General Motors LLC v. zhi yong zhang / zhang zhi yong
Claim Number: FA2106001951558
Complainant is General Motors LLC (“Complainant”), represented by Jennifer M. Hetu of Honigman Miller Schwartz and Cohn LLP, Michigan, USA. Respondent is zhi yong zhang / zhang zhi yong (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gmrewardscard.com>, registered with DropCatch.com 648 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 17, 2021; the Forum received payment on June 17, 2021.
On June 18, 2021, DropCatch.com 648 LLC confirmed by e-mail to the Forum that the <gmrewardscard.com> domain name is registered with DropCatch.com 648 LLC and that Respondent is the current registrant of the name. DropCatch.com 648 LLC has verified that Respondent is bound by the DropCatch.com 648 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 21, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 12, 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@gmrewardscard.com. Also on June 21, 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 July 14, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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 name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant, General Motors LLC, manufactures and sells automobiles around the world. Complainant has rights in the GM mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. 1,714,390, registered Sep. 08, 1992).
2. Respondent’s <gmrewardscard.com>[i] domain name is confusingly similar to Complainant’s GM mark, only differing by the addition of the generic terms “rewards” and “card” along with adding the “.com” generic top-level domain (“gTLD”).
3. Respondent lacks rights and legitimate interests in the <gmrewardscard.com> domain name as it is not commonly known by the domain name and is neither an authorized user or licensee of the GM mark.
4. Respondent also fails to use the domain name for any bona fide offer of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent uses the domain name to host a parked website containing content unrelated to Complainant’s business.
5. Respondent registered and uses the <gmrewardscard.com> domain name in bad faith. Respondent uses the domain name to divert Internet users and create confusion about the sponsorship of the domain, disrupting Complainant’s business and leading to commercial gain for Respondent.
6. Additionally, Respondent fails to make active use of the domain name.
7. Respondent also registered the domain name with actual knowledge of Complainant’s rights in the GM mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the GM mark. Respondent’s domain name is confusingly similar to Complainant’s GM mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <gmrewardscard.com> domain name and that Respondent registered and uses the domain name 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:
(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 has rights in the GM mark through its registration with the USPTO. Registration of a mark with a trademark agency, such as the USPTO, is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). 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). Complainant has provided evidence of its registration with the USPTO (e.g., Reg. 1,714,390, registered Sept. 8, 1992). Therefore, Complainant has rights in the GM mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <gmrewardscard.com> domain name is confusingly similar to Complainant’s GM mark, only differing by the addition of the generic terms “rewards” and “card” and adding the “.com” gTLD. Addition of generic terms and a gTLD may not negate confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i). See MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the holds that the <gmrewardscard.com> domain name is confusingly similar to Complainant’s GM mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <gmrewardscard.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent lacks rights and legitimate interests in the <gmrewardscard.com> domain name as it is not commonly known by the domain name and is neither an authorized user nor licensee of the GM mark. When a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii). See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Here, the WHOIS information of record identifies “zhi yong zhang / zhang zhi yong” as the registrant of the <gmrewardscard.com> domain name. As the record reflects that Complainant never authorized Respondent to use the GM mark, the Panel holds that Respondent is not commonly known by the <gmrewardscard.com> domain name under Policy ¶ 4(c)(ii).
Complainant further contends that Respondent fails to use the <gmrewardscard.com> domain name for any bona fide offer of goods or services or for any legitimate noncommercial or fair use, instead having the domain names resolve to a parked website hosting links services unrelated to Complainant’s business. Such use does not qualify as either a bona fide offer or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Priceline.com LLC v. levesque, bruno, FA1506001625137 (Forum July 29, 2015) (“The Panel finds that Respondent’s attempt to divert Internet users who are looking for products relating to Complainant’s famous mark to a website unrelated to the mark does not engage in a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it make a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Complainant provides screenshots of the resolving website for the <gmrewardscard.com> domain name as evidence that Respondent hosts a parked website linking to various unrelated services. The Panel therefore finds Respondent lacks rights and legitimate interests in the <gmrewardscard.com> domain name under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims that Respondent registered and uses the <gmrewardscard.com> domain name in bad faith because the domain name resolves to a parked website hosting links to services unrelated to Complainant’s business. Such use can establish bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained). Here, screenshots of the <gmrewardscard.com> domain name resolving website provided by Complainant show that Respondent uses the domain name to host a website linking to various soccer or online betting services, and uses the fame of Complainant’s GM mark to increase web traffic to the site. The Panel may therefore finds that Respondent registered and uses the <gmrewardscard.com> domain in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Additionally, Complainant claims that Respondent registered the <gmrewardscard.com> domain name with actual knowledge of Complainant’s rights in the GM mark. Per Policy ¶ 4(a)(iii), actual knowledge of another’s trademark rights at the time of registration is sufficient to establish bad faith and can be demonstrated by the fame of a mark and the use a respondent makes of a domain name. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). Complainant has sufficiently established that it is a well-known automobile manufacturer, and that Respondent incorporated Complainant’s mark exactly into the domain name. Thus, Complainant has shown that Respondent had actual knowledge of the mark when the domain name was registered and that Respondent acted in bad faith under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied 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 <gmrewardscard.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: July 19, 2021
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