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 Jeffery Page of Jupiter, Florida, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 21, 2011. On April 26, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 April 29, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 19, 2011. The Response was filed with the Center on May 19, 2011.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on May 30, 2011. 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, one of the world’s largest automakers, is a Delaware limited liability company headquartered in Detroit, Michigan, United Sates of America. The Complainant’s predecessor, General Motors Corporation, acquired the Chevrolet automobile business in 1917, and it appears from the historical articles and materials submitted by the Complainant that CHEVROLET has long been the company’s most popular brand.
The Complainant currently holds more than 1000 registered trademarks consisting of, or containing, the CHEVROLET mark, dating from at least 1926. CHEVROLET products are popularly known, especially in the United States, by the abbreviated name CHEVY, which is also used in the Complainant’s labeling and advertising. The Complainant holds more than 200 registered trademarks consisting of, or containing, the CHEVY mark. The Complainant uses the CHEVY mark on a wide variety of products in addition to automobiles, including posters and neon signs, tool boxes, clothing and personal accessories, collectibles, furniture, and watches.
The Complaint includes or attaches extensive evidence that the CHEVROLET and CHEVY marks are well established, cited frequently not only in advertising but in media stories, industry awards, and even popular culture since at least the 1950s. Other UDRP panels have found that the CHEVROLET and CHEVY marks are distinctive and well-known, as a result of long, continuous, and extensive use and the commercial success of the Complainant’s products branded with those marks. See, e.g., General Motors LLC v. Vinh Pham,WIPO Case No. D2011-0454.
The Complainant operates numerous websites and social media sites using domain names containing the trademarks CHEVROLET and CHEVY. The Complainant and its predecessor have used the domain name since December 1994 and the domain name since November 1997.
The Complainant’s predecessor filed a trademark application for MY LINK on June 17, 2008. The mark was registered on October 6, 2009 (United States Trademark Registration No. 3693713) and, like the registered CHEVROLET and CHEVY trademarks, assigned to the Complainant in connection with the subsequent reorganization of General Motors in bankruptcy proceedings. The record does not include evidence concerning advertising or other commercial use of the MY LINK mark.
In February 2011 the Complainant publicly announced that CHEVROLET MYLINK, a smart phone interface, will be integrated into some 2012 models of the Complainant’s automobiles. Prior to the official product announcement, the Complainant filed an application to register CHEVROLET MYLINK as a United States trademark on October 12, 2010 (serial no. 85150614) and registered the domain name on November 4, 2010.
The Domain Name was registered on June 24, 2008. At that time, according to the Response, the Respondent was general manager of a Florida Chevrolet dealership and president of Southern Chevrolet Dealers – West Palm Beach Advertising, Inc., a Florida corporation. The Respondent states that he intended to use the Domain Name in connection with one of those two businesses and still plans to use the Domain Name in connection with the sale of CHEVROLET cars and trucks. However, he has not yet done so.
The Domain Name has been associated only with a “parking” website that displays what appear to be pay-per-click (PPC) advertising links, including those for various Chevrolet dealers and for dealers selling competing products such as Ford automobiles. The landing page states, “This Web page is parked for FREE, courtesy of GoD.” It appears from a perusal of the Registrar’s website that such free parking is normally automatic for an undeveloped domain name registered with the Registrar, but that the registrant does not receive a portion of the resulting PPC advertising revenues unless the registrant pays a monthly fee for the Registrar’s “CashParking” service. The Response does not indicate whether the Respondent earns advertising revenues from the parked Domain Name. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is confusingly similar to the Complainant’s registered CHEVY and MY LINK trademarks, and that the Respondent has no relevant rights or legitimate interests in combining those marks to create the Domain Name.
The Complainant asserts that the Domain Name was registered and used in bad faith, in an effort to capitalize on the Complainant’s “famous and distinctive” CHEVROLET and CHEVY marks. B. Respondent
The Respondent, who is not represented by counsel, observes that many automobile dealers use the Complainant’s marks in their domain names, as the Respondent intended to do, and speculates that the Complainant seeks the Domain Name only because it would be useful now in connection with the Complainant’s recently announced CHEVROLET MYLINK product. The Respondent denies any intent other than to use the Domain Name, eventually, in connection with a business selling CHEVROLET cars and trucks. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that, in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(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.
Under paragraph 15(a) of the Rules:
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” A. Identical or Confusingly Similar
It is undisputed that the Complainant holds trademark registrations for CHEVY and MY LINK. The Domain Name includes the CHEVY mark in its entirety and adds “mylink” (without a space, which is not permitted in DNS addresses in any event). The generic top-level domain name “.com” is not material for UDRP purposes. The result is that the Domain Name is very close -- in sight, sound, and sense -- to the combination of the Complainant’s CHEVY and MY LINK marks.
