Complainant is General Motors LLC of New York, New York, United States of America (“U.S.”) represented by Abelman Frayne & Schwab, U.S.
Respondent is Domains By Proxy, Inc of Scottsdale, Arizona, U.S., and Mel Light of Los Angeles, California, U.S. 2. The Domain Names and Registrar
The disputed domain names , ,
, 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 26, 2012. On July 27, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 30, 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 Complainant on July 31, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on July 31, 2012.
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 Respondent of the Complaint, and the proceedings commenced on August 2, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 22, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 23, 2012.
The Center appointed Sandra A. Sellers as the sole panelist in this matter on August 27, 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
General Motors (“GM”) is one of the world’s largest automakers and one of the most recognized trademarks in the world. Founded in 1908, it sells and services vehicles in approximately 140 countries, and manufactures cars and trucks in 34 countries. It also offers extended warranties on its vehicles.
The Complaint involves four of GM’s subsidiaries: Saturn, Pontiac, Oldsmobile, and Hummer. GM owns the rights to all SATURN, PONTIAC, OLDSMOBILE and HUMMER trademarks, including hundreds of U.S. and international registrations. Each of these marks is well-known in its own right. OLDSMOBILE was founded in 1887, PONTIAC in 1899, SATURN in 1985, and HUMMER in 1992. Each is part of popular culture, through movies, television shows, advertisements. GM maintains websites for each of these subsidiaries.
Despite the fact that each of these subsidiaries no longer produces new vehicles, GM still sells pre-owned vehicles, services them and backs their warranties, and offers roadside assistance and courtesy transportation programs.
The disputed domain names were registered on June 18, 2010. Respondent maintains similar websites for each of them. Each website offers extended warranties for that specific GM vehicle. Each contains a “disclaimer” at the end that states that the website is an “independent website about [the type of vehicle] extended warranties and is not sponsored by or in any way affiliated with [that particular GM subsidiary]. The [vehicle] names and logos are trademarks owned by [the GM subsidiary].”
On April 19, 2012, Complainant’s attorney sent cease and desist letters to the administrative contact concerning each of the disputed domain names. No responses were received. 5. Parties’ Contentions A. Complainant
Complainant alleges that its marks are famous marks that are internationally recognized. Complainant contends that the disputed domain names are confusingly similar to Complainant’s marks because they consist of Complainant’s marks SATURN, OLDSMOBILE, PONTIAC and HUMMER in their entirety, and that the only difference between Complainant’s marks and the disputed domain names are insertion of the generic words “extended warranty”. Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain names, and that it registered and uses the disputed domain names in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Prior to discussing these disputed domain names, it should be noted that this same Respondent previously registered a similar domain name, , which was transferred to Complainant in General Motors, LLC v. Mel Light / Domains by Proxy, Inc, WIPO Case No. D2011-2176. This Panel is in complete accordance with that decision as to all factors of Paragraph 4(a) of the Policy. A. Identical or Confusingly Similar
This Panel finds that it is indisputable that Complainant has rights in these marks. Complainant owns hundreds of U.S. and international trademarks for SATURN, OLDSMOBILE, PONTIAC and HUMMER vehicles, and these marks are some of the world’s most well-known marks. Indeed, Respondent admits in its disclaimers that the “names and logos are trademarks owned by [the relevant subsidiary.]”
The disputed domain names consist of Complainant’s marks in their entirety, and the only difference between Complainant’s marks and the disputed domain names is the insertion of the generic words “extended warranty”. It has long been held that the addition of a generic word is irrelevant to the determination of whether the domain name is identical or confusingly similar to a complainant’s mark, and does not serve to distinguish the disputed domain names from a complainant’s trademarks. It also is well established that the addition of the top level domain (TLD) “.org” suffix is irrelevant in determining confusing similarity. The Panel thus finds that the disputed domain names are identical and confusingly similar to Complainant’s SATURN, PONTIAC, OLDSMOBILE and HUMMER marks.
Accordingly, the Panel finds that Complainant has rights in the marks and that the disputed domain names are confusingly similar to Complainant’s marks. Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Because it is generally difficult for a complainant to prove the fact that a defaulting respondent does not have any rights or legitimate interests in a disputed domain name, previous UDRP panels have found it sufficient for a complainant to make a prima facie showing of its assertion where there has been no response.
According to Complainant, Respondent is not affiliated with or related to Complainant, nor is Respondent licensed or authorized to use the SATURN, PONTIAC, OLDSMOBILE and HUMMER marks. Indeed, in its disclaimers, the websites state that Respondent’s websites are “not sponsored by or in any way affiliated with [the relevant subsidiary]”. On the evidence before the Panel, Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name. The Panel is satisfied that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in the disputed domain name.
Respondent is in default, and has not provided any evidence in its own favor.
The Panel finds that the evidence is sufficient to establish that Respondent has no rights or legitimate interests in the disputed domain names, and thus Complainant meets the second criterion of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that “for the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you 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 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 have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you 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 web site or location or of a product or service on your web site or location.”
This Panel infers that Respondent most likely knew of Complainant’s world-famous SATURN, PONTIAC, OLDSMOBILE and HUMMER marks when Respondent registered the disputed domain names, given the general fame of the marks, and the fact that Respondent’s websites’ disclaimers make specific reference to Complainant’s marks and acknowledge that the marks are owned by Complainant’s subsidiaries. Respondent therefore registered the disputed domain names in bad faith.
Respondent is making commercial use of the disputed domain names. They revert to webpages offering extended warranties for Complainant’s vehicles. Under paragraph 4(b)(iv) of the Policy above, this Panel finds that Respondent’s use of the disputed domain name clearly is an attempt to create confusion to attract Internet users to Respondent’s website for commercial gain.
With respect to Respondent’s use of a disclaimer at the end of each of the disputed domain names’ websites, it is well established that the existence of a disclaimer cannot by itself cure bad faith, when bad faith has been established by other factors. Toyota Motor Sales, U.S.A., Inc. v. Pick Pro Parts Inc,WIPO Case No. D2005-0562. As cited in General Motors, LLC v Mel Light / Domains by Proxy, Inc, supra, the consensus view is that
“the existence of a disclaimer cannot by itself cure bad faith, when bad faith has been established by other factors. This is typically explained by UDRP panels with reference to the probability of Internet user ‘initial interest confusion’ - by the time such user reaches and reads any disclaimer under the domain name, any registrant objective of attracting visitors for financial advantage to its website through use of the trademark in the domain name will generally have been achieved. A disclaimer can also show that the respondent had prior knowledge of the complainant’s trademark. However a disclaimer, especially if it is sufficiently clear and prominent, may sometimes be found to support other factors indicating good faith or legitimate interest” (Citations omitted).
As in that decision, “[h]ere, the disclaimer is not set out in a manner that makes it ‘sufficiently clear and prominent’ so as to overcome the ‘initial interest confusion’ engendered by the adoption and use” of the disputed domain names. “There is no assurance that a disclaimer placed on the bottom of the website, in the manner as done so by the Respondent, will necessarily be noticed and even if it is noticed, a potential customer may not read or understand it.”
This Panel finds that Respondent has registered and used the disputed domain names in bad faith and that Complainant meets the third criterion of paragraph 4(a) 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 Complainant.
Sandra A. Sellers
Sole Panelist
Dated: September 10, 2012
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