The Complainant is General Motors LLC of Detroit, Michigan, United States of America, represented by Abelman Frayne & Schwab, of New York, New York, United States of America.
The Respondent is Chad Clegg of Mesa, Arizona, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 6, 2012. On November 7, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 7, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On November 13, 2012, the Center sent to the 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, the 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 the Respondent of the Complaint, and the proceedings commenced on November 15, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 5, 2012. The Response was filed with the Center on December 5, 2012.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on December 13, 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 states that it is “world-renowned as an automotive manufacturing company and is among the world’s largest automakers.” Complainant further states that its predecessor in interest, General Motors Corporation, was founded in 1908 and that it today employs more than 200,000 people and sells and services vehicles in approximately 157 countries.
Complainant further states, and provides evidence to support, that its CADILLAC brand is protected by more than 500 trademark registrations and applications worldwide (the “CADILLAC Trademark”). Complainant further states that the CADILLAC brand was created in 1902 by Henry Leland, who “named the company after his ancestor, Antoine de la Mothe Cadillac, the founder of Detroit.”
Complainant has provided a list of important accomplishments associated with the CADILLAC brand through the years and says that it “has capitalized on the strength of its CADILLAC mark and uses the trademark CADILLAC on a wide variety of products in addition to automobiles.”
The Disputed Domain Name was created on December 24, 2000, and has been used by Respondent in connection with a pay-per-click (“PPC”) website that, as shown in an exhibit provided by Complainant, contains links for a variety of goods and services, including those labeled, inter alia, “Free Local Job Search,” “Michigan Government,” “Glam – Skincare 101” and “Facts About Michigan.” 5. Parties’ Contentions A. Complainant
Complainant contends, in relevant part, as follows:
- The Disputed Domain Name is confusingly similar to the CADILLAC Trademark because the “dominant element of the domain name incorporates the trademark CADILLAC” and the word “my” “does not serve to distinguish the domain name from the trademark CADILLAC.”
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent has not received any license or consent, express or implied, to use the trademark CADILLAC in a domain name or in any other manner from the Complainant”; “Respondent is not otherwise commonly known in reference to CADILLAC or MY CADILLAC”; Respondent’s PPC links “are not to websites that are exclusively for or about the city Cadillac, Michigan”; “[t]he use of a domain name that incorporates a well-known trademark to direct visitors to a website unconnected with the trademark owner cannot constitute use in connection with a bona fide offering of goods or services or otherwise be considered a legitimate interest in a domain name”; Respondent has listed the Dispute Domain Name as being available for “Buy/lease” and was once offered for sale at an asking price of $56,665.00; “[b]ased on the numerous trademark registrations for the mark CADILLAC, and the fame, goodwill and notoriety associated with the CADILLAC mark, it is impossible to conceive of a circumstance in which the Respondent could legitimately use this domain name without creating a false impression of association with Complainant”; and because “CADILLAC is a distinctive trademark… it can be inferred that the [Disputed Domain Name] would not have been registered but for the renown of the trademark.”
- The Disputed Domain Name was registered and is being used in bad faith because, inter alia, “Respondent makes no genuine use of the” Disputed Domain Name; because the Disputed Domain Name has been offered for sale, “it may be inferred that the Respondent has registered or acquired the domain name primarily for the purpose of selling or transferrin the domain name to the Complainant or a third party for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name”; Respondent acted with “opportunistic bad faith” because he had constructive notice of the CADILLAC Trademark in light of its “famous and distinctive nature”; Respondent’s PPC website “creates a false association with the Complainant and the Complainant’s CADILLAC trademark”; and Respondent owns 83 domain names, most of which are used in connection with PPC websites and are offered for sale or lease. B. Respondent
Respondent contends, in relevant part, as follows:
- The Disputed Domain Name is not confusingly similar to the CADILLAC Trademark because “[t]he only similarity that I can find between my domain name and the Complainant’s is the last name of Antoine de la Mothe Cadillac, the founder of Detroit, and ultimately who the City of Cadillac, Michigan, was name in honor of. Various places bear his name in North America, in particular Cadillac Mountain, found in Maine; any number of business establishments, including Cadillac Ranch[], located here in my home state of Arizona, and, of course, the town of Cadillac, Michigan.”
