The Complainant is General Motors LLC of Michigan, United States of America, represented by Abelman Frayne & Schwab, United States of America.
The Respondent is Domain Admin, Private Registrations Aktien Gesellschaft / PrivacyP, of Kingstown, Saint Vincent And The Grenadines; Queensland, Australia, respectively. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 17, 2012. On October 18, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 18, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 19, 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 amendment to the Complaint on October 19, 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 the Respondent of the Complaint, and the proceedings commenced on October 25, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 14, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 16, 2012.
The Center appointed J. Nelson Landry as the sole panelist in this matter on November 23, 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 has produced an elaborate and detailed evidence which remains unchallenged since the Respondent has not filed any response or communication. The Panel therefore considers the following facts as true.
The Complainant, an automotive manufacturing company, was founded in 1908. It presently employs 200,000 persons in major regions of the world to manufacture automotive vehicles which products and services are offered, provided and sold in more than 120 countries. While its headquarters and main manufacturing plants are in Detroit, Michigan, United States, it manufactures automobiles and trucks in over 30 countries and its largest national markets are China, United States, Brazil, Germany, United Kingdom of Great Britain and Northern Ireland, Canada and Italy.
The Complainant is the owner of more than 600 trademark registrations consisting of the trademark GM alone or with a logo or other words, (herein the “GM Trademarks”), 200 registrations for the trademark GENERAL MOTORS and 70 registrations for the trademark GMC in various countries in the world (herein the “GMC Trademarks” or collectively “the Trademarks”) as it appears from summary reports in respect of each group of Trademarks. (Annexes 3, 5 and 6 to the Complaint) Within those hundred of registrations in evidence, the Panel has noted older registrations in the United States for the Trademark GM, in 1988, in respect of goods in international classes 12 and 37, the Trademark GM in Australia, in 2003, international class 9, the Trademark GMC registered in the United States in 1957, in international class 57, in 1985 and 1987, in international class 28, in 1989 for international class 12 and 2001, for international classes 6, 9, 16, 18, 21 and 25.
The United States registration 283227, dated May 19, 1931, for Trademark GM discloses a date of first use of November 20, 1929. The US registration 646914 of 1957 for the Trademark GMC discloses 1912 or before for its first use.
The Complainant is the registered owner of the domain name at which address it operates a website which contains a section “GMC/Mobile and Tablet Applications for Vehicles” in which there is a section entitled “MyGMC Owner App”. A presentation of nine graphic sections is entitled GMC and underneath said groups of sections. One can read “Download MyGMCOwner App on your IPhone or Android”. (see Annex 8 to the Complaint)
The Complainant has provided annual sales figures for the United States from 1998 to 2009, inclusive, wherein the first nine years of sales were in excess of four billions USD per year and the lowest within the three remaining others, was at least, two billions USD. As shown in the evidence, in addition to its own use of MyGMC, the Complainant has also shown that several automobile telecommunication Internet electronic and computer software companies are owners and operators of their own “My” accounts, namely MyLexus, MyBMW, MyMacys, MyVerizon, MyT-mobile, MyYahoo, MyAppleID and MyDMV.
Within a chronological listing of 39 events, from 1908 to 2012, the following, in the Panel’s view, are elements which contribute to the renown of the Trademarks GM and GMC:
- 1915, the first V8 cylinders water cooled engine;
- 1930, first to introduce articulated brake shoes;
- 1949, the Motor Trend “Car of the Year” award for the Cadillac automobile;
- 1960-1970, the Complainant played a lead role in developing the guidance and navigation system for the first moon landing aboard Apollo 11 and designed and manufactured the Lunar Roving Vehicle for Apollo 15;
- 1974, the introduction of the Oldsmobile Toronado with a driver’s side air bag;
- 1980, the Complainant is the first car manufacturer to use integrated microprocessors ignition, fuel injection, and vehicle diagnostics, and thus earned recognition among the automobile industry and consumers throughout the world, and JD Power rated the company number one in customer sales satisfaction;
- 1990, the Complainant disclosed the revolutionary “Impact” concept car with zero-emission marketed in the United States;
- 1995, the Complainant introduces “Guidestar”, the first on-board navigation system combining mapping and satellite positioning;
- 2000, the Complainant celebrated its Cadillac 100th anniversary and received international acclaim with the second generation CTS sedan, the Motor Trend 2008 “Car of the Year” award;
- 2007, Chevy Volt concept was launched, and an extended range vehicle was revealed at the North American International Auto Show;
- 1931-2008, the Complainant had been leading in global sales for 77 consecutive years longer than any other auto manufacturers.
