General Motors LLC v. Domain Administrator / Fundacion Privacy Services LTD
Claim Number: FA2105001948937
Complainant is General Motors LLC (“Complainant”), represented by Jennifer M. Hetu of Honigman Miller Schwartz and Cohn LLP, Michigan, USA. Respondent is Domain Administrator / Fundacion Privacy Services LTD (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <gmrewards.com> and <gmcrewards.com>, registered with Media Elite Holdings Limited.
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 27, 2021; the Forum received payment on May 27, 2021.
On June 3, 2021, Media Elite Holdings Limited confirmed by e-mail to the Forum that the <gmrewards.com> and <gmcrewards.com> domain names are registered with Media Elite Holdings Limited and that Respondent is the current registrant of the names. Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited 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 4, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 24, 2021 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@gmrewards.com, postmaster@gmcrewards.com. Also on June 4, 2021, 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 June 28, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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
The Complainant is a manufacturer of cars and trucks. Complainant has rights in the GM and GMC trademarks based on registration of the trademarks with the United States Patent and Trademark Office (“USPTO”) (e.g., GM, Reg. No. 1,714,390, registered Sep. 8, 1992; GMC, Reg. No. 646,914, registered Jun. 11, 1957). Respondent’s <gmrewards.com> and <gmcrewards.com> domain names are confusingly similar to Complainant’s mark since they incorporate Complainant’s entire marks, adding only the generic term “rewards” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <gmrewards.com> and <gmcrewards.com> domain names as it is not commonly known by the disputed domain names. Additionally, Respondent does not use the disputed domain names for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use because Respondent uses the domains to host hyperlinks that redirect users to a login page on a third-party website and likely collects “click-through” fees.
Respondent registered and uses the <gmrewards.com> and <gmcrewards.com> domain names in bad faith because Respondent takes advantage of the confusingly similar domain names to profit by diverting and redirecting consumers to third-party commercial website, likely to collect “click-through” fees. Respondent’s websites may also be seen as inactive. Additionally, Respondent had constructive knowledge of Complainant’s rights in the GM and GMC trademarks based on the registration of the trademarks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner the following trademark registrations, registered with the United States Patent and Trademark Office (“USPTO”):
- No. 1,714,390 GM (logo), registered on September 8, 1992 for services in Intl Class 42
- No. 1,034,749 GM (word), registered on March 2, 1976 for goods in Intl Class 11
- No. 314,823 GM (word), registered for goods in Intl Class 7
- No. 314,825 GM (word), registered on July 10, 1934 for goods in Intl Class 12
- No. 314,824 GM (word), registered on July 10, 1934 for goods in Intl Class 12
- No. 861,602 GM (word), registered on December 10, 1968 for goods in Intl Class 12
- No. 283,227 GM (word), registered for goods in Intl Class 9
- No. 4,596,433 GM (fig), registered on September 2, 2014 for goods in Intl Class 9
- No. 1,685,062 GM (fig), registered on May 5, 1992 for goods in Intl Class 6
- No. 1,575,170 GM (fig), registered on January 2, 1990 for goods in Intl Class 28
- No. 1,476,220 GM (fig), registered on February 9, 1988 for services in Intl Class 37
- No. 1,474,088 GM (fig), registered on January 26, 1988 for goods in Intl Class 12
- No. 646,914 GMC (word), registered on June 11, 1957 for services in Intl Class 37
- No. 1,062,719 GMC (word), registered on April 5, 1977 for goods in Intl Class 12
- No. 1,337,811 GMC (word), registered on May 28, 1985 for goods in Intl Class 12
- No. 1,569,557 GMC (word), registered on December 5, 1989 for goods in Intl Class 12
- No. 2,459,750 GMC (word), registered on June 12, 2001 for goods in Intl Class 6
The disputed domain names <gmrewards.com> and <gmcrewards.com> were registered on August 24, 2004 and September 22, 2012
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”).
