Complainant is General Motors LLC of Detroit, Michigan, United States of America (“United States”), represented by Abelman Frayne & Schwab, United States.
Respondent is Jeffrey Nelson, Salesachievers, Inc of Scottsdale, Arizona, United States. 2. The Domain Name and Registrar
The Disputed Domain Name (the “Disputed Domain Name”) is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2011. On December 22, 2011, the Center transmitted by email a request for registrar verification in connection with the disputed domain name. On December 22, 2011, eNom transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on December 23, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 12, 2012. Respondent transmitted an email communication to the Center on January 6, 2012 seeking general information regarding the administrative proceeding. Respondent did not thereafter submit any response. Accordingly, the Center notified Respondent’s default on January 13, 2012.
The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on January 18, 2012. 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
Complainant General Motors, LLC is a well-known automotive company. Complainant claims ownership of over 600 trademark registrations worldwide relating to the GM trademark and over 20 registrations or pending applications within the United States. The trademarks relate primarily to automotive goods and services.
Complainant’s United States registrations for the GM trademark include Registration Nos. 283227; 1034749; and 861,602 (the “Mark”), for use in association with various goods related to automobiles. Complainant has operated its business for over 100 years, and has shown it used the Mark since at least November 20, 1929, for automobiles, motor trucks, truck tractors, buses and parts thereof. Finally, Complainant operates a website for its business at domain name .
Respondent Jeffrey Nelson was listed in the Disputed Domain Name’s WhoIs information under the business name Salesachievers, Inc, at the time the Complaint was filed. According to the publicly available WhoIs database, Respondent registered the Disputed Domain Name on August 19, 2010. Respondent operates a website at the Disputed Domain Name which offers extended warranties for vehicles.
Respondent did not respond to the Complaint or to communications from the Center. 5. Parties’ Contentions A. Complainant
Complainant requests that the Disputed Domain Name be transferred to Complainant. First, Complainant alleges that the Disputed Domain Name is confusingly similar to the Mark because the Mark is so well-known that consumers will presume that the disputed domain name is associated with Complainant; the Disputed Domain Name is comprised of the entire Mark, and merely appends descriptive words after the Mark; and the Mark is the first and primary element of the Disputed Domain Name.
Second, Complainant alleges that Respondent has no rights or legitimate interests in the Disputed Domain Name, because Complainant has not licensed or consented to Respondent’s use of the Disputed Domain Name. Complainant alleges that Respondent has not used trademarks containing the Disputed Domain Name prior to its registration, and is not otherwise associated with the Mark.
Further, Complainant alleges no use in connection with a bona fide offering of goods or services, because the website unnecessarily incorporates the Mark and Complainant’s Mark logo in its website storefront for selling vehicle extended warranties. Complainant alleges that the use of the Mark is meant to deceive visitors by selling products falsely associated with Complainant.
Third and last, Complainant alleges that the Disputed Domain Name was registered and is being used in bad faith. Complainant alleges that the Disputed Domain Name is meant to attract attention for commercial gain by creating a likelihood of confusion with Complainant’s Mark. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
i. that the Disputed Domain Name registered by Respondent is identical or confusingly similar to a trademark or service in which Complainant has rights;
ii that Respondent has no rights or legitimate interests in respect to the Disputed Domain Name; and
iii that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant has shown that the Disputed Domain Name is confusingly similar to the Mark.
The name is comprised solely of the Mark and two additional generic words, followed by “.com.” Neither the presence of the generic words, nor the “.com,” diminishes the dominant portion of the domain name, “gm,” which is identical to the Mark. Instead, the descriptive nature of the additional words, comprising the words “extended” and “warranty,” separate or as the phrase “extended warranty,” merely function to describe services associated with the Mark. These words do not diminish the confusing nature of the use of the Mark in the Disputed Domain Name. See General Motors LLC v. Link Comercial Corp,WIPO Case No. D2010-1463 (the disputed domain name was found to be confusingly similar to CHEVROLET mark); Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409.
For this reason, the Panel concludes that Complainant has proven that the Disputed Domain Name is confusingly similar to Complainant’s valid Mark. B. Rights or Legitimate Interests
Complainant has shown that Respondent lacks authority to use its Marks. Where a respondent has not responded to a complaint, and a complainant has established that respondent lacks authority to use its trademark, the Panel is entitled to an inference that such a respondent lacks rights or legitimate interests in a disputed domain name. See, e.g., Toyota Motor Sales, U.S.A., Inc. v. Pick Pro Parts Inc,WIPO Case No. D2005-0562. This inference applies here.
However, even if the Panel examines Respondent’s potential rights or interests under the appropriate test, Respondent still lacks any rights or legitimate interests in respect of the disputed domain name. If the Panel assumes that Respondent is offering otherwise legitimate services to GM vehicles, the prevailing view on such bona fide offerings by a seller is articulated in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903.
The Panel In Oki Data Americas, Inc found that bona fide offering of goods or services can only be satisfied if the following elements are met: (1) the respondent must actually be offering the goods or services at issue; (2) the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods); (3) the site itself must accurately disclose the respondent's relationship with the trademark owner; and (4) the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of reflecting its own trademark in a domain name.
Here, there is no question that Respondent fails at least element three of the Oki Data Americas, Inc. test. The website hosted by Respondent at the Disputed Domain Name in no way discloses its lack of authority or affiliation with Complainant. Far from such disclosure, the website repeatedly refers to the warranty service offered with the phrase “GM extended warranty.” In light of the lack of affiliation, this use of the Mark reinforces a false affiliation with Complainant.
For these reasons, the Panel concludes that Complainant has proven, and Respondent has failed to rebut, that Respondent has no rights or legitimate interests in the Disputed Domain Name. C. Registered and Used in Bad Faith
Complainant has shown that Respondent registered and is using the Disputed Domain Name in bad faith. Where a domain name containing a widely known and used trademark is registered by a person with no connection to that trademark, a finding of “opportunistic bad faith” is appropriate. Oakley Inc. v. Li Susanto,WIPO Case No. D2010-0496; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163.
Here, Complainant has a valid, well-known trademark registration for the Mark, to advertise its automotive goods and services. Over 80 years after Complainant’s first use of that Mark in connection with automotive goods and services, Respondent has registered the Disputed Domain Name using the same Mark, in association with an apparent offering of automotive extended warranties, and with no disclaimer that Respondent was not affiliated with Complainant. The panel finds the registration of the Disputed Domain Name was opportunistic and meant to trade on the reputation and good will of Complainant’s brand. Further, the continued operation of the website is evidence of continued use in bad faith, because it discloses no information regarding Respondent’s lack of affiliation with Complainant.
For these reasons, the Panel finds that Complainant has met its burden and shown the Disputed Domain Name was registered and is being used in bad faith. 7. Decision
For 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 Complainant.
Maxim H. Waldbaum
Sole Panelist
Dated: January 30, 2012
Full & Egal Universal Law Academy