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 Link Comercial Corp of Punta Del Este, Maldonado, Uruguay. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 1, 2010. On September 1, 2010, the Center transmitted by email to Network Solutions, LLC. a request for registrar verification in connection with the disputed domain name. On September 1, 2010 Network Solutions, LLC. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact.
The Center verified that 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 September 6, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 26, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 27, 2010.
The Center appointed Christian Pirker as the sole panelist in this matter on October 5, 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.
After reading the Complaint, the Panel noticed that there was evidence missing about the trademarks allegedly owned by the Complainant. Thus, the Panel decided to issue an Administrative Panel Procedural Order requiring the Complainant to produce the evidence and an amendment. The order, issued on October 19, 2010, fixed a deadline of October, 25, 2010, for the Complainant to comply with the order and of October 30, 2010, for the Respondent to submit its comments. The Complainant filed some evidence on October 22, 2010. The Panel and the Center have not received any submissions or supporting evidence from the Defendant in reply to the submissions filed by the Complainant as requested by the administrative panel order No. 1. 4. Factual Background
The Complainant, General Motors LLC, is world-renowned as an automobile manufacturing company and one of the world’s largest automakers. General Motors LLC sales cars and trucks globally under the following brands: BUICK, CADILLAC, GMC, GM DAEWOO, HUMMER, OPEL AND CHEVROLET.
General Motors LLC is the worldwide owner of the trademark and service mark CHEVROLET which is registered alone and in combination with other words and/or designs and is extensively used by Complainant throughout the world to designate all kinds of vehicle ranging from cars to trucks and for various other associated products and services.
The CHEVROLET mark has been used by the Complainant and its predecessors since 1911. The Complainant submitted, in support of its Complaint against the Respondent, a list and copies of numerous trademark registrations among others in the United States; Uruguay; Australia; Portugal; Algeria; Bahrain; Brazil; China; Denmark; Dominican Republic; Ecuador; Germany; Greece; India, Israel; Jamaica; Mexico; New-Zealand; Spain; Russia; Papua New Guinean; Thailand; Switzerland; Sweden; United Kingdom and Zimbabwe.
As example, The Complainant registered the following trademarks:
- United States Trademark Registration No 216070 CHEVROLET, in Class 19, registered in August 3, 1926.
- International Trademark Registration No 647235 CHEVROLET, in Class 37, registered in June 18 1956, for Building construction; repair; and installation services.
- United States Trademark Registration No 1471518 CHEVROLET, in Class 28, registered in January 5, 1988, in international class 28, for Games and playthings; gymnastic and sporting articles; decorations for Christmas trees.
In 1995, the Complainant also registered the trademark CHEVROLET in Denmark in international classes 18, 25 and 28, in 1996 in Ecuador and in 1997, in Portugal, in international class 12.
The Complainant has also registered numerous domain names containing the “term “CHEVROLET” to present the company and offer its Internet services, among others:
- registered on December 20, 1994
- registered on February 12, 1997
- registered on November 27, 2000
- registered on November 1, 2001
- registered on October 4, 2005
On July 2, 1997, Respondent registered the disputed domain name with the Registrar. 5. Parties’ Contentions A. Complainant
The Complainant alleges that it owns over 1000 worldwide trademark registrations for the trademark CHEVROLET or containing “Chevrolet” that it has a strong internet presence and has registered and uses numerous domain names containing the name “Chevrolet”.
The Complainant asserts that further to its long and extensive use of the CHEVROLET trademark throughout the world for vehicles, and for a broad range of other related products, the trademark CHEVROLET has gained notoriety over the years and become a worldwide renowned trademark.
The Complainant further contends that:
1) In respect of the confusing similarity between the disputed domain name and the CHEVROLET trademark that the disputed domain name is confusingly similar to the CHEVROLET trademark in which Complainant has rights as the Domain Names, which incorporates wholly the CHEVROLET trademark, and the mere adding of the word “dealers” is not sufficient to distinguish the disputed domain name from Complainant’s renowned trademark CHEVROLET.