The disputed domain name was registered on November 18, 2003.
The disputed domain name resolves to a website wherein there are links to pay-per-click advertising for different goods and services including automobiles of the GM Trademark and of other manufacturers.
On September 25, 2012, the Complainant through its legal counsel sent a letter to the Respondent informing it of its Trademarks’ rights and requested the transfer of the disputed domain name. The Respondent did not reply. 5. Parties’ Contentions A. Complainant
The Complainant represents that it has used the GM, GMC and GENERAL MOTORS Trademarks which are registered in several countries and constitute a portfolio of over 800 trademark registrations in the world, that it had used many of them for almost a century in association with a variety of goods and services related to the automobile industry, that it had contributed to significant developments and achievements in the automobile industry, and that it has received several national and international acknowledgements such as the Motor Trends award as particularized in the facts herein.
The Complainant further represents that the disputed domain name is confusingly similar with its GM and GMC Trademarks in that both of said Trademarks are comprised within the disputed domain name and that the addition of the descriptive word “my”, on the one hand, and of the suffix “.com”, on the other hand, does not diminish in any way the confusing similarity of the disputed domain name with the GMC Trademark. See BIC Deutschland GmbH & Co KG v. Paul Tweed,WIPO Case No. D2000-0418; Singapore Airlines Limited v. Robert Nielson (trading as Pacific International Distributors),WIPO Case No. D2000-0644.
According to the Complainant, the addition of the descriptive word “my” in the disputed domain name does not distinguish it from the GMC Trademark since said GMC Trademark is so well-known to consumers that said consumers will assume that the disputed domain name with the word “gmc” is associated with the Complainant, see Sony Kabushuki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409, and furthermore that the addition of such common term to its strong GMC Trademark is not sufficient to negate a finding that the disputed domain name is not confusingly similar. See A, Inc. v. Sung Hee Cho,WIPO Case No. D2001-1276; United Feature Syndicate Inc. v. All Business Matters, Inc. (aka All Business M) and Dave Evans,WIPO Case No. D2000-1199; Nokia Corporate v. Nick Holms t/a EType Media,WIPO Case No. D2002-0001.
Finally, since the GMC Trademark has no real meaning in English, the Complainant further represents that the disputed domain name is calculated to confuse or deceive, as it falsely suggests its services are those of the Complainant or approved by the latter.
The Complainant states that it has not given any license or consent expressed or implied to the Respondent so that the latter may use the GMC and GM Trademarks in registering the disputed domain name or in any other manner.
Furthermore, according to the Complainant’s information and belief, the Respondent did not use GMC or any other trademark containing the acronym GMC as a trademark, company name, business or trade name.
According to the Complainant the Respondent is using the disputed domain name as a website address which is associated with links to pay-per-click advertisements for different goods and services and the Complainant submits that such use of the disputed domain name which incorporates its well-known GMC Trademarks to redirect visitors to the Respondent’s website, not at all related to the Complainant, does not constitute a use of the disputed domain name in connection with a bona fide offering of goods and services or otherwise be considered having any rights or legitimate interests in the disputed domain name. See Adobe Systems Incorporated v. Domain OZ,WIPO Case No. D2000-0057 and Campero International, Corp., Campero International Limited, Campero International, S.A., Campero USA Corp., Pollo Campero, S.A., Pollo Campero, S.A. de C.V., Pollo Campero de Honduras, S.A. de C.V. v. Jordan Data Communication Services Company,WIPO Case No. D2004-1105.
