The Complainant is General Motors LLC of Detroit, Michigan, United States of America, represented by Abelman Frayne & Schwab, United States of America.
The Respondent is Eighty Business Names, West Bay, Grand Cayman, Overseas Territory of the United Kingdom. 2. The Domain Name and Registrar
The disputed domain name is registered with R Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2013. On March 4, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 5, 2013, 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. Upon the Center’s notification, on March 14, 2013, the Complainant filed an amendment to the Complaint in order to rectify the spelling of the disputed domain name on the first page of the Complaint.
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 March 15, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 4, 2013. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent's default on April 5, 2013.
The Center appointed Haig Oghigian as the sole panelist for this case on April 24, 2013. 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
As there is no formal submission from the Respondent, the facts are taken from the Complaint and generally accepted as true.
The Complainant is among the world’s largest automobile manufacturers, selling and servicing vehicles in more than 120 countries. The Complainant is the successor in interest to all trademarks and related goodwill formally owned by General Motors Corporation which was founded in 1908.
The Complainant owns over 300 trademark registrations for the trademark CORVETTE, or trademarks containing CORVETTE, and the CORVETTE EMBLEM worldwide, including over 50 registrations and pending applications for the trademark CORVETTE, and the CORVETTE EMBLEM in the United States.
The Complainant owns numerous trademark registrations and pending applications for STINGRAY worldwide, including the United States.
The Complainant conducts business on the Internet, and the trademark CORVETTE has a strong Internet presence. The Complainant has capitalized on the strength of its CORVETTE mark and uses the trademark CORVETTE on a wide variety of products in addition to automobiles, including but not limited to, personal accessories, hats, clothes and car accessories. The Complainant has sold and continues to sell an extensive number of CORVETTE vehicles in the United States and worldwide.
The disputed domain name was registered on April 9, 2004. 5. Parties’ Contentions A. Complainant
The Complainant requests that the disputed domain name be transferred from the Respondent to the Complainant.
The Complainant argues that the disputed domain name is identical or confusingly similar to Complainant’s registered trademarks CORVETTE and STINGRAY (paragraph 4(a)(i) of the Policy). The disputed domain name incorporates the trademarks CORVETTE and STINGRAY in its entirety. The use of a generic top-level domain (“gTLD”) is without legal significance.
The Complainant asserts that the Respondent has no right or legitimate interest in the domain name (paragraph 4(a)(ii) of the Policy). The Respondent had not received any license or consent, express or implied, to use the trademarks CORVETTE and/or STINGRAY in a domain name or in any other manner from the Complainant, nor has the Complainant acquiesced in any way to such use or application of the trademarks CORVETTE, STINGRAY by the Respondent. Prior to the registration of the disputed domain name, the Respondent did not use CORVETTE, STINGRAY or any other marks containing CORVETTE and/or STINGRAY as a trademark, company name, business or trade name, and it is not otherwise commonly known in reference to CORVETTE and/or STINGRAY. The Respondent does not use the disputed domain name in connection with a bona fide offering of goods and services. The disputed domain name is currently a “parking page” associated with links to pay-per-click advertising for an array of goods and services including unauthorized reference to the Complainant and its products as well as those of its competitors. It may be inferred that the Respondent's purpose for purchasing the domain name and setting up the “parking page” was to gain business by portraying to be associated with the Complainant. The Complainant’s predecessor General Motors Corporation adopted and has used the trademark CORVETTE for 60 years. Such adoption and use of this trademark precedes the registration date of the domain name .
The Complainant contends that the disputed domain name was registered and is being used in bad faith (paragraph 4(c)(i) and 4(c)(iii) of the Policy). It contends that the Respondent intentionally registered the disputed domain name to trade off the goodwill and reputation of the Complainant. The Complainant further contends that the registration of a domain name containing a well-known trademark by a person and/or company with no connection to that trademark amounts to “opportunistic bad faith”. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires that the complainant must prove that the domain name is identical or confusingly similar to the trademark.