- The Respondent has rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “I am clearly not profiting off their trademark in any way, shape, or form. The Complainant has not shown, nor is it any way obvious that my use of the website under the disputed domain name is targeting the Complainant. This could only be assumed, possibly, if my website would display pay-per-click links related to their, or their competitors’ sites, which is not the case here.”
- The Disputed Domain Name was not registered and is not being used in bad faith because, inter alia, “[t]here is no explanation in the Complaint as to why a business that was established countless years before I had registered the domain name (nearly 12 years ago) delayed until 2012 to contact, me, the owner of a domain name, which was so manifestly adapted to suit its business, or why Administrative Proceedings were not brought before now – if the domain name was considered to be a justifiable case of abusive registration.”
Respondent requests a finding of Reverse Domain Name Hijacking. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed 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 respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a).
Where a complainant does not prove one or more of these elements, the panel is compelled to issue a decision denying the complaint, regardless of the complainant’s ability to prove the other element(s) required by the Policy. Accordingly, under such circumstances, any discussion by the panel with respect to such other element(s) would be unnecessary in reaching a decision to deny the complaint. See, e.g., Admerex Limited v. Metyor Inc.,WIPO Case No. D2005-1246 (“[s]ince the Complainant must prove all three elements of the Policy, and since the Complainant fails under the third element,… it is not necessary to make a finding under the second element of the Policy”); Micro Electronics, Inc. v. MicroCenter,WIPO Case No. D2005-1289 (where the complainant failed to prove the second element of the Policy, “there is no need for the Panel to address the third element of the Policy”). Therefore, given that the Panel in the instant case finds, as discussed below, that the Complainant has failed to prove the third element of the Policy – that is, paragraph 4(a)(iii) – the Panel makes no findings with respect to the second element of the Policy. A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant (supported by appropriate evidence, including copies of registration certificates), it is apparent that Complainant has rights in and to the CADILLAC Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the CADILLAC Trademark, the relevant comparison to be made is with the second-level portion of the domain name only (i.e., “mycadillac”), as it is well-established that the top-level domain (i.e., “.com”) should be disregarded for this purpose. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 1.2 (“WIPO Overview 2.0”) (“The applicable top-level suffix in the domain name (e.g., “.com”) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.”).
As numerous previous panels (including this Panel) have found, the addition of the word “my” to a disputed domain name, in addition to a complainant’s trademark, “do[es] nothing to diminish confusing similarity.” Public Service Electric & Gas Company v. ryan roettger,WIPO Case No. D2012-0623.
Accordingly, the Panel finds that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Given that, for the reasons set forth above and below, it is unnecessary for the Panel to make a finding with respect to the second element of the Policy, paragraph 4(a)(ii), the Panel refrains from doing so. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
Here, the panel readily finds a lack of bad faith pursuant to two of the factors, for the following reasons.
With respect to paragraph 4(a)(ii): Although Complainant states that Respondent has a portfolio of 83 domain names, Complainant has not argued that any of them other than the Disputed Domain Name prevents a trademark owner from reflecting its mark in a corresponding domain name. Accordingly, the requisite “pattern” of conduct has not been established.
With respect to paragraph 4(a)(iii): Given that Complainant has failed to show how Respondent may be considered a “competitor,” and further, as discussed below, Respondent’s website using the Disputed Domain Name does not contain any links that Competitor alleges are competitive with Complainant’s own goods or services, the Panel is not persuaded that Respondent is a competitor of Complainant and, accordingly, this factor is unproven.
