General Motors LLC v. Pleasant Street Auto Body and Repair
Claim Number: FA1910001866465
Complainant is GENERAL MOTORS LLC (“Complainant”), represented by Jennifer M. Hetu of Honigman Miller Schwartz and Cohn LLP, Michigan, USA. Respondent is William E. Johnson / Pleasant Street Auto Body and Repair (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <gmcollisionrepairnetwork.com>, <collisiongm.com>, <collisioncentergm.com>, <gmautobodyrepair.com>, <gmcertifiedrepairs.com>, <gmcertifiedrepair.com>, <gmcertifiedautobody.com>, <gmrepairnetwork.com>, <repairnetworkgm.com>, <gmautobodynetwork.com>, <gmautobodyrepairnetwork.com>, <gmcertifiedrepairprogram.com>, <gmrepairprogram.com>, <gmcertifiedprogram.com>, and <gmprojectfreedom.com>, registered with GoDaddy.com, 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 11, 2019; the Forum received payment on October 11, 2019.
On October 14, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <gmcollisionrepairnetwork.com>, <collisiongm.com>, <collisioncentergm.com>, <gmautobodyrepair.com>, <gmcertifiedrepairs.com>, <gmcertifiedrepair.com>, <gmcertifiedautobody.com>, <gmrepairnetwork.com>, <repairnetworkgm.com>, <gmautobodynetwork.com>, <gmautobodyrepairnetwork.com>, <gmcertifiedrepairprogram.com>, <gmrepairprogram.com>, <gmcertifiedprogram.com>, and <gmprojectfreedom.com> domain names 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 October 17, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 6, 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@gmcollisionrepairnetwork.com, postmaster@collisiongm.com, postmaster@collisioncentergm.com, postmaster@gmautobodyrepair.com, postmaster@gmcertifiedrepairs.com, postmaster@gmcertifiedrepair.com, postmaster@gmcertifiedautobody.com, postmaster@gmrepairnetwork.com, postmaster@repairnetworkgm.com, postmaster@gmautobodynetwork.com, postmaster@gmautobodyrepairnetwork.com, postmaster@gmcertifiedrepairprogram.com, postmaster@gmrepairprogram.com, postmaster@gmcertifiedprogram.com, postmaster@gmprojectfreedom.com. Also on October 17, 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 11, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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 names be transferred from Respondent to Complainant.
A. Complainant
i) Complainant is a well-known manufacturer of cars and trucks and is one of the world’s largest automakers. Complainant has rights in the GM mark through its trademark registrations around the world, including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,714,390, registered Sep. 8, 1992). Respondent’s <gmcollisionrepairnetwork.com>, <collisiongm.com>, <collisioncentergm.com>, <gmautobodyrepair.com>, <gmcertifiedrepairs.com>, <gmcertifiedrepair.com>, <gmcertifiedautobody.com>, <gmrepairnetwork.com>, <repairnetworkgm.com>, <gmautobodynetwork.com>, <gmautobodyrepairnetwork.com>, <gmcertifiedrepairprogram.com>, <gmrepairprogram.com>, <gmcertifiedprogram.com>, and <gmprojectfreedom.com> domain names are confusingly similar to Complainant’s GM mark as each name incorporates the mark along with a generic and/or descriptive term(s) (“collision,” “repair,” “work,” “center,” “autobody,” “certified,” “repairs,” “network,” “program,” “project,” and/or “freedom”), along with a “.com” generic top-level domain (“gTLD”).
ii) Respondent has no rights or legitimate interests in the disputed domain names. Respondent fails to use the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent’s disputed domain names resolve to inactive websites.
iii) Respondent registered and uses the disputed domain names in bad faith. Respondent attempts to create a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of Respondent’s websites. Furthermore, Respondent fails to actively use the disputed domain names. Finally, Respondent had actual or constructive knowledge of Complainant’s rights in the GM mark prior to registering the disputed domain names.
B. Respondent
Respondent did not submit a Response.
1. The disputed domain names were all registered on March 29, 2018.
2. Complainant has established rights in the GM mark through its trademark registrations around the world, including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,714,390, registered Sep. 8, 1992).
3. Complainant’s GM mark is considered as being a well-known and reputable trademark prior to the registration of the disputed domain names.
