The Complainant is General Motors LLC of Detroit, Michigan, United States of America, represented by Abelman Frayne & Schwab, United States.
The Respondent is Domains By Proxy, Inc of Scottsdale, Arizona, United States, and Mel Light of Los Angeles, California, United States. 2. The Domain Names and Registrar
The disputed domain names , , , and are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2012. On July 12, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 14, 2012 the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 16, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 16, 2012.
The Center verified that the Complaint together with the amended 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 July 17, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 6, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 7, 2012.
The Center appointed Angela Fox as the sole panelist in this matter on August 16, 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
The Complainant, General Motors LLC, is one of the world’s largest automakers. It is the successor in interest to all trademarks and related goodwill formerly owned by General Motors Corporation, founded in 1908. The Complainant is based in Detroit but manufactures cars and trucks in 34 countries around the world. It sells and services vehicles in some 140 countries, with its largest markets being the United States, China, Brazil, the United Kingdom, Canada, Russia and Germany.
The Complainant or its predecessor in business has used GMC, GM, BUICK and CADILLAC as trademarks for motor vehicles for around 95 years. The Complainant owns hundreds of trademark registrations and pending applications worldwide for marks comprising or incorporating the foregoing marks. Annexed to the Complaint were copies of registration certificates or online official database print-outs for some of these marks, including inter alia:
- United States registration no. 283,227 for GM, registered on May 19, 1931;
- United States registration no. 1,900,372 for CADILLAC, registered on June 20, 1995;
- United States registration no. 1,683,678 for BUICK, registered on April 21, 1992; and
- United States registration no. 2,459,750 for GMC registered on June 12, 2001.
The Complaint sets out the history of the Complainant’s business under the GMC, GM, BUICK and CADILLAC brands, listing various commercial milestones, sales achievements and industry awards made to vehicles bearing these trademarks. It is clear that the brands have enjoyed long-standing market presence and considerable commercial success in the United States in particular, where both parties to this proceeding are based.
The Complainant conducts business on the Internet and operates websites at domain names incorporating the foregoing trademarks, namely , , and .
The disputed domain names , , and were all registered on June 18, 2010. All four have been used to link to websites offering extended warranty services to owners of GMC, GM, BUICK and CADILLAC-branded vehicles. Print-outs from these websites were annexed to the Complaint. The websites make prominent use of the Complainant’s trademarks, including in well-known logo forms used by the Complainant. The web pages do not identify the entity behind them, although there is a disclaimer at the bottom of each. The disclaimers are hard to read because they appear in small print against a black background, but the one on the bottom of the page at “” is more or less representative (excepting some minor differences between them all, which are inconsequential) and reads, “GMCExtendedW [sic] is an independent website about GMC Extended Warranties and is not sponsored by or in any way affiliated with GMC. The GMC names and logos are trademarks owned by GMC”.
The websites also contain copyright notices, but these are no more informative about the entity behind the websites. Again, the copyright notice on “” is more or less representative (excepting some minor, inconsequential differences) and reads, “© Copyright 2012 GMC Extended WarrantyAll Rights Reserved”.
The Complainant’s attorneys sent cease and desist letters regarding the disputed domain names to the Respondent on April 19, 2012, but no reply was ever received. This Complaint was brought on July 12, 2012. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain names are confusingly similar to its registered GMC, GM, BUICK and CADILLAC trademarks. The disputed domain names differ only in the addition of descriptive words that are commonly associated with motor vehicles and which are not therefore capable of avoiding confusion. The Complainant’s trademarks are well-known and Internet users are likely to assume that the disputed domain names are connected with the Complainant.
The Complainant further submits that the Respondent has no rights or legitimate interests in the disputed domain names. The Respondent is using the disputed domain names in respect of websites offering extended warranties for GMC, GM, BUICK and CADILLAC-branded automobiles. The Respondent is not, however, licensed or authorised by the Complainant to use the marks, and the Complainant submits that the Respondent’s activities do not give rise to a right or legitimate interest in the disputed domain names within the meaning of paragraph 4(a)(ii) of the Policy because the Respondent is using the Complainant’s well-known trademarks without authorisation to attract Internet users to websites offering extended warranty services for the Complainant’s vehicles, in circumstances likely to confuse Internet users into believing that the Respondent’s services are those of, or are associated with or authorised by, the Complainant. The Complainant submits that the Respondent is deliberately setting out to deceive Internet users and that such conduct cannot give rise to a right or legitimate interest in any of the disputed domain names.
Finally, the Complainant contends that the Respondent has used and registered the disputed domain names in bad faith. In particular, the Complainant argues that the Respondent has used the disputed domain names to attempt to attract and divert, for commercial gain, Internet users to its websites by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the extended warranty services offered through the Respondent’s sites. The Complainant submits that the disclaimers at the bottom of the web pages linked to the disputed domain names are not sufficient to avoid confusion because they are so small as to be easily overlooked or not understood, and in any event by the time Internet users are on the Respondent’s websites they have already been confused. The Complainant submits, moreover, that the inclusion of the disclaimers in the first place demonstrates that the Respondent is conscious of the Complainant’s rights and of the potential for confusion with the Complainant’s trademarks. B. Respondent
The Respondent did not reply to the Complainant’s contentions and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent’s default. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:
(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 the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy. A. Identical or Confusingly Similar
The Complainant has shown that it is the proprietor of registered trademark rights in GMC, GM, BUICK and CADILLAC.