The Panel finds more challenging the bad faith factors described in paragraphs 4(a)(i) and 4(a)(iv). Given the long and far-reaching use of the CADILLAC Trademark, the Panel is not so naïve as to think that Respondent was unaware of the trademark when he registered the Disputed Domain Name or that the Disputed Domain Name, standing alone, could be considered by many to be anything other than associated with Complainant. However, there is nothing in the record to contradict Respondent’s assertions that he registered and is using the Disputed Domain Name solely because of its connection with the personal and geographic name “Cadillac” and not because of Complainant’s use of the word as a trademark.
It may be that by using the Disputed Domain Name in connection with a website that contains links to Michigan, home state of the city of Cadillac, Respondent has merely attempted to disguise his intention in registering the Disputed Domain Name – much as the early cybersquatter Dennis Toeppen displayed photographs of the city of Pana, Illinois, on a website using the domain name . Panavision International, L.P. v. Toeppen, 141 F.3d 1316 (9th Cir. 1998). However, in the Panavision case, the defendant’s actions and convoluted explanation were clearly a pretext for his actual motive, given that the disputed domain name was not only identical to the plaintiff’s trademark but not actually the name of the city depicted on the website and, as the court said, the defendant’s “’business’ is to register trademarks as domain names and then sell them to the rightful trademark owners” – something that Complainant in this case has not proven.
In any event, it would appear as if Respondent has taken precautions to avoid using the Disputed Domain Name in any manner that might cause a likelihood of confusion with Complainant. Such actions eliminate any finding of bad faith pursuant to paragraph 4(a)(iv).
Further, although Respondent has offered to sell the Disputed Domain Name, for as much as $56,665.00 – a figure that presumably is “valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name” – the record does not indicate that Respondent’s “primary” purpose in registering the Disputed Domain Name was to sell it to Complainant or a competitor of Complainant. Indeed, Respondent has provided an uncontradicted explanation related to his registration of the Disputed Domain Name, that is, that it is related to the personal and geographic names associated with the word “Cadillac,” not Complainant’s trademark. As this Panel wrote in a previous decision, Google Inc. v. Blue Arctic LLC, NAF Claim No. 1447355:
Despite the Panel’s extreme suspicions about this explanation, the Policy and the Rules do not provide the Panel with any authority to ascertain the Respondent’s credibility given the limitations on filings, the absence of discovery and the procedural efficiencies that are a part of (although admittedly occasionally detrimental to) this process. See, e.g., Jumblatt v. SlantMedia,WIPO Case No. D2012-1011 (June 28, 2012) (“The Panel takes into account that the Policy was designed to deal with a certain limited category of abusive registration of domain names, but not as a means of litigating all disputes involving domain names”); Thump Records, Inc. v. WebPros, FA 446911 (Nat. Arb. Forum May 11, 2005) (referring to “[t]he limited scope of the Policy”); and Shedrick v. Princeton, FA 236575 (Nat. Arb. Forum) (referring to “the very narrow scope of the UDRP procedure”).
In light of these concerns, this Panel notes that “[i]t may be that Complainant could develop evidence of bad faith and lack of legitimate interest in a legal proceeding that would allow more evidentiary development. The Policy, however, was not designed to transfer domain names in every case that a trademark owner might ultimately win.” Trans Continental Records, Inc. v. Compana LLC,WIPO Case No. D2002-0105 (April 30, 2002).
Finally, given Respondent’s arguments, actions and lack of actions, the Panel is also unconvinced that bad faith exists pursuant to the doctrine of “opportunistic bad faith.” 7. Decision
For the foregoing reasons, the Complaint is denied.
The Panel refuses to find Reverse Domain Name Hijacking because there is no evidence that the Complaint “was brought in bad faith and constitutes an abuse of the administrative proceeding” as required by paragraph 15(e) of the Rules.
Douglas M. Isenberg
Sole Panelist
Date: December 19, 2012
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