It is established that the presence of the generic top level domain (gTLD) is irrelevant in the comparison of a domain name to a trademark. See e.g., CBS Broadcasting Inc. v. Worldwide Webs, Inc., WIPO Case No. D2000-0834; Société Anonyme des Eaux Minerales d'Evian v. Vivi Bui and Evian Dayspa, WIPO Case No. D2008-1869.
It is clear on the given evidence that the Complainant owns trademark rights in (i) the CORVETTE mark in multiple jurisdictions worldwide, including over 50 registrations and pending applications for the trademark CORVETTE, and the CORVETTE EMBLEM in the United States; and (ii) the STINGRAY mark worldwide, including the United States. It is also clear on the given evidence that the disputed domain name incorporates the marks CORVETTE and STINGRAY in its entirety.
Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s marks. The Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires that the complainant must prove that the respondent has no rights or legitimate interests in respect of the domain name. Paragraph 4(c) of the Policy gives a non-exhaustive list of circumstances that may be brought forward by the respondent in order to demonstrate its rights or legitimate interests in a domain name. Such circumstances include:
- (demonstrable preparations to) use the domain name in connection with a bona fide offering of goods or services prior to the dispute (paragraph 4(c)(i));
- an indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights (paragraph 4(c)(ii)); or
- legitimate, noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark (paragraph 4(c)(iii)).
In this case, the Respondent presented a prima facie case. It is clear on the given evidence that the disputed domain name was registered long after the CORVETTE and STINGRAY marks had become world famous and distinctive. Thus, the burden of production is on the Respondent to establish its right or legitimate interest in the disputed domain name . See PepsiCo, Inc. v. Amilicar Perez Lista d/b/a Cyberson,WIPO Case No. D2003-0174. The Respondent, however, failed to produce any evidence.
There is no evidence that suggests that the Respondent has rights or legitimate interests in the disputed domain name, or that the Respondent has been or is commonly known by the disputed domain name. In addition, there is no evidence that establishes the existence of a relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization by which the Respondent could own or use the disputed domain name, the CORVETTE and STINGRAY marks, or any mark confusingly similar thereto, as a domain name or for any other purpose.
Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name, . C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the complainant must prove that the domain name has been registered and is being used in bad faith. In addition, paragraph 4(b) of the Policy gives a non-exhaustive list of circumstances that may be brought forward by the complainant in order to demonstrate bad faith use and registration of the domain name. Such circumstances include:
- registration of the domain name primarily for the purpose of disrupting the business of a competitor (paragraph 4(b)(iii)); or
- intentional attempt to attract, for commercial gain, Internet users to web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, product or service on web site or location (paragraph 4(b)(iv)).
Given the famous and distinctive nature of the CORVETTE and STINGRAY trademarks, the Respondent is likely to have had constructive notice as to the existence of the Complainant’s trademarks at the time the Respondent registered the disputed domain name. Such constructive notice suggests that the Respondent acted with opportunistic bad faith in registering the disputed domain name. See e.g., Sony Kabushiki Kaisha v. Sin, Eonmok,WIPO Case No. D2000-1007, Nintendo of Am. Inc. v. Pokemon,WIPO Case No. D2000-1230. As such, it may be inferred that the Respondent intentionally registered the domain name to trade off the goodwill and reputation of the Complainant. Further, the evidence establishes that the Respondent’s disputed domain name resolves to a “parking page” associated with links to pay-per-click advertising for an array of goods and services including unauthorized reference to the Complainant and its products as well as those of its competitors. It can be inferred from this evidence that, by using the disputed domain name, the Respondent intentionally attempted to attract, for commercial gain, Internet users to its site or those of others by creating a likelihood of confusion with Complaint’s mark as to the source, sponsorship, affiliation, or endorsement of such sites or of the goods or services found at sites through displaying pay-per-click advertisements. See BellSouth Intellectual Property Corporation v. Michele Dinoia,WIPO Case No. D2004-0486.
Therefore, the Panel is satisfied that the Complainant has established bad faith registration and use, as required by paragraph 4(a)(iii) 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 name, , be transferred to the Complainant.
Haig Oghigian
Sole Panelist
Date: May 15, 2013
Full & Egal Universal Law Academy