The disputed domain names all comprise one of the Complainant’s trademarks plus the words “extended warranty” and the non-distinctive domain name suffix “.com”. The combination of the Complainant’s trademarks with the words “extended warranty” gives rise to a whole that denotes extended warranties for GMC, GM, BUICK and CADILLAC-branded vehicles, and the disputed domain names are likely to be understood as pointing to websites where extended warranties can be bought for GMC, GM, BUICK and CADILLAC-branded vehicles.
Consequently, the differences between the disputed domain names and the GMC, GM, BUICK and CADILLAC marks are not differences capable of avoiding a risk of confusion; rather, they are likely to enhance that risk (see, inter alia, General Motors LLC v. Mel Light / Domains By Proxy, Inc,WIPO Case No. D2011-2176 concerning the domain name ; Toyota Motor Credit Corporation v. Andrew Hillin,WIPO Case No. D2011-2175 concerning , and ; General Motors LLC v. Jeffrey Nelson, Salesachievers, Inc,WIPO Case No. D2011-2251 concerning ; and more generally American Automobile Association, Inc. v. Nevis Domains LLC,WIPO Case No. D2006-0489; The American Automobile Association, Inc. v. AAA-Vacationsunlimeted,WIPO Case No. D2009-0373; Playboy Enterprises International, Inc. v. Sookwan Park,WIPO Case No. D2001-0778; A, Inc. v. PDC,WIPO Case No. D2003-0076; and National Association for Stock Car Auto Racing, Inc. v. David Crawford, Jr.,WIPO Case No. D2001-1338; where the mere addition of a generic or descriptive term to a trademark was found not to avoid confusing similarity between the trademark and a disputed domain name, particularly where the descriptor was relevant to a complainant's business).
The Panel therefore finds that the disputed domain names are confusingly similar to trademarks in which the Complainant has rights. B. Rights or Legitimate Interests
The Respondent has not been authorised by the Complainant to use the GMC, GM, BUICK and CADILLAC trademarks, and nothing in the record indicates that the Respondent has been commonly known by a name or names corresponding to the disputed domain names. Nor has the Respondent made any effort in these proceedings to demonstrate that it has a right or legitimate interest in the disputed domain names.
It is clear from the papers submitted with the Complaint that the Respondent has been using the disputed domain names to offer extended warranty services to owners of GMC, GM, BUICK and CADILLAC-branded vehicles. If that activity amounts to a bona fide offering of services under the disputed domain names, then under paragraph 4(c)(i) of the Policy the Respondent would have a right or legitimate interest in the disputed domain names. That would not necessarily mean that the Respondent’s use does not infringe trademark or other rights held by the Complainant, but rather that it is not appropriate to invoke the Policy against the domain name registrations in question.
In this case, the print-outs annexed to the Complaint show that the disputed domain names have been used to link to websites with home pages featuring photographs of GMC, GM, BUICK and CADILLAC-branded vehicles, and making prominent reference to those trademarks including in logo forms used by the Complainant. The pages do not properly identify the entity behind the websites and the impression created by the prominent use of the Complainant’s trademarks, including in logo form, is that the websites are those of, or are in some way associated with or authorised by, the Complainant. It is only by reading the small-print disclaimer appearing at the bottom of the linked pages, which is barely visible because it appears against a black background, that the reader can discern that the services are not offered by or associated with the Complainant. Some Internet users may fail to notice such an unobtrusively placed disclaimer at all (see, similarly, General Motors LLC v. Mel Light / Domains By Proxy, Inc, supra).
Motor vehicle manufacturers routinely offer their own extended warranty services and Internet users encountering a website linked to a domain name such as , , or might reasonably assume, in the absence of an express indication to the contrary, that the entity behind the website was in fact the vehicle manufacturer or a company related to or authorised or approved by it. In this case, the prominent use of the Complainant’s branding on the linked websites, the vanishingly small disclaimers and the absence of any indication as to the entity behind the websites either reinforces that assumption, or does little to cause a visitor to question it (see, inter alia, Toyota Motor Credit Corporation v. Andrew Hillin, supra and General Motors LLC v. Jeffrey Nelson, Salesachievers, Inc, supra). In this Panel’s view, the Respondent’s offer of services using domain names that are confusingly similar to the Complainant’s trademarks clearly has the potential to mislead Internet users to the Respondent’s advantage, since some visitors might be led to take out an extended warranty from the Respondent in the mistaken belief that they are dealing with an entity that is in some way connected with or endorsed by the Complainant.
In the Panel’s view, such use does not involve the necessary bona fides to establish a right or legitimate interest based on the offer of goods or services under paragraph 4(c)(i) of the Policy.
The Panel finds that the Respondent has no legitimate rights or interests in the disputed domain names. C. Registered and Used in Bad Faith
Under paragraph 4(b)(iv) of the Policy, the following circumstance, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.
The Respondent registered the disputed domain names and has used them in order to offer extended warranty services for GMC, GM, BUICK and CADILLAC-branded vehicles, and has therefore used them to attempt to attract, for commercial gain, Internet users to its websites. As indicated above, such efforts have relied on an inherent likelihood of confusion between the disputed domain names and the GMC, GM, BUICK and CADILLAC trademarks, which the Respondent has not dispelled through the content of its linked websites since those websites reinforce the impression that they are those of the Complainant or are in some way associated with or authorised by it, and the disclaimers appearing on the websites are so unobtrusive that they may not be noted by visitors (see General Motors LLC v. Mel Light / Domains By Proxy, Inc, supra.).
The Panel therefore finds that the disputed domain names were registered, and have been used, in bad faith under paragraph 4(b)(iv) of the Policy. 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 names, , , , and be transferred to the Complainant.
Angela Fox
Sole Panelist
Dated: September 4, 2012
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