General Motors LLC v. Domain Admin / PLG / Performance Loyalty Group
Claim Number: FA2106001951509
Complainant is General Motors LLC (“Complainant”), represented by Jennifer M. Hetu of Honigman Miller Schwartz and Cohn LLP, Michigan, USA. Respondent is Domain Admin / PLG / Performance Loyalty Group (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <buickrewards.com>, <cadillacrewards.com>, <chevroletrewards.com>, and <chevyrewards.com> (collectively “Domain Names”), registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 17, 2021; the Forum received payment on June 17, 2021.
On June 22, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <buickrewards.com>, <cadillacrewards.com>, <chevroletrewards.com>, and <chevyrewards.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 24, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 14, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@buickrewards.com, postmaster@cadillacrewards.com, postmaster@chevroletrewards.com, postmaster@chevyrewards.com. Also on June 24, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 19, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the Domain Names be transferred from Respondent to Complainant.
A. Complainant
Complainant is a well-known manufacturer of cars and trucks, and one of the world’s largest automakers. Complainant has rights in the BUICK, CADILLAC, CHEVROLET, and CHEVY marks through its registration of the marks with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 860,907, Registered Nov. 26, 1968; Reg. No. 201,694, Registered Aug. 4, 1925; Reg. No. 216,070, Registered Aug. 3, 1926; Reg. No. 1,494,385, Registered June 28, 1988). Respondent’s <buickrewards.com>, <cadillacrewards.com>, <chevroletrewards.com>, and <chevyrewards.com> domain names are confusingly similar to Complainant’s BUICK, CADILLAC, CHEVROLET, and CHEVY marks. Respondent incorporates the marks in their entirety and adds the generic term “rewards” along with the “.com” generic top-level domain name (“gTLD”).
Respondent lacks rights or legitimate interests in the <buickrewards.com>, <cadillacrewards.com>, <chevroletrewards.com>, and <chevyrewards.com> domain names as Respondent is not commonly known by the Domain Names nor did Complainant authorize Respondent to use the BUICK, CADILLAC, CHEVROLET, and CHEVY marks in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the Domain Names are either inactive or resolve to webpages that contain various links and information related to reward programs with the aim of causing consumer confusion.
Respondent registered and used the <buickrewards.com>, <cadillacrewards.com>, <chevroletrewards.com>, and <chevyrewards.com> domain names in bad faith as Respondent attempts to create consumer confusion with Complainant. Respondent either passively holds the domain names or attempts to attract internet traffic to its websites by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of its websites. At the time of registration Respondent had actual knowledge of Complainant’s rights in the BUICK, CADILLAC, CHEVROLET, and CHEVY marks due to the long-standing use and fame of the marks in commerce.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the BUICK, CADILLAC, CHEVROLET, and CHEVY marks. Each of the Domain Names is confusingly similar to one of Complainant’s BUICK, CADILLAC, CHEVROLET, and CHEVY marks. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Names and that Respondent registered and has used the Domain Names in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the BUICK, CADILLAC, CHEVROLET, and CHEVY marks under Policy ¶ 4(a)(i) through its registration of the marks with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 860,907, Registered Nov. 26, 1968; Reg. No. 201,694, Registered Aug. 4, 1925; Reg. No. 216,070, Registered Aug. 3, 1926; Reg. No. 1,494,385, Registered June 28, 1988). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
The Panel finds that each of the Domain Names is confusingly similar to one of the Complainant’s BUICK, CADILLAC, CHEVROLET, and CHEVY marks as they each incorporate the entire mark while adding the generic term “rewards” and the “.com” gTLD. Such changes are insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i) analysis. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (finding top-level domains are irrelevant for purposes of Policy ¶ 4(a)(i) analysis).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Names. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names as Respondent is not commonly known by the Domain Names, nor has Complainant authorized Respondent to use the BUICK, CADILLAC, CHEVROLET, and CHEVY marks. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS information of record lists “Domain Admin / PLG / Performance Loyalty Group” as the registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Names in accordance with Policy ¶ 4(c)(ii).
The Domain Names <chevroletrewards.com>, and <chevyrewards.com> are inactive which by itself does not show rights or legitimate interests. See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Each of the remaining Domain Names is presently inactive but prior to the commencement of the proceeding resolved to websites featuring pay-per-click links to third party websites either offering reward programs (potentially in competition with Complainant’s reward programs) or in one case making a direct reference to a Complainant division (GMC). Such use is not indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”); see also Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds on the balance of probabilities that, at the time of registration of the Domain Names, (January 15, 2016 for <buickrewards.com>, <chevroletrewards.com>, and <chevyrewards.com> and March 29, 2012 for <cadillacrewards.com>), Respondent had actual knowledge of Complainant’s BUICK, CADILLAC, CHEVROLET, and CHEVY marks. The <buickrewards.com> Domain Name resolves to a website that makes a direct reference to the Complainant’s business. Furthermore it is improbable that an entity would register four separate domain names that each refer to a mark that Complainant has used for over 30 (and in some cases close to 90) years in the absence of any awareness of the Complainant and its rights in the BUICK, CADILLAC, CHEVROLET, and CHEVY marks. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the <buickrewards.com> and <chevroletrewards.com> Domain Names in bad faith to create confusion with Complainant’s BUICK and CADILLAC Marks for commercial gain by using the confusingly similar domain names to resolve to websites containing advertisements and links to third party websites for commercial gain. Use of a confusingly similar domain name to redirect Internet users to a website containing advertisements and links to third party websites for commercial gain is indicative of bad faith registration and use per Policy ¶ 4(b)(iv). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(iv) where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business); see also Tumblr, Inc. v. Ailing Liu, FA1402001543807 (Forum Mar. 24, 2014) (“Bad faith use and registration exists under Policy ¶ 4(b)(iv) where a respondent uses a confusingly similar domain name to resolve to a website featuring links and advertisements unrelated to complainant’s business and respondent is likely collecting fees.”).
With respect to the <chevroletrewards.com> and <chevyrewards.com> Domain Names, the Panel finds on the balance of probabilities (and noting the absence of an explanation from Respondent) that they are being passively held pending use for a similar purpose as the remaining Domain Names. As such these Domain Names are also being used in bad faith. See Indiana University v. Ryan G Foo / PPA Media Services, FA1411001588079 (Forum Dec. 28, 2014) (“Under the circumstances, Respondent’s seemingly inutile holding of the at-issue domain name shows Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <buickrewards.com>, <cadillacrewards.com>, <chevroletrewards.com>, and <chevyrewards.com> domain names be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: July 20, 2021
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