-party to purchase the domain name. Respondent’s use of the domain name is likely to cause confusion with and dilution of Complainant’s CHEVROLET and MALIBU trademarks.
Respondent’s registration and use of the domain name meets the bad faith element set forth in Section 4(b)(i) and (iv) of the UDRP. Respondent has no legitimate interest in the domain name and because it is clearly confusingly similar to the CHEVROLET trademark, the MALIBU trademark, and the General Motors Domain Names, there can be no explanation other than that Respondent is attempting to highjack the domain name for financial gain or intentionally attracting users to the Infringing Website for commercial gain by creating a likelihood of confusion with the CHEVROLET and MALIBU trademarks and General Motors Domain Names.
Respondent is a cybersquatter as Respondent’s email address is associated with multiple UDRP decisions adverse to such address.
Because of the fame of the CHEVROLET trademark and the MALIBU trademark, Respondent clearly had prior knowledge of Complainant’s rights when it registered the Domain Name.
Respondent had constructive knowledge of Complainant’s trademarks because the CHEVROLET trademark and the MALIBU trademark are well-known and federally registered, and because Respondent’s use is so transparently opportunistic.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns USPTO trademark registrations for the CHEVROLET and MALIBU marks.
Respondent registered the at-issue domain name after Complainant acquired rights in CHEVROLET and in MALIBU.
Respondent is not authorized to use Complainant’s mark in any capacity.
The <chevroletmalibu.com> domain name addresses a website displaying links relating to Complainant, such as “Chevrolet Malibu,” “Malibu Pictures,” “Chevy Malibu,” and “Used Chevrolet Malibu.” Links to the commercial websites for competitive products, such as “New Toyota for Sale,” “Audi for Sale Used” may also be found on the website. The website contains a banner that states “This domain may be for sale, for more information click here.”
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of USPTO trademark registrations for the CHEVROLET and MALIBU trademarks demonstrates its rights in such marks for the purposes of Policy ¶4(a)(i). Complainant’s rights exist notwithstanding that Respondent may operate outside the jurisdiction of the domain name’s registrar. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also, Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Respondent’s <chevroletmalibu.com> domain name combines Complainant’s CHEVROLET and MALIBU trademarks in their entirety and then appends the top-level domain name “.com” thereto. Respondent’s juxtaposition of Complainant’s trademarks in the at-issue domain name does not differentiate the domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where the domain name featured Complainant’s POKEMON and PIKACHU marks in combined form, i.e., pokemonpikachu.com). Nor does the addition of the necessary top-level domain name discern the domain name from Complainant’s marks. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“[T]he addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Therefore the Panel concludes that Respondent’s <chevroletmalibu.com> domain name is confusingly similar to Complainant’s CHEVROLET and MALIBU marks.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
WHOIS information for the at-issue domain name lists “Domain Admin / HK+Domains” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <chevroletmalibu.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to usTLD Policy ¶ 4(c)(iii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) [the UDRP section equivalent to usTLD Policy 4(c)(iii)] does not apply).
Respondent uses the at-issue domain name to sponsor a website with links relating to Complainant, such as “Chevrolet Malibu,” “Malibu Pictures,” “Chevy Malibu,” and “Used Chevrolet Malibu.” There are also links to commercial websites for competitive products, such as “New Toyota for Sale,” “Audi for Sale Used.” Respondent likely collects pay-per-click revenue via these links. Such use of the confusingly similar at-issue domain name is neither a bona fide offering of goods and services pursuant to Policy ¶4(c)(i), nor a legitimate or fair use under Policy ¶4(c)(iii). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007)( “The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”)
Given the forgoing, Complainant satisfies its initial burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
As mentioned above, the website addressed by the confusingly similar at-issue domain name displays links relating to Complainant, as well as links to Complainant’s competition. It is likely that these links are intended to generate pay-per-click revenue for Respondent. Therefore, it is clear that Respondent registered and uses the domain name to capitalize on the goodwill associated with Complainant’s well-known trademarks. Using the domain name in this manner demonstrates Complainant’s bad faith pursuant to Policy ¶4(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).”).
Next, given two of Complainant’s famous trademarks reside within the at-issue domain name it strains the imagination to credibly propose how Respondent might use the domain name in any conceivable manner without treading on Complainant’s trademark rights. Respondent’s opportunistic bad faith in registering and using the <chevroletmalibu.com> domain name is thus unmistakably indicated. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”); see also, Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).
Moreover, Respondent’s use of the at-issue domain name is surely disruptive to Complainant’s business and thus further demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii). The Panel also notes that statement on Respondent’s website that the domain name may be for sale is also telling regarding bad faith in light of Policy ¶4(b)(i).
Significantly, Respondent had knowledge of Complainant’s trademarks prior to registering the <chevroletmalibu.com> domain name. The Panel reaches this conclusion in light of Respondent’s combining two of Complainant’s well-known marks in the at-issue domain name and its use of the domain name to address a website whose link content concerns the field of commerce generally associated with Complainant’s trademarks. Respondent’s prior knowledge of Complainant’s trademark demonstrates Respondent’s bad faith registration and use of the domain name under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. 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); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name").
Finally, Respondent’s bad faith registration and use of the at-issue domain name is not surprising as Respondent appears to have been subject to multiple prior adverse UDRP decisions. These adverse decisions collectively suggest Respondent’s bad faith in the instant case under 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 <chevroletmalibu.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 28, 2014
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