4. All of the disputed domain names remain inactive.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also 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 claims rights in the GM mark based upon registration of the mark with the USPTO (e.g., Reg. No. 1,714,390, registered Sep. 8, 1992). See Compl. Ex. K. Registration of a mark with the USPTO is sufficient to establish rights in that mark. 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). The Panel therefore holds that Complainant’s registration of the GM mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues Respondent’s <gmcollisionrepairnetwork.com>, <collisiongm.com>, <collisioncentergm.com>, <gmautobodyrepair.com>, <gmcertifiedrepairs.com>, <gmcertifiedrepair.com>, <gmcertifiedautobody.com>, <gmrepairnetwork.com>, <repairnetworkgm.com>, <gmautobodynetwork.com>, <gmautobodyrepairnetwork.com>, <gmcertifiedrepairprogram.com>, <gmrepairprogram.com>, <gmcertifiedprogram.com>, and <gmprojectfreedom.com> domain names are confusingly similar to the GM mark, as each name incorporates the mark along with a generic and/or descriptive term(s) (“collision,” “repair,” “work,” “center,” “autobody,” “certified,” “repairs,” “network,” “program,” “project,” and/or “freedom”), along with a “.com” gTLD. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Complainant further contends that the term “Project Freedom” is in reference to Complainant’s “General Motors Collision Repair Network,” which includes an initiative called “Project Freedom” that relates to a certified collision repair shop and associated estimates and payments. See Compl. Exs. L and M. The Panel therefore determines the disputed domain names are confusingly similar to the GM mark per Policy ¶ 4(a)(i).
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 that Respondent has no rights or legitimate interests in the disputed domain names, as Respondent is not commonly known by the disputed domain names, nor has Complainant authorized Respondent to use the GM mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record identifies the registrant of the at-issue domain name as “Pleasant Street Auto Body and Repair,” and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. See Compl. Exs. A1 and A2. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain names.
Complainant also asserts Respondent’s inactive holding of the disputed domain names indicates it does not have rights or legitimate interests in the names. Inactive holding of a domain name does not demonstrate rights or legitimate interests in the name per Policy ¶¶ 4(c)(i) or (iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). Complainant contends Respondent’s domain names do not resolve to an active webpage. See Compl. Ex. N. The Panel therefore finds Respondent does not have rights or legitimate interests in the domain name per Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant also contends Respondent’s intentional use of the disputed domain names to create a likelihood of confusion with Complainant’s mark in order to attract Internet users for commercial gain is evidence of Respondent’s bad faith. Use of a confusingly similar domain name for commercial purposes unrelated to a complainant’s business can indicate bad faith registration and use per Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”). The Panel agrees with Complainant.
Complainant asserts that Respondent’s failure to use the disputed domain names is evidence of its bad faith. The Panel recalls Complainant’s contention that the disputed domain names resolve to inactive websites, all of which refer to Complainant’s “Project Freedom” repair program. See Compl. Ex. N. Inactive holding of a domain name can be evidence of bad faith under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
The Panel agrees that the passive holding of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent’s behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent’s passive holding amounts to acting in bad faith.)
The particular circumstances of this case that the Panel has considered are:
i) Complainant is a well-known manufacturer of cars and trucks, and is one of the world’s largest automakers. Complainant’s vehicles are sold in the United States and in more than 120 countries around the world. Complainant first began selling vehicles in the United States under the GMC mark at least as early as 1911, and under the GM brand and GM Mark at least as early as 1933. In 2016, Complainant sold 10 million vehicles worldwide, and over 3 million in the United States. Due to widespread, continuous, and highly publicized use throughout the United States and the world, the GM mark has become famous and was famous before Respondent registered the disputed domain names. The popularity of the GM brand and the resulting consumer recognition is further evidenced by the fact that there is a strong market for licensed goods bearing the GM mark. GM’s vehicle lineups have received numerous awards over the years. As such, the Complainant’s mark ‘GM’ is considered as being a well-known and reputable trademark, and
ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain names.
Taking into account all of the above, the Panel concludes that Respondent’s passive holding of the disputed domain names constitutes bad faith under Policy, paragraph 4(a)(iii) and that Respondent is using the disputed domain names in bad faith.
Complainant also contends that in light of the fame and notoriety of Complainant's GM mark, it is inconceivable that Respondent could have registered the disputed domain names without actual or constructive knowledge of Complainant's rights in the mark. The Panel observes that any arguments of bad faith based on constructive notice are irrelevant, however, because 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.").
Complainant provides Respondent’s correspondence with Complainant regarding its infringement of the GM mark. See Compl. Exs. O-T. The Panel infers due to the fame and notoriety of Complainant's mark and Respondent’s correspondence with Complainant regarding its infringement of the GM mark that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain names and thus registered the names in bad faith. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gmcollisionrepairnetwork.com>, <collisiongm.com>, <collisioncentergm.com>, <gmautobodyrepair.com>, <gmcertifiedrepairs.com>, <gmcertifiedrepair.com>, <gmcertifiedautobody.com>, <gmrepairnetwork.com>, <repairnetworkgm.com>, <gmautobodynetwork.com>, <gmautobodyrepairnetwork.com>, <gmcertifiedrepairprogram.com>, <gmrepairprogram.com>, <gmcertifiedprogram.com>, and <gmprojectfreedom.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: November 16, 2019
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