The Complainant claims rights in the GM and GMC trademarks through its registrations with the USPTO (e.g., GM, Reg. No. 1,714,390, registered Sep. 8, 1992; GMC, Reg. No. 646,914, registered Jun. 11, 1957). Registration of a trademark with a national trademark agency is sufficient to demonstrate rights in a trademark under Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”). Therefore, the Panel finds that Complainant has rights in the trademarks under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <gmrewards.com> and <gmcrewards.com> domain names are confusingly similar to Complainant’s GM and GMC trademarks because they incorporate Complainant’s entire trademarks, adding only the generic term “rewards” and the gTLD “.com.” Adding a generic term and a gTLD does not negate a finding of confusing similarity to a trademark. 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).); see also MGM Resorts International v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1901001827626 (Forum Mar. 11, 2019) (“Respondent’s <mgmrewards.com> domain name is confusingly similar to Complainant’s MGM mark because Respondent merely adds the descriptive term ‘rewards’ and the ‘.com’ gTLD to Complainant’s fully incorporated mark.”). Complainant contends also that the generic term “rewards” furthers the likelihood of confusion since Complainant itself uses the domain <MyGMRewards.com>. Therefore, the Panel finds that the disputed domain names are at least confusingly similar to Complainant’s trademarks under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first 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, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
The Complainant argues that Respondent does not have rights or legitimate interests in the <gmrewards.com> and <gmcrewards.com> domain names because Respondent is not commonly known by the disputed domain names. Under Policy ¶ 4(c)(ii), when no response is submitted and when the WHOIS information lists “privacy service” as the registrant, there is no basis to conclude that the respondent is commonly known by the disputed domain name. See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”); see also Google Inc. v. Domain Admin / Whois Privacy Corp., FA1502001605239 (Forum Mar. 22, 2015) (“WHOIS information for the at-issue domain name lists ‘Domain Admin / Whois Privacy Corp.’ as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <google-status.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii).”). Here, the WHOIS information identifies “Domain Administrator / Fundacion Privacy Services LTD” as the registrant for <gmrewards.com> and <gmcrewards.com> and no additional information suggests that Respondent is commonly known by the disputed domain names. Thus, the Panel finds that Respondent is not commonly known by the domain names under Policy ¶ 4(c)(ii).
Furthermore, Complainant argues that Respondent does not use the disputed domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii). Respondent does not make use of the domain names except to host hyperlinks that redirect users to a website that requests users to login. Respondent likely collects “click-through” fees for re-directing Internet users. Use of a disputed domain name to host unrelated hyperlinks for a respondent’s benefit does not amount to a bona fide offering of goods or services or legitimate noncommercial or fair use. See Bloomberg Finance L.P. v. Syed Hussain / Domain Management, FA1410001582912 (Forum Nov. 10, 2014) (concluding that the respondent’s use of the disputed domain name to host hyperlinks, unrelated to the complainant’s business, did not qualify as a bona fide offering of goods or services, or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii)); see also Ferring B.V. v. Shanshan Huang / Melissa Domain Name Services, FA1505001620342 (Forum July 1, 2015) (“Placing unrelated third party links for the benefit of a respondent indicates a lack of a bona fide offering of goods or services, and a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.”). Complainant provides screenshots showing that Respondent’s website features various links about reward programs. Thus, the Panel finds that Respondent is not using the domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Complainant argues that Respondent registered and uses the <gmrewards.com> and <gmcrewards.com> domain names in bad faith under Policy ¶ 4(b)(iv) because Respondent takes advantage of the confusingly similar domain names in order to profit by diverting and redirecting consumers to third-party commercial website, likely to collect “click-through” or “pay per click” fees. Capitalizing on the confusing similarity of the disputed domain names to benefit from the goodwill of complainant’s mark and hosting third-party hyperlinks to collect click-through fees can indeed be evidence of a bad faith attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See 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.”); see also Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(iv) where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). As already noted, Complainant has provided screenshots showing that Respondent’s website contains third-party hyperlinks for various rewards programs that lead to a website’s login page. Thus, the Panel finds bad faith under Policy ¶ 4(b)(iv).
Furthermore, Complainant alternatively argues that even if the resolving websites for the disputed domain names are inactive, that is still evidence of bad faith under Policy ¶ 4(a)(iii). Failure to make active use of a disputed domain name or resolve the domain to an active website is considered evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See CommScope, Inc. of North Carolina v. Zhuang Yan / WANGYONG, FA 1764026 (Forum Feb. 14, 2018) (“Respondent’s domain names do not have resolving websites. Using a domain name to resolve to an inactive website (or no website at all) indicates bad faith registration and use.”). The Panel agrees with Complainant and finds bad faith.
Furthermore, Complaint argues that Respondent registered the domain names in bad faith since Respondent had constructive knowledge of Complainant’s rights in the GM and GMC trademarks based on the registration of the trademarks. While constructive knowledge is insufficient for finding of bad faith, per Policy ¶ 4(a)(iii) actual knowledge of a complainant’s trademark rights is sufficient to establish bad faith and can be demonstrated by the prominent fame of the mark. 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.”). Complainant contends that its GM and GMC trademarks are strong trademarks and famous worldwide. Therefore, the Panel agrees that Respondent had actual knowledge of Complainant’s rights in the GM and GMC trademarks, and finds bad faith registration pursuant to Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gmrewards.com> and <gmcrewards.com> domain names be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: July 12, 2021
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