The Complainant further submits that the Respondent, in using its well-known GMC Trademarks in the disputed domain name resolving to a website which links to pay-per-click advertising websites, demonstrates that the Respondent is deliberately seeking to capitalize on the close similarity of the disputed domain name to its GMC Trademark and thereby, gain revenue from such use which, according to UDRP decisions, gives rise to the presumption that the Respondent does not have any rights or legitimate interests in the disputed domain name. See AltaVista Company v. Andrew Krotov,WIPO Case No. D2000-1091; Matchnet plc v. MAC Trading,WIPO Case No. D2000-0205 and Chef America, Inc., v. Sean Murray,WIPO Case No. D2000-1481.
The Complainant alleges that it can be inferred that the Respondent was aware of its GMC Trademarks when it registered the disputed domain name by reason of its well-known status in the automotive industry throughout the world. Considering the numerous GM and GMC Trademarks registrations, it is impossible to conceive circumstances where that the Respondent was not aware of its Trademarks without creating a false impression of association with the Complainant. See Sony Kabushiki Kaishav also trading as Sony Corporation v. Sin, Eonmok,WIPO Case No. D2000-1007.
According to the 95 years of use of the GMC and GM Trademarks by the Complainant and its predecessors, the Complainant further alleges that one can assume that the Respondent had notice of the said Trademarks when it registered the disputed domain name. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; CBS Broadcasting, Inc. v. LA-Twilight-Zone,WIPO Case No. D2000-0397.
Considering the nature and distinctive character of the said Trademarks which have no real meaning other than a reference to the goods and services of the Complainant, a further inference can be made that the disputed domain name would not have been registered without the renown of the said Trademarks. See Nike, Inc. v. B.B. de Boer,WIPO Case No. D2000-1397; Société des Produits Nestlé SA v. Telmex Management Services,WIPO Case No. D2002-0070.
Again relying on the famous and distinctive nature of its GMC and GM Trademarks and the likely constructive notice to the Respondent of their existence, these facts and notice suggest that the Respondent acted with opportunistic bad faith in registering the disputed domain name and this supports a registration in bad faith. See Sony Kabushiki Kaisha v. Sin, Eonmok, supra; Nintendo of America Inc. v. Pokemon,WIPO Case No. D2000-1230 and Yahoo! Inc. v. David Ashby,WIPO Case No. D2000-0241.
Relying on the Respondent’s use of the disputed domain name to divert Internet traffic to a pay-per-click search engine and thus attempt to attract for commercial gain Internet users to its website, the Complainant claims that such attraction for commercial gain was created by the likelihood of confusion with its Trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and that this is creating a false association with the Complainant and its GMC and GM Trademarks. The Complainant thus further claims and infers that the Respondent intentionally registered and used the disputed domain name to trade on the goodwill and the reputation of the Complainant in registering the disputed domain name in bad faith. BellSouth Intellectual Property Corporation v. Michele Dinoia,WIPO Case No. D2004-0486.
The Complainant concludes its representations of registration and use of the disputed domain name in asserting that the reliance on the well-known Trademarks of the Complainant amounts to opportunistic bad faith. See Expedia, Inc. v. Euripean Travel Network,WIPO Case No. D2000-0137, Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polyghenix Group Co.,WIPO Case No. D2000-0163, and Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order for the disputed domain name to be cancelled or transferred:
(i) the disputed domain name registered by the Respondent 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel has considered the substantial and detailed evidence demonstrating the use and the development of the GM and GMC Trademarks by the Complainant’s predecessor and itself since 1908 and its automotive manufacturing and selling activities in more than 150 countries and its hundreds of registrations for the GM Trademarks in the world and its over 70 registrations for its GMC Trademarks. The Panel finds that the Complainant has rights in the GM and GMC Trademarks.
The disputed domain name incorporates as its dominant element the whole of the GMC Trademark to which the word “my” was added along with the suffix “.com”. The Panel agrees with the representations and findings by the panels in the earlier UDRP decisions cited by the Complainant that the addition of this term “my” and the suffix does not diminish in any way the likelihood of confusion and in particular when these terms are added to such a well-known Trademark. The confusing similarity is further confirmed when one considers the evidence of the trend not only in the automobile industry but in other fields of activities in adding the term “my” to a well-known trademark as it is demonstrated by the evidence with “my Lexus, my BMW, my Verizon, my Yahoo” within those adduced in evidence to demonstrate the creation of “my accounts” for the customers of these companies and also a similar account for clients of the Complainant.
