General Motors LLC v. Josh Oliver
Claim Number: FA2112001976673
Complainant is General Motors LLC (“Complainant”), represented by Nivita Beri of Honigman LLP, Michigan, USA. Respondent is Josh Oliver (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <cadillaclyriq.com> and <cadillaccelestiq.com>, 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.
Charles A. Kuechenmeister, Panelist.
Complainant submitted a Complaint to the Forum electronically on December 9, 2021; the Forum received payment on December 9, 2021.
On December 10, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <cadillaclyriq.com> and <cadillaccelestiq.com> domain names (the 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 December 16, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of January 5, 2022 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@cadillaclyriq.com, postmaster@cadillaccelestiq.com. Also on December 16, 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.
A timely Response was received and determined to be complete on January 4, 2022.
On January 7, 2022, Complainant filed a Supplemental Written Statement, which was accepted and considered by the Panel.
On January 10, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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.
Complainant requests that the Domain Names be transferred from Respondent to Complainant.
A. Complainant
Complainant is an automobile company. It has rights in the CADILLAC mark through its registrations with the United States Patent and Trademark Office (“USPTO”). It also has rights in the CADILLAC LYRIQ and CADILLAC CELESTIQ marks by virtue of its trademark applications with various agencies throughout the world. Respondent’s <cadillaclyriq.com> and <cadillaccelestiq.com> Domain Names are identical or confusingly similar to Complainant’s marks as they incorporate the marks and add the “.com” generic top-level domains (“gTLDs”).
Respondent has no rights or legitimate interests in the Domain Names. He has not been commonly known by them. Respondent is not associated or affiliated with Complainant, nor has Complainant authorized or licensed Respondent to use its marks. Respondent does not use the Domain Names for any bona fide offering of goods or services or for any legitimate noncommercial or fair uses, but instead inactively holds them.
Respondent registered and uses the Domain Names in bad faith. He attracts internet users for commercial gain. He is holding the Domain Names passively, preventing Complainant from reflecting its mark in a corresponding domain name and demands that Complainant purchase the Domain Names from him for an exorbitant amount of money, essentially holding the Domain Names hostage. Respondent registered the Domain Names with actual knowledge of Complainant’s rights in the CADILLAC marks.
B. Respondent
Complainant’s attorney admitted that the trademark claims on the Domain Names were expired or not filed when he registered the Domain Names. Complainant’s foreign mark registrations are not recognized by the USPTO. The web sites are idle because Respondent has not had time to develop them, but he has no interest in making revenue off of them.
Respondent’s offer to sell the Domain Names for $10,000,000 each was sarcastic and reasonable since Complainant makes that much in a week. Furthermore, Complainant does not have a problem with its mark being used by other parties.
Complainant Additional Submission
The phone call between Respondent and Complainant’s counsel was initiated by Respondent after Complainant initiated a complaint with the registrar. Respondent’s statement that GM can afford to pay the $10,000,000 and other statements in the Response show that he is holding the Domain Names passively to force Complainant to purchase them from him, for commercial gain.
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 a complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(1) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the 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.
The Panel finds as follows with respect to the matters at issue in this proceeding:
The CADILLAC mark was registered to General Motors Corporation, assumed to be the predecessor of Complainant, (Reg. 201,694) on August 4, 1925 (USPTO registration certificate submitted with Complaint Exhibit L). Complainant’s ownership of this registration establishes its rights in that mark for the purposes of Policy ¶ 4(a)(i). DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). As current owner of the August 1925 registration, Complainant has sufficient rights in the CADILLAC mark to bring and maintain this proceeding.