2) The Respondent has no rights or legitimate interests in respect of the disputed domain name given that the Respondent has not received any license or consent to use the trademark CHEVROLET from him, nor acquiesced in any way to such use or application of the trademark CHEVROLET by the Complainant. The Respondent hasn’t got further authorization from the Complainant to register the disputed domain name and it registered the dispute domain name in 1997, when the trademark CHEVROLET was already well known worldwide. Prior to the registration of the disputed domain name, the Respondent did not use “Chevrolet” or any mark containing “Chevrolet”. The Respondent does not use the disputed domain name in connection with a bona fide offering of goods and services since the disputed domain name is currently associated with links to pay-per-click advertising which proves that the Respondent deliberately seeks to capitalize on identity of the domain name to the Complainant’s trademarks and has deliberately attempted to deceive visitors to the website by portraying to be associated with the Complainant.
3) In respect of Bad faith, the domain name has been registered and used by the Respondent in bad faith considering that CHEVROLET is a world-renowned trademark for several decades, the Respondent was obviously aware of Complainant’s prior trademark right. Further, the Respondent intentionally uses the disputed domain name in order to attract Internet users, for commercial gain, to its own website(s), by creating a likelihood of confusion with the Complainants’ marks.
Accordingly, the Complainant requests the sole Panelist to issue a decision that the disputed domain name be transferred to General Motors LLC. B. Respondent
As noted above, the Respondent is in default pursuant to paragraph 5(e) and 14 of the Rules, and paragraph 7(c) of the Supplemental Rules, as no Response was submitted in due time.
It is further noted that the Respondent did not give any response nor communicate any message at any time during the present proceedings.
Under paragraphs 5(e) and 14(a) of the Rules, the effect of a default by the Respondent is that the Panel shall proceed to a decision on the Complaint. Under paragraph 14(b), the Panel is empowered to draw such inferences from Respondent’s default as it considers appropriate under the circumstances. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the 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 states that the Complainant must prove that each of the three following elements are present:
(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant have rights; and
(ii) that the Respondent has no rights nor legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The term “Chevrolet” is included in trademarks which are registered in numerous countries in various classes (e.g. 12, 18, 25, 28 and 37), mainly for Vehicles; apparatus for locomotion by land, air or water and building construction; repair and installation services.
As mentioned above, the disputed domain name is and the question is therefore whether that name is identical or confusingly similar to the Complainant’s trademark. Previous panels have decided that ‘essential’ or ‘virtual’ identity is sufficient:
Complainant is the worldwide owner of the trademark CHEVROLET and derivative trardemarks containing this word in combination with other elements. This Complainant has been using this brand for over 85 years to designate all kind of vehicles and other related products and services throughout the world. The word mark CHEVROLET is registered in various countries all over the world including the United States of America and Uruguay.
In the present case, the trademark appears to be the term “Chevrolet”. Accordingly, this term in its entirety is included in the disputed domain name. Moreover, the adjunction of the word “dealers” to the name “Chevrolet” in the disputed domain name does not diminish the confusing similarity with the trademark, since the essential part of the disputed domain name and the trademark is the term “Chevrolet” and the word “dealers” is an ordinary English world. Domain names that combine a descriptive term with another’s trademark have been held to be confusingly similar to the trademark.
It further appears to the Panel that such descriptive component added to Complainant’s trademark even adds to the confusion by leading users to believe that Complainant operates the web site associated to the disputed domain name. See e.g Dr. Ing.h.c.F.Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888, AT&T Corp. v. WorldclassM,WIPO Case No. D2000-0553; Scholastic Inc. v. 366 Publications, WIPO Case No. D2000-1627.
Accordingly, the Panel finds that the domain name is confusingly similar to Complainant’s trademark CHEVROLET in accordance with paragraph 4(a)(i) of the Policy B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy a Respondent can establish its rights or legitimate interests in its Domain Name if it shows the presence of any of the following circumstances:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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 or service mark at issue.”
It is for the Complainant to demonstrate that this condition is met prima facie. Provided that the Complainant is successful in demonstrating that the condition is met prima facie, it is for the Respondent to demonstrate its rights or legitimate interests. Accordingly, the main burden of proof is on the Respondent.