In view of the above, the Panel finds that the disputed domain name is confusingly similar with the GMC Trademarks in which the Complainant has rights.
The first criterion of the Policy has been met. B. Rights or Legitimate Interests
The Respondent has not filed any response in this proceeding. Therefore the Panel may accept all reasonable inferences and allegations included in the Complaint as true. The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name by stating that the Respondent has never been known by the disputed domain name and is not making a legitimate non-commercial or fair use of the disputed domain name. Furthermore, the Complainant has never given a license nor in any way authorized the Respondent to make use of any of its Trademarks or to register the disputed domain name.
Not only the Respondent did not respond and attempt to rebut the prima facie evidence of the Complainant, as shown in the facts pertaining to the Respondent’s objectionable activities, in the view of this Panel, it is unquestionable that in using the disputed domain name in association with links to pay-per-click advertising for different automobile goods on its website and so doing in benefitting of the renown associated with the well-known GMC Trademarks of the Complainant, are far from the use of the disputed domain name in connection with a bona fide offering of goods and services or the manifestation of a right or legitimate interest in the disputed domain name. As submitted by the Complainant, with the support of UDRP decisions cited, this Panel determines that the Respondent deliberately seeks to capitalize on the similarity of the disputed domain name to the GMC Trademarks of the Complainant and thereby gain revenue while engaging in a commercial activity.
The Panel finds that, as clearly demonstrated, the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The second criterion of the Policy has been met. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the 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 the 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 website or location or of a product or service on your website or location.”
It should be noted that circumstances evidencing bad faith registration and use are not limited to the above.
The Panel has considered again the extent of the use, the promotion and the nature of the GMC Trademarks, their renown arising from such use in so many countries, on the one hand, and the chronological and historical review of the contribution of the Complainant in the evolution of the automobile industries and the numerous specific and significant innovative contributions to the automobiles and their components and features since 1908 as outlined herein on the other hand.
The Panel finds that there is substantial renown and fame associated with the GMC and GM Trademarks, in particular considering that GMC is an acronym in the nature of a coined term as opposed to a generic or descriptive term and therefore agrees with the Complainant that it is most difficult, if not impossible, to assume that the Respondent was not aware of the existence and fame of the GMC and GM Trademarks of the Complainant. This presumed knowledge of the Respondent is further confirmed by the presence on the website of the Respondent of listing five categories of GMC products, namely vehicles, used trucks, 2013 Yukon, Pickups and 2013 Acadia in which Acadia and Yukon are brands or trademarks of the Complainant. There was indeed, in this Panel’s view, an attempt by the Respondent to capitalize on the renown of the said Trademarks to benefit therefrom.
The Panel finds that the disputed domain name was registered in bad faith.
Upon considering the website at the address of the disputed domain name and the hyperlinks therein which redirect the Internet visitors to links offering sales of new and used cars bearing the GMC Trademarks while the Respondent is not a representative of the Complainant nor associated or affiliated therewith and other links to other automotive websites, namely Used Car Classified, these activities clearly indicate that the Respondent is using these pay-per-click search engines and is attempting to attract these Internet visitors to its website for commercial gain by creating the likelihood of confusion with the Complainant’s GMC Trademark as to the source, sponsorship or endorsement, in particular affiliation when we see the presence of GMC automobile links on the Respondent’s website. It is not surprising that the Respondent did not reply to the demand letter of the Complainant’s legal representative.
The Panel agrees that the use of the disputed domain name and the related website creates a false and unauthorized association with the Complainant as claimed by the latter.
The Panel finds that the disputed domain name is being used in bad faith.
The third criterion of the Policy has been met. 7. Decision
The Panel concludes that:
(a) the disputed domain name is confusingly similar to the Complainant’s GMC Trademarks; and
(b) the Respondent has no rights or legitimate interests in the disputed domain name ; and
(c) the disputed domain name has been registered and is being used in bad faith.
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 the Complainant.
J. Nelson Landry
Sole Panelist
Dated: December 5, 2012
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