General Motors LLC v. Paul Vander Sluis / Discount Factory Warranty
Claim Number: FA1907001855050
Complainant is General Motors LLC (“Complainant”), represented by Jennifer M. Hetu of Honigman Miller Schwartz and Cohn LLP, Michigan, USA. Respondent is Paul Vander Sluis / Discount Factory Warranty (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names here at issue are: <cadillacprotection.com>, <gmcprotection.com> and <buickprotection.com>, each registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 31, 2019; the Forum received payment on July 31, 2019.
On August 1, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the domain names <cadillacprotection.com>, <buickprotection.com> and <gmcprotection.com>, are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 2, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 26, 2019 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 the attention of postmaster@gmcprotection.com, postmaster@buickprotection.com, postmaster@cadillacprotection.com. Also, on August 2, 2019, 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 29, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, operating under the marks GMC, BUICK and CADILLAC, among others, is one of the world’s largest automakers.
Complainant holds registrations for the GMC, BUICK and CADILLAC marks, which are on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 1,569,557, registered December 5, 1989, renewed as of February 18, 2009 (GMC trademark), Registry No. 2,625,102, registered September 24, 2002, renewed as of September 26, 2012 (BUICK trademark) and Registry No. 1,660,237, registered October 8, 1991, renewed as of November 4, 2011 (CADILLAC service mark).
.
Respondent registered the disputed domain names, <cadillacprotection.com>, <buickprotection.com> and <gmcprotection.com> on May 16, 2017.
Each of the domain names is confusingly similar to one of Complainant’s GMC, BUICK or CADILLAC marks.
Respondent is not licensed or otherwise permitted by Complainant to use any of its GMC, BUICK and CADILLAC marks.
Respondent has not been commonly known by any of the domain names.
Respondent is not using the domain names to make a bona fide offering of goods or services or in a legitimate non-commercial or fair use.
Rather, Respondent fails to make any active use of the domain names.
Respondent has no rights to or legitimate interests in any of the domain names.
Respondent knew of Complainant’s rights in its GMC, BUICK and CADILLAC marks prior to registering the domain names.
Respondent registered and uses the domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are 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 names; and
(3) the domain names have been registered and are being used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [...] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the GMC, BUICK and CADILLAC marks sufficient for purposes of Policy ¶4(a)(i) by reason of its registration of the marks with a national trademark authority, the USPTO. See, for example, Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum August 4, 2015) (finding that a UDRP Complainant’s USPTO registrations for a mark sufficiently demonstrates its rights in that mark under Policy ¶4(a)(i)).
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s domain names, <cadillacprotection.com>, <gmcprotection.com> and <buickprotection.com>, are confusingly similar to Complainant’s CADILLAC, GMC and BUICK marks, respectively. Each of the domain names contains one of Complainant’s marks in its entirety, with only the addition of the generic term “protection,” which can be taken to relate to an aspect of Complainant’s business, plus the generic Top Level Domain (“gTLD”) “.com.” These alterations of the marks, made in forming the domain names, do not save them from the realm of confusing similarity under the standards of the Policy. See, for example, Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum January 21, 2016) (finding that confusing similarity existed where a disputed domain name contained a UDRP Complainant’s entire mark and differed only by the addition of a generic phrase and top-level domain, the differences between the domain name and its contained trademark being insufficient to distinguish one from the other for purposes of the Policy).
See also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks both rights to and legitimate interests in the challenged domain names, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See, for example, Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c) (i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <gmcprotection.com>, <cadillacprotection.com> and <buickprotection.com> domain names, and that Complainant has not licensed or otherwise authorized Respondent to use the GMC, BUICK and CADILLAC marks. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Paul Vander Sluis / Discount Factory Warranty,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by any of the disputed domain names so as to have acquired rights to or legitimate interests in them within the ambit of Policy ¶4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (dinding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent only as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner). See also Navistar International Corporation v. N Rahmany, FA 620789 (Forum June 8, 2015) (finding, under Policy ¶4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent has not made any active use of the <cadillacprotection.com>, <gmcprotection.com> and <buickprotection.com> domain names in the more than two years since they were registered in May of 2017. In the circumstances described in the Complaint, inactive use of the domain names for such an extended period does not evidence either a bona fide offering of goods or services by means of the domain names under Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use of them under Policy ¶ 4(c)(iii), so as to show that Respondent has acquired rights to or legitimate interests in the domain names as set out in those provisions of the Policy. See, for example, U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Forum April 9, 2007):
Respondent’s failure to associate content with its disputed domain name evinces a lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).
See also Michelin North America, Inc. v. Energie Media Group, FA 451882 (Forum August 7, 2012), finding that inactive use, or “passive holding,” of a disputed domain name by a UDRP respondent “permits the inference that [respondent] lacks rights and legitimate interests in the domain names.”
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶4(a)(ii).
We are persuaded by the evidence that Respondent’s failure, for a period exceeding two years, to make any active use of the <gmcprotection.com>, <buickprotection.com> and <cadillacprotection.com> domain names demonstrates that Respondent has both registered and now uses the domain names in bad faith. See, for example, the seminal case Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000), where, as here, the domain name in question was not in use from the time of its registration to the time of decision and the respondent had offered no evidence showing that a functioning website was being developed. In those circumstances, the presiding panelist there observed that:
[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.
See also Marsh Supermarkets Company, LLC, v. Choi Sungyeon, FA1532854 (Forum February 25, 2014):
Therefore, the Panel finds that Respondent registered and is using the … domain name in bad faith pursuant to Policy¶4(a)(iii) because Respondent has failed to make an active use of the disputed domain name.
We are likewise convinced by the evidence that Respondent knew both of Complainant and its rights in the GMC, BUICK and CADILLAC marks when Respondent registered the <gmcprotection.com>, <buickprotection.com> and <cadillacprotection.com> domain names. This too shows Respondent’s bad faith in registering them. See Google Inc. v. Ahmed Humood, FA1591796 (Forum January 7, 2015):
This Panel makes that inference; Respondent had actual knowledge of Complainant’s mark at the time of domain name registration [and therefore evidenced bad faith in registering it].
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the domain names <gmcprotection.com>, <buickprotection.com> and <cadillacprotection.com> be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 30, 2019
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