Complainant is General Motors LLC of New York, New York, United States of America, represented by Abelman Frayne & Schwab, United States of America.
Respondent is John Brady/ N2 The Net of Cookeville, Tennessee, represented internally. 2. The Domain Name and Registrar
The disputed domain name is registered with H Inc. d/b/a A (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 23, 2012. On October 24, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 26 and November 1, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On November 5, 2012, the Center sent to Complainant a complaint deficiency notification concerning the mutual jurisdiction issue, since the Complaint did not include a submission to the jurisdiction of the courts in at least one specified Mutual Jurisdiction, which must be expressly identified, as required by the Rules for Uniform Domain Name Dispute Resolution Policy (the”Rules”), paragraph 3(b)(xiii). On the same date, Complainant filed an amendment to the Complaint.
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, 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 November 6, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 26, 2012. The Response was filed with the Center on November 26, 2012.
The Center appointed Mark Partridge as the sole panelist in this matter on December 4, 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.
On December 24, 2012, the Panel issued a Procedural Order requesting further information from the Parties. On January 3, 2013, Respondent filed its response to the Procedural Order and the Complainant replied thereto on January 9, 2013. 4. Factual Background
General Motors, LLC (“GM” or “Complainant”) is the internationally-familiar automotive manufacturing company and is among the world’s largest automakers. GM is the successor in interest to all trademarks and related goodwill formally owned by General Motors Corporation, which was founded in 1908. With global headquarters in Detroit, the Complainant manufactures cars and trucks in 34 countries. Complainant also employs over 200,000 people worldwide, and sells and services vehicles in approximately 140 countries.
Complainant currently holds more than 1,000 registered trademarks consisting of, or containing, the CHEVROLET mark, with use dating from at least 1912. Complainant uses the CHEVROLET mark on a wide variety of products in addition to automobiles, including personal accessories, hats, clothes, car accessories, die cast and collectibles, furniture, posters, tool boxes, watches and clocks, and neon signs.
The Complaint includes or attaches extensive evidence that the CHEVROLET 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 marks are distinctive and well-known, as a result of long, continuous, and extensive use and the commercial success of Complainant’s products branded with those marks. See, e.g., General Motors LLC v. Jeffery Page,WIPO Case No. D2011-0710; General Motors LLC v. Vinh Pham,WIPO Case No. D2011-0454.
Complainant operates numerous websites and social media sites using domain names containing the CHEVROLET trademark. Complainant and its predecessor have used the domain name since December 1994.
The disputed domain name has resolved to an inactive website since it was registered on July 18, 2001. 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain name is confusingly similar to the word mark registered by the Complainant. Complainant further alleges that Respondent does not have any rights or legitimate interests in the disputed domain name, and that the disputed domain name was registered and is being used in bad faith by Respondent.
Complainant also alleges that on September 25, 2012 (notably prior to commencing this UDRP proceeding), Complainant’s attorney sent a letter to the registrant of the domain name requesting that the registrant immediately cease and desist any future use of the CHEVROLET trademark, and that the registrant transfer the domain name to Complainant. Complainant alleges that Respondent replied advising he had contacted a lawyer and would revert to Complainant soon; however, Complainant alleges no further response was received. B. Respondent
Respondent contends that the disputed domain name is distinct from and not likely to be confused with Complainant’s known brand. Respondent further alleges that it registered the domain name “with the intention of designing a Chevrolet fan site where users could post and discuss their Chevrolet products . . . in a family-friendly web environment that is free of corporate-based marketing programs and allows honest and open communication among loyal Chevrolet product owners.” Respondent also alleges that while there has been no site hosted on the domain since it was registered in 2001 due to organizational limitations, that it is committed to developing the site and accordingly has not ever offered to sell the domain to a third party. Its most recent business plan indicates that it intends to use the domain name “as a vehicle to drive traffic to the 3 or 4 [other domains owned by Respondent] and build a marketing company around said traffic” – essentially it is intended to be one of several “’drive’ sites that are used as commercial tools that drive traffic to the primary sites.” 6. Discussion and Findings
Paragraph 15(a) of the Rules states that the Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems appropriate.
Paragraph 4(a) of the Policy requires Complainant to prove all three of the following elements in order to be entitled to the relief sought:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(c) of the Policy sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. The list of circumstances is non-exhaustive.
For the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that shall be evidence of the registration and use of a domain name in bad faith. A. Identical or Confusingly Similar
The disputed domain name incorporates Complainant’s mark entirely. Numerous UDRP panels have found that a domain name that wholly incorporates a complainant's registered mark may be sufficient to establish confusing similarity for the purposes of the Policy, particularly when the additional matter is descriptive or otherwise not sufficiently distinctive to avoid confusion. See, e.g. The Ritz Hotel, Limited v. Damir Kruzicevic,WIPO Case No. D2005-1137. Moreover, several panels have previously held that Complainant’s CHEVROLET trademark is well-known and highly recognized worldwide in the field of automotive and other products. See, e.g. General Motors LLC v. PrivacyP / Hector Ortega, Media International SA,WIPO Case No. D2011-2129 (“the CHEVROLET trademark is known to consumers around the world, meaning it would immediately come to mind upon reading the word “Chevrolet”. This is evidenced by the number of CHEVROLET-related trademarks and domain names the Complainant has registered, the fact that over a hundred million Chevrolets have been sold, the fact that the brand has existed for a hundred years, and the large number of countries Chevrolet vehicles are manufactured and sold in… [and] the word “Chevrolet” does not have an English meaning independent from the General Motors LLC brand.”); General Motors LLC v. Pedro Cachinho,WIPO Case No. D2010-0262.