The Complainant alleges that the Respondent has no connection whatsoever with it and that the Respondent has no right or legitimate interest in the domain name.
Taking into consideration the fact that this condition consists of furnishing evidence of the non-existence of a material fact, the Panel considers that the Complainant has fulfilled its obligations under this paragraph.
As stated above, the Respondent failed to respond to the Complaint. The Panel will therefore draw such inferences as it considers appropriate under the circumstances (paragraphs 5(e) and 14 (a) of the Rules).
The Respondent has not challenged the Complainant’s contention. The Panel finds it credible.
Moreover, there is no evidence in the file that the Respondent has any right or legitimate interest in the disputed domain name.
Accordingly, the Panel considers that the Respondent does not have any right or legitimate interest in the disputed domain name. C. Registered and Used in Bad Faith
The third element to be established by the Complainant is that the domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the policy states the following four (non-exclusive) circumstances which, if found to be present, are deemed to provide evidence of bad faith in registering and using the domain name.
“(i) circumstances indicating that you [Respondent] have registered or you [Respondent] have 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 your documented out-of-pocket costs directly related to the Domain Name; or
(ii) you [Respondent] have 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 you have engaged in a pattern of such conduct; or
(iii) you [Respondent] have registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or your location.”
The Panel notes that some panelists in certain default cases have accepted credible factual allegations from a complainant as true, particularly as these pertain to paragraphs 4(a)(ii) and 4(a)(iii) of the Policy, regarding the factors that make out illegitimacy of a respondent’s use or the presence or absence of bad faith, e.g., Luis Cobos v. West, North (Nick Handle: JNMTOKTCQD), WIPO Case No. D2004-0182; Microsoft Corporation v. Andrey Tumakov, WIPO Case No. D2002-1039; Plymouth State College v. Domains, Best Domains, WIPO Case No. D2002-0939.
The Complainant’s allegations in this case going to the disputed domain name having been registered and being used in bad faith could be accepted as true. That being said, the Panel further states the following:
The domain name must not only be registered in bad faith, but it must also be used in bad faith (e.g., World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001).
The Panel considers that the evidence submitted establishes that the choice of the domain name by the Respondent could hardly be a coincidence. First, adding the word “dealers” to the Complainant’s trademark indicates Respondent’s purposeful choice – and awareness - of a domain name that is confusingly similar to Complainant’s trademark and products. Further, the disputed domain name reverts to a website directory active in the same field as the Complainant. Accordingly, the Panel considers that the disputed domain name was registered in bad faith and is currently used as a “click-through” revenue generating site which provides income to the Respondent by inducing Internet users to click through sponsored links. It is the Panel’s opinion that the intention behind the Respondent’s use of a domain name containing the Complainant’s trademark is merely to capture the Complainant’s customers who are seeking the Complainant’s services, and to re-direct them to other websites. Such use of a domain name is neither legitimate, nor in good faith. Using a domain name to intentionally attract, for commercial gain, Internet users to a website by creating confusion with a complainant’s mark is evidence of bad faith registration under the Policy, paragraph 4(b)(iv) (e.g., Compagnie Générale des Etablissements Michelin CGEM - Michelin & Cie, Michelin Recherche et Technique S.A. v. Horoshiy Inc.,WIPO Case No. D2004-0752).
Further, the Panel finds that the circumstances in this case lead to the conclusion of bad faith use for the following reasons:
- The disputed domain name may lead customers or potential customers of Chevrolet vehicles or products to believe that they are on the Complainant’s website.
- The Respondent’s use of the domain name has no relation to the Complainant’s activities except for misleading potential customers.
- The Respondent did not actively participate in the proceedings.
As a result, the Panel holds that both elements of paragraph 4(a)(iii) of the Policy have been met. The Panel thus concludes that the Complainant has established that the Respondent registered and is using the disputed domain name in bad faith 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 disputed domain name be transferred to the Complainant.
Christian Pirker
Sole Panelist
Dated: November 12, 2010
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