WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION General Motors LLC v. Pedro Cachinho Case No. D2010-0262 1. The Parties
The Complainant is General Motors LLC of Detroit, Michigan, United States of America, represented by Abelman Frayne & Schwab, United States of America.
The Respondent is Pedro Cachinho of plinoaloja, rrter rerter, Portugal. 2. The Domain Name and Registrar
The disputed domain name is registered with UK2 Group Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2010. On February 22, 2010, the Center transmitted by email to UK2 Group Ltd. a request for registrar verification in connection with the disputed domain name. On February 23, and March 10, 2010, UK2 Group Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 12, 2010. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 12, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 1, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 6, 2010.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on April 13, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant, General Motors LLC, is world renowned as an automotive manufacturing company and is among the world's largest automakers.
The Complainant employs more than 200,000 people in major regions of the world and sells vehicles in approximately 140 countries. In 2008, General Motors and its subsidiaries sold 8.35 million cars and trucks globally under trademarks such as CHEVROLET.
The Complainant has obtained over 1000 trademark registrations for the trademark CHEVROLET, or trademarks containing CHEVROLET around the world (Annex 3 to the Complaint).
The Complainant conducts business on the Internet, and owns numerous domain names containing the mark CHEVROLET (Annex 8 to the Complaint).
The disputed domain name was registered on May 24, 2009.
On December 29, 2009 the Complainant sent a warning email to the address provided in the WhoIs record, referring to its rights concerning the disputed domain name. The email was returned undeliverable.
The Panel accessed the webpage placed at the disputed domain name on April 19, 2010. It consisted of a discussion forum about Chevrolet vehicles, including links to pay-per-click advertising for an array of goods and a web banner - on the top - advertising products such as CITROËN C4 and FIAT vehicles, among other items. 5. Parties' Contentions A. Complainant
The Complainant makes the following contentions:
(i) The domain name is confusingly similar to the trademark CHEVROLET. The addition of the word “Portugal” in the domain name does not serve to distinguish the domain name from the trademark CHEVROLET and will likely be viewed by consumers as an indication that it is the domain name of the Complainant as utilized in Portugal. As the trademark CHEVROLET has no meaning in English other than in relation to its goods and services, the disputed domain name is calculated to confuse or deceive, as it falsely suggests its services are those of the Complainant.
(ii) To the best knowledge of the Complainant, the Respondent has no rights or legitimate interests in respect of the domain name. The Respondent has not received any license or consent, express or implied, to use the trademark CHEVROLET in a domain name or in any other manner from the Complainant, nor has the Complainant acquiesced in any way to such use or application of the trademark CHEVROLET by the Respondent. The Respondent does not use the disputed domain name in connection with a bona fide offering of goods and services. The use of a well-known trademark as a domain name to link to pay-per-click websites is evidence that the Respondent deliberately seeks to capitalize on the similarity of the domain name to the Complainant's trademark and to gain revenue there from.
(iii) The domain name was registered and is being use in bad faith. The Respondent is likely to have had constructive notice as to the existence of the Complainant's trademark CHEVROLET at the time the Respondent registered the domain name. The Respondent has attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's website. The Respondent's provision of false contact information in the domain name registration of the disputed domain name is also evidence of bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) The respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Regardless of the fact the Respondent failed to submit a formal reply, the Panel shall consider whether the requirements of the Policy have been met. A. Identical or Confusingly Similar
Annex 4 to the Complaint demonstrates registrations of the CHEVROLET trademark in the United States of America since at least 1924. Furthermore, Annex 3 to the Complaint shows a list of trademark registrations and/or applications including the CHEVROLET mark in several countries.
The Panel has no doubt that the CHEVROLET trademark is directly connected with the Complainant's activities and has reached a well-known status worldwide.
The trademark CHEVROLET is wholly encompassed within the disputed domain name, which also includes the country name “Portugal”. The addition of the word “portugal” does not prevent the domain name from being confusingly similar to the Complainant's trademark. Internet users could be confused into thinking that the domain name was associated with the Respondent, and in particular with the business of the Respondent in Portugal.