The Panel concludes that the Domain Name is confusingly similar to the Complainant’s CHEVY and MY LINK marks, taken together, and that the first element of Complaint has been established. B. Rights or Legitimate Interests
The Respondent does not contest the Complainant’s assertion that it did not authorize the Respondent to use the CHEVY or MY LINK marks in the Domain Name. The Policy, paragraph 4(c), lists nonexclusive circumstances under which a respondent could nevertheless demonstrate rights or legitimate interests in a domain name, including:
“(i) before any notice to you 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 (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 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.”
There is no evidence of noncommercial use of the Domain Name, and the names of the two businesses mentioned by the Respondent did not include either “Chevy” or “Mylink.”
The Respondent’s reference to dealer websites using the CHEVY or CHEVROLET marks in domain names, along with the Respondent’s stated intent to use the Domain Name similarly in connection with a business selling the Complainant’s cars and trucks, implicitly raises an argument under paragraph 4(c)(i) for a legitimate “nominative use” of the manufacturer’s mark. See Volvo Trademark Holding AB v. Auto Shivuk,WIPO Case No. D2005-0447; Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. However, the Respondent admits that he has not actually employed the Domain Name in this manner to date. Moreover, while the Respondent has held the Domain Name for three years, the record includes no evidence of “demonstrable preparations” to develop a website relating to retail sales of CHEVY products, much less a website that satisfies the conditions for nominative use articulated in the UDRP decisions cited above.
The Panel concludes that the second element of the Complaint has been established. C. Registered and Used in Bad Faith
It is not contested that the Complainant’s registered CHEVY mark was well-known and long established when the Respondent registered the Domain Name in 2008. Moreover, as an officer or employee of businesses dealing in CHEVROLET or CHEVY products, the Respondent was clearly familiar with the CHEVY mark. The Respondent states his original and continuing intention to use the Domain Name precisely in connection with a business “selling Chevy cars and trucks.”
The record does not establish that the Complainant’s MY LINK mark was prominently used or likely to be known by the Respondent in 2008, and the Complainant’s CHEVROLET MYLINK mark, which is the subject of a pending application for trademark registration, did not exist in 2008. Thus, it is likely that the “mylink” portion of the Domain Name was selected only for its generic sense. However, the addition of generic words to the distinctive and well-known CHEVY mark would not reduce the likelihood of confusion or avoid a finding of bad faith in the registration and use of the Domain Name.
The Panel finds that the Respondent knowingly registered the Domain Name incorporating the Complainant’s well-known and distinctive CHEVY trademark. The Respondent claims a good faith interest in using the Domain Name to attract Internet users familiar with the mark to a business selling CHEVY products. Under some conditions, as discussed above, this could represent a plan to make legitimate nominative use of the manufacturer’s mark, but there is no persuasive evidence in the record that the Respondent actually prepared to operate a dealer website in such a manner as to avoid trademark infringement or initial confusion with the Domain Name. The Respondent does not refer to the Complainant’s trademark license terms for CHEVROLET dealers, for example, and does not mention any plans to conspicuously disclose the Respondent’s relationship with the Complainant or to carefully restrict the associated website to the sale of the Complainant’s products. Moreover, the Domain Name, unlike typical domain names associated with dealers, does not include a dealer’s name, location, or specialty, so as to avoid initial interest confusion with the Complainant itself.
In short, the record concerning the registration of the Domain Name reflects an opportunistic disregard for the Complainant’s trademark rights, which the Panel equates with bad faith within the meaning of the Policy, paragraph 4(a)(iii). This attitude is confirmed by the Respondent’s subsequent conduct in allowing the Domain Name to be used over a substantial period of time for a PPC advertising website that includes links to the Complainant’s competitors. This reflects bad faith whether or not the Respondent was paid for such use.
It is questionable whether it would always be considered bad faith on the part of the registrant when a registrar automatically parked a newly registered domain name at a PPC website for the registrar’s commercial benefit. Beyond some brief transition period, however, the registrant certainly should be accountable for the use of the Domain Name. The Panel notes that Paragraph 2 of the Policy, “Your Representations,” is incorporated by reference in the registration agreements of ICANN-approved registrars:
“By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that [. . .] (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights.”
The Respondent knowingly registered a Domain Name incorporating a distinctive trademark and then failed, for years, to take steps to avoid its misuse. Thus, the Panel finds bad faith in both the registration and use of the Domain Name and concludes that this element of the Complaint has been established. 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.
W. Scott Blackmer
Sole Panelist
Dated: June 16, 2011
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