DECISION
General Motors LLC v. Techtwo Cards
Claim Number: FA1910001866303
Complainant is General Motors LLC (“Complainant”), represented by Jennifer M. Hetu of Honigman Miller Schwartz and Cohn LLP, Michigan, USA. Respondent is Techtwo Cards (“Respondent”), Belarus.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tech2cards.com>, registered with 1&1 IONOS SE.
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 October 11, 2019; the Forum received payment on October 11, 2019.
On October 11, 2019, 1&1 IONOS SE confirmed by e-mail to the Forum that the <tech2cards.com> domain name is registered with 1&1 IONOS SE and that Respondent is the current registrant of the name. 1&1 IONOS SE has verified that Respondent is bound by the 1&1 IONOS SE 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 October 15, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 4, 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 postmaster@tech2cards.com. Also, on October 15, 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 November 7, 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 is one of the world’s largest automakers.
Complainant holds a registration for the TECH 2 trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 4,572,442, registered on July 22, 2014.
That trademark registration relates to, among other things, the use of the mark in connection with: “Motor vehicle diagnostic computers and parts thereof including memory cards;….”
Respondent registered the domain name <tech2cards.com> on or about January 4, 2017.
The domain name is confusingly similar to Complainant’s TECH 2 mark.
Respondent is not licensed or otherwise permitted to use Complainant’s TECH 2 mark.
Respondent has not been commonly known by the domain name.
Respondent is not using the domain name to make a bona fide offering of goods or services or in a legitimate non-commercial or fair use.
Rather, Respondent uses the domain name to disrupt Complainant’s business by resolving to a web page at which it attempts to sell, for its profit, counterfeit products mimicking those of Complainant.
Respondent does not have rights to or legitimate interests in the domain name.
Respondent knew of Complainant’s rights in the TECH 2 mark prior to registering the domain name.
Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is 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:
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 TECH 2 trademark sufficient for purposes of Policy ¶4(a)(i) by reason of its registration of the mark 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 registration for a mark sufficiently demonstrated its rights in that mark under Policy ¶4(a)(i)).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Belarus). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <tech2cards.com> domain name is confusingly similar to Complainant’s TECH 2 trademark. The domain name incorporates the mark in its entirety, with only deletion of the space between its terms, and the addition of the generic term “cards,” which relates to an aspect of Complainant’s business, plus the generic Top Level Domain “gTLD” “.com.” These alterations of the mark, made in forming the domain name, do not save it 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) (determining that confusing similarity existed where a challenged 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 the mark being insufficient to distinguish one from the other for purposes of the Policy).
See also Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described a UDRP complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish a respondent’s domain name from that complainant’s mark under Policy ¶ 4(a)(i)).
Further see Trip Network Inc. v. Alviera, FA 914943 (Forum March 27, 2007) (concluding that affixing a gTLD to the mark of another in creating a domain name was irrelevant to a Policy ¶ 4(a)(i) analysis). This is because every domain name requires a gTLD or other TLD.
Finally, Respondent’s deletion of the space between the terms of Complainant’s in constructing the domain name is of no consequence to our analysis because domain name syntax does not permit the use of blank spaces.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the <tech2cards.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See 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 <tech2cards.com> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the TECH 2 mark. Moreover, although the pertinent WHOIS information identifies the registrant of the domain name as “Techtwo Cards,” there is nothing in the record suggesting that Respondent has been commonly known by the phonetically similar domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a UDRP respondent was not commonly known by a disputed domain name and noting that nothing in the record showed that that respondent was authorized to use a complainant’s mark). 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 use its mark in a domain name).
We also observe that Complainant asserts, without objection from Respondent, that Respondent uses the <tech2cards.com> domain name to disrupt Complainant’s business by resolving to a web page at which it attempts to sell, for its profit, counterfeit products mimicking those of Complainant. This employment is neither a bona fide offering of goods or services by means of the domain name under Policy ¶4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum August 11, 2017):
Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant’s … brand and displays counterfeit versions of Complainant’s products for purchase in an attempt to pass itself off as Complainant… [therefore], the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name [within the provisions of Policy¶4(c)(i)-(iii)].
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent uses the contested <tech2cards.com> domain name, which we have found to be confusingly similar to Complainant’s TECH 2 mark, to profit from the confusion thus caused among Internet users as to the possibility of Complainant’s association with it. Under Policy ¶ 4(b)(iv), this stands as proof of Respondent’s bad faith in registering and using the domain name. See, for example, ZIH Corp. v. ou yang lin q, FA1761403 (Forum December 29, 2017) (finding bad faith registration and use of a domain name under Policy ¶4(b)(iv) where a respondent used the domain name to disrupt a UDRP complainant’s business by diverting Internet users from that complainant’s website to another website at which it offered competing printer products).
We are also convinced by the evidence that Respondent knew of Complainant, one of the world’s largest automakers, and of its rights in the TECH 2 mark when it registered the <tech2cards.com> domain name. This further demonstrates Respondent’s bad faith in registering it. See Google Inc. v. Ahmed Humood, FA1591796 (Forum January 7, 2015):
This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s … mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to and in competition with Complainant.
See also Univision Comm. Inc. v. Norte, FA 1000079 (Forum August 16, 2007) (rejecting a respondent's contention that it did not register a disputed domain name in bad faith where a panel found that that respondent knew of a UDRP complainant's rights in a mark when registering a confusingly similar domain name).
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 <tech2cards.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 21, 2019
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