Previous UDRP decisions have demonstrated that geographical additions do not alter the underlying meaning of a domain name, so as to avoid confusing similarity. This has been held in many UDRP cases (see e.g. Inter-IKEA Systems B.V. v. Evezon Co. Ltd.,WIPO Case No. D2000-0437; The British Broadcasting Corporation v. Jaime Renteria,WIPO Case No. D2000-0050; Volvo Trademark Holding AB v. SC-RAD Inc.,WIPO Case No. D2003-0601; Wal-Mart Stores, Inc. v. Lars Stork,WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart,WIPO Case No. D2000-0713; AltaVista Company v. S.M.A., Inc.,WIPO Case No. D2000-0927).
Therefore, the Panel finds the disputed domain name to be confusingly similar to the Complainant's trademark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation where a respondent can demonstrate a right or legitimate interest in a domain name by showing one of the following facts:
(i) Before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent has been commonly known by the domain name; or
(iii) The respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.
As it is often very difficult to a complainant to prove that a respondent has no rights or legitimate interests in a domain name (as this can involve the complainant being required to prove a negative), it is considered enough that the complainant establishes a prima facie case which evidences that. In a previous WIPO UDRP case, the panel stressed that “once Complainant makes a prima facie showing, Respondent must submit concrete evidence of at least demonstrable preparations in order to rebut Complainant's showing that Respondent has not used, nor does it plan to use, the domain name in connection with the bona fide sale of goods or services” (Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270).
Based on the Respondent's default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has not licensed the trademark to the Respondent. The Respondent is not commonly known by the word “chevrolet”, which consists of a well-known trademark directly connected with the Complainant's businesses.
The website operating under the disputed domain name reproduces the well-known CHEVROLET logo together with the expression “Comunidade Portuguesa”. It appears to be a fan site, which basically offers a discussion forum about CHEVROLET vehicles. In fact, under this condition there is a potential issue of nominative fair use. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“Overview”), paragraph 2.5, a fan site operator has a right or legitimate interest in a domain name containing complainants' trademark so long as it is “active and clearly non-commercial”. However, this is not the present case.
The Respondent has not made a legitimate noncommercial use of the disputed domain name as it links to pay-per-click websites and advertises even competing cars from Citroën and Fiat. Reproducing the conclusions of a prior WIPO UDRP case, the Panel considers there is “no other plausible explanation for Respondent's conduct and conclude that use which intentionally trades on the fame of another can not constitute a “bona fide” offering of goods or services” (Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “M”, WIPO Case D2000-0847).
Consequently, the Panel is satisfied that the Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) The respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) The respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its web site or location.
The registration of the disputed domain name occurred in 2009, when the Complainant's trademark CHEVROLET was well-known around the world, including Portugal. The registration was made using incomplete and false contact information.
It is unquestionable that Internet users frequently associate a domain name comprised of a trademark with the particular company that produces or offers goods and/or services under that mark (see DaimlerChrysler Corporation v. Brad Bargman,WIPO Case No. D2000-0222). In the present case, the Panel is convinced that the addition of the expression “portugal” to the trademark CHEVROLET was likely made to suggest to its consumers that the website was related to the Complainant's own business in that country, creating a likelihood of confusion as to the source of the services offered under the disputed domain name. This clearly constitutes bad faith in the view of this Panel.
The Panel concludes that the Respondent has deliberately attempted to deceive visitors to the website at the disputed domain name by portraying it to be a fan site, when in fact the main function of the webpage is that of pay-per-click advertising, displaying sponsored links for third party websites (including competitors). Therefore, in doing so, the Respondent:
(i) creates a likelihood of confusion with the Complainant's trademark and with the Complainant's operation on the Internet;
(ii) obtains clickthrough revenue from this practice; and
(iii) promotes products and services offered by competitors.
For reference on the subject see Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415.
Accordingly, the Panel finds that the Complainant has proved that the Respondent registered and is using the disputed domain name in bad faith, satisfying the third element of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Rodrigo Azevedo
Sole Panelist
Dated: April 27, 2010
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