Complainant does not have registered trademark rights in the CADILLAC LYRIQ, LYRIQ, CADILLAC CELESTIQ and CELESTIQ marks, but it is well-settled that a complainant need not show registration of its mark to establish rights in a mark in order to meet the requirements of Policy ¶ 4(a)(i). If proven, common law rights are sufficient to establish rights for the purposes of Policy ¶ 4(a)(i). Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (“A complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out”.), Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Common law rights in a trademark can be established by evidence of secondary meaning, which is proven by showing exclusive use of the mark in commerce for a period of time, evidence of advertising and sales, recognition of the mark by customers, unsolicited media attention, or other evidence showing that the relevant consuming public has come to associate the mark with goods or services provided by a single vendor. Karen Koehler v. Hiroshi Ishiura/ Lifestyle Design Inc., FA 1730673 (Forum June 1, 2017) (holding that Complainant established common law rights in her personal name since “[a] mark can generate a secondary meaning sufficient to establish Complainant’s rights when consistent and continuous use of the mark has created distinctive and significant good will… Complainant has published under the KAREN KOEHLER name extensively, and Complainant’s legal skills have been recognized by various organizations and groups with extensive positive media coverage. Complainant also operates an online blog associated with the KAREN KOEHLER mark.”), Gourmet Depot v. DI S.A., FA 1378760 (Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) ¶ 1.3 lists a number of factors that support a claim of common law trademark rights, including “(i) the nature and duration of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.”
Complaint Exhibit L includes TESS reports evidencing Complainant’s applications for registration of these marks with the USPTO filed in March and July 2020. While the application date for a registered trademark establishes the priority date for that registration, the mere filing of an application for USPTO registration does not guarantee that a registration will ultimately issue and does not constitute competent evidence of rights in a mark. Complainant’s application for USPTO registration of its these marks is not sufficient in and of itself to establish its rights in them for the purposes of Policy ¶ 4(a)(i). Complaint Exhibit O is evidence of a webcast hosted by Complainant on March 4, 2020 in which it displayed an overview of its EV stratgegy, including specifc reference to its proposed Cadillac Celestiq and Cadillac Lyriq automobiles. While this certainly indicates an intent on the part of Complainant to use these marks for its EV program, there is no evidence demonstrating the nature and length of its actual use of these marks, the amount of any sales under them, the nature and extent of advertising using them, or the degree of actual public (e.g., consumer, industry, media) recognition. The evidence before the Panel is not sufficient to establish common law rights in those marks for the purposes of Policy ¶ 4(a)(i).
Respondent’s <cadillaclyriq.com> and <cadillaccelestiq.com> Domain Names are identical or confusingly similar to Complainant’s CADILLAC mark. They incorporate that mark in its entirety, merely adding the coined words, “lyriq” and “celestiq” and the “.com” gTLD. These changes do not distinguish the Domain Names from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”), Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”). The WIPO Overview 3.0, at ¶ 1.7, states that the test for confusing similarity “typically involves a side-by-side comparison of the domain name and the relevant trademark to assess whether the mark is recognizable within the domain name.” Notwithstanding the changes described above, Complainant’s mark is clearly recognizable within the Domain Names.
For the reasons set forth above, the Panel finds that the Domain Names are identical or confusingly similar to the CADILLAC mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) Before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
(ii) The respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) The respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names because (i) Respondent has not been commonly known by the Domain Names, (ii) Respondent is not affiliated with Complainant and Complainant has not authorized Respondent to use its CADILLAC mark, and (iii) Respondent is not using the Domain Names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use because they both resolve to inactive web sites. These allegations are addressed as follows:
The WHOIS information furnished to the Forum by the registrar lists “Josh Oliver” as the registrant of the Domain Names. This name bears no resemblance to any of the Domain Names. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, and in cases where no response has been filed, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same), Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The Panel is satisfied that Respondent has not been commonly known by the Domain Names for the purposes of Policy ¶ 4(c)(ii).
Complainant states that it has never authorized or permitted Respondent to use its mark. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”).
Complaint Exhibit P contains screenshots of the web sites resolving from the Domain Names. Both sites are GoDaddy parking pages for the Domain Names, whose only content is a message stating that the Domain Names may be for sale and inviting inquiry at a telephone number printed on the page. Respondent is clearly making no active use of either Domain Name and appears to be offering both of them for sale. Passive holding of a confusingly similar domain name is neither a bona fide offering of goods or services as contemplated by ¶ 4(c)(i) nor a legitimate noncommercial or fair use as contemplated by ¶ 4(c)(iii). Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).”).
Complainant has made its prima facie case. Respondent has presented no evidence of demonstrable preparations to use either Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial purpose. He stated only that in the more than 20 months since he registered the Domain Names he has “not had time to develop them.” He has presented no evidence that he has been commonly known by the Domain Names. The Panel finds that Respondent has no rights or legitimate interests in the Domain Names.
Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:
(i) circumstances indicating that the respondent has registered or the respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s web site 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 the respondent’s web site or location or of a product of service on the respondent’s web site or location.
The evidence of Respondent’s conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration and use, based upon one or more of the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP panels over the years. First, by registering Domain Names so closely associated with Complainant and its motor cars, and particularly by including the coined terms “lyriq” and “celestiq” which Complainant clearly intends to use for its proposed Cadillac EV automobiles, Respondent has prevented Complainant from reflecting its CADILLAC marks in domain names corresponding to Complainant’s products, as described in Policy ¶ 4(b)(ii). The fact that Respondent registered two domain names having this effect on the same day (WHOIS report submitted as Complaint Exhibit A-1) is sufficient to establish a pattern for the purposes of Policy ¶ 4(b)(ii). Rolls-Royce PLC v. Ragnar Kallaste, Case No. D2014-2218 (WIPO March 3,2015) (finding that the respondent’s registration of the two domain names involved in that case, plus a history of registering at least three other domain names which also incorporated the names of automobile manufacturers, constituted a pattern for the purposes of Policy ¶ 4(b)(ii)). The WIPO Overview 3.0 notes that establishing a pattern of bad faith conduct requires more than one, but as few as two instances of abusive domain name registration. A pattern of abuse has been found where the respondent registers, simultaneously or otherwise, multiple trademark-abusive domain names corresponding to the distinct marks of individual brand owners. WIPO Overview 3.0 at ¶ 3.1.2.
Policy ¶ 4(b)(ii) contemplates that a respondent registered the domain name at issue in order to prevent the mark owner from reflecting its mark in a corresponding domain name. The Panel is persuaded that Respondent registered the Domain Names to accomplish that very objective. He registered two Domain Names which are exact copies of the names that Complainant intended to use in connection with the marketing of two of its products, on the same day that Complainant announced its intentions for those names. He is making no active use of either Domain Name but when contacted by Complainant about the Domain Names he offered to sell them to Complainant at greatly inflated prices. Respondent’s registration of these Domain Names would give him substantial leverage in any negotiations with Complainant for a transfer of the Domain Names, as Complainant could not use them while they were controlled by Respondent.
When contacted by Complainant’s counsel about the Domain Names, Respondent first proposed to sell them to Complainant for $10 million apiece (Declaration of Complainant’s counsel submitted as Complaint Exhibit N). Respondent stated in a subsequent email that he was being facetious when he proposed those amounts and in a subsequent email he did reduce his demand to $100,000 for both domains (Id.). Both prices, however, are far in excess of his documented out-of-pocket costs directly related to the Domain Names. This conduct fits within the circumstances described in Policy ¶ 4(b)(i) and is, in and of itself, manifest evidence of bad faith registration and use. Indeed, Respondent’s conduct fits within the circumstances described in both subparagraphs (i) and (ii) of Policy ¶ 4(b). He opportunistically registered both Domain Names the same day that Complainant announced its intention to use identical names for its new EV products and attempted to extract an exorbitant price for them from Complainant.
Finally, Complainant asserts that Respondent had constructive and actual knowledge of Complainant and its CADILLAC mark when he registered the Domain Names. Arguments of bad faith based on constructive notice are not well-taken, as UDRP panels have most frequently declined to find bad faith based upon constructive knowledge. The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). Nevertheless, it is evident that Respondent had actual knowledge of Complainant and its mark when he registered the Domain Names in March 2020 (WHOIS information submitted as Complaint Exhibit A-1 shows creation dates). Complainant’s CADILLAC mark was registered in 1925 and is famous world-wide (Motor Trend Magazine Car of the Year Award articles submitted as Complaint Exhibit I). Respondent copied it verbatim into the Domain Names, with the express intent of attempting to sell them to Complainant. Policy ¶ 4(b) recognizes that mischief can assume many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005), Bloomberg Finance L.P. v. Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services, FA 1714157 (Forum Mar. 8, 2017) (determining that Policy ¶ 4(b) provisions are merely illustrative of bad faith, and that the respondent’s bad faith may be demonstrated by other allegations of bad faith under the totality of the circumstances). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and registering a confusingly similar domain name with actual knowledge of a complainant’s rights in its mark is evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Names in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cadillaclyriq.com> and <cadillaccelestiq.com> Domain Names be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
January 12, 2022
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