In the present case, the famous trademark is included in its entirety in the disputed domain name. Moreover, the adjunction of the word “my” to the name “Chevrolet” in the disputed domain name does not change the overall impression to the Panel or diminish the confusing similarity with the trademark, since the essential part of the disputed domain name and the trademark is the term “Chevrolet” and the word “my” is an ordinary English word in common use by website operators for adjunct web pages relating to its customers. Domain names that combine a common word with another’s trademark have been held to be confusingly similar to the trademark. See, e.g. General Motors LLC v. Sefa Yapici,WIPO Case No. D2010-2230; Bayerische Motoren Werke AG v. DLR,WIPO Case No. D2001-1231 (the addition of the suffixes “bikes” and “-uk” to a trademark were insufficient to refute confusing similarity). In this case, Complainant has demonstrated that it owns registered trademark rights in the mark CHEVROLET and the addition of the word “my” is insufficient to avoid confusion.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights and that Complainant has met the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
In connection with Paragraph 4(a)(ii) of the Policy, the Panel finds that Complainant exclusively owns the federal trademark and service mark registrations for the mark CHEVROLET. The disputed domain name has been inactive since its registration, and Respondent has neither used nor made demonstrable preparations to use the domain name at issue before notice of the dispute in connection with a bona fide offering of goods or services. While Respondent indicates it intends to use the domain name for the purpose of driving traffic to its main websites, other UDRP panels have concluded that use of a domain name that incorporates a well-known trademark to direct visitors to a website unconnected with the trademark owner is not use in connection with a bona fide offering of goods and services and does not otherwise create a legitimate interest in a domain name. See Adobe Systems Incorporated v. Domain OZ,WIPO Case No. D2000-0057; Campero International, Corp. v. Jordan Data Communication Services Co.,WIPO Case No. D2004-1105; AltaVista Company v. Andrew Krotov,WIPO Case No. D2000-1091; and Compagnie Générale des Etablissements Michelin CGEM - Michelin & Cie, Michelin Recherche et Technique S.A. v. Horoshiy Inc.,WIPO Case No. D2004-0752. Finally, Respondent is not commonly known by the disputed domain name. Previous UDRP decisions have found this combination of facts insufficient to establish rights or legitimate interest in the domain name.
Therefore, the Panel finds that Respondent has no rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith
In this case, Respondent has acknowledged that Complainant’s CHEVROLET trademark is well known and that it was aware of Complainant’s famous trademark at the time the domain name was registered in 2001. Accordingly, the Panel finds that the domain name at issue has been registered in bad faith.
With respect to the use aspect of paragraph 4(a)(iii) of the Policy, the record shows that the website in connection with the disputed domain name has been inactive since its registration. Accordingly, the Panel finds that Respondent’s inaction constitutes a passive holding of the disputed domain name.
It has previously been recognized that a respondent’s passive holding of the domain name amounts to a bad faith use of the domain name in certain circumstances. See, e.g. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Johnson & Johnson v. Andrew Guion, NAF Claim Number: 96682 (“Passive holding of a domain name for such an extended period of time may also constitute evidence of bad faith”). To determine whether the Respondent’s passive holding of the disputed domain name constitutes bad faith use of the domain name, the Panel looks at all circumstances related to Respondent’s behavior. Id.
Similar and in addition to the particular circumstances found in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, the Panel in this case finds the following circumstances:
(a) Complainant’s registered CHEVROLET trademark is an arbitrary term and therefore are entitled to strong protection;
(b) Complainant’s registered CHEVROLET marks are famous as evidenced by its substantial use worldwide;
(c) Complainant has been using the CHEVROLET mark since at least 1912;
(d) Respondent has engaged in an 11 year pattern of preventing Complainant, as owner of the CHEVROLET trademark from reflecting the mark in the corresponding domain name;
(e) Respondent did not reply to Complainant’s communications before the proceedings were instituted; and
(f) Respondent provided no evidence that it had made any use or demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services before it received notice of the dispute.
In light of the above particular circumstances, the Panel concludes that Respondent’s passive holding of the disputed domain name meets the requirement of paragraph 4(a)(iii) of the Policy that the domain name “is being used in bad faith” by Respondent.
Therefore, the Panel finds that Respondent has registered and is using the disputed domain name 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.
Mark Partridge
Sole Panelist
Date: February 27, 2013
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