General Motors LLC and Onstar, LLC v. Muhammet Mahmut Uruk
Claim Number: FA2201001981022
Complainant is General Motors LLC and Onstar, LLC (“Complainant”), represented by Nivita Beri of Honigman LLP, Michigan, USA. Respondent is Muhammet Mahmut Uruk (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <onstarguide.com>, registered with Isimtescil Bilisim A.S..
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.
The Honorable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 19, 2022; the Forum received payment on January 19, 2022.
On January 20, 2022, Isimtescil Bilisim A.S. confirmed by e-mail to the Forum that the <onstarguide.com> domain name is registered with Isimtescil Bilisim A.S. and that Respondent is the current registrant of the name. Isimtescil Bilisim A.S. has verified that Respondent is bound by the Isimtescil Bilisim A.S. 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 January 21, 2022, the Forum served the Complaint and all Annexes, including a Turkish and English Language Written Notice of the Complaint, setting a deadline of February 10, 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@onstarguide.com. Also on January 21, 2022, the Turkish and English Language 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 February 17, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable Neil Anthony Brown QC 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 name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING
The Panel notes that the Registration Agreement relating to the disputed domain name is written in the Turkish language, thereby giving rise to the presumption that the language of the proceeding is Turkish. However, the Panel may decide, pursuant to Rule 11(a), that the language of the proceeding should be a language other than the language of the Registration Agreement, taking into consideration the particular circumstances of the administrative proceeding. See FilmNet Inc. v. Onetz, FA 96196 (Forum Feb. 12, 2001) (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English).
Complainant has submitted that because Respondent is conversant and proficient in the English language, the proceeding should be conducted in English. Complainant contends correctly that Respondent’s website available at the disputed domain name uses English characters and words, suggesting that Respondent is at least proficient in the English language. Further, Complainant is not conversant nor proficient in the Turkish language and it would require delay and unnecessary costs to translate the documents into English.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering all the circumstances, the Panel decides that the proceeding should be conducted in the English language.
A. Complainant
Complainant made the following contentions.
Complainant Onstar, LLC is an automobile company and a subsidiary of Complainant General Motors LLC. Complainant has rights in the ONSTAR mark through its registrations with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. 4,080,213, registered Jan. 3, 2012). See Compl. Ex. E Respondent’s <onstarguide.com> domain name is identical or confusingly similar to Complainant’s mark as it incorporates the mark in its entirety and adds the word “guide” along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <onstarguide.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its ONSTAR mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead passes off as Complainant, likely in furtherance of a phishing scheme.
Respondent registered and uses the <onstarguide.com> domain name in bad faith. Respondent disrupts Complainant’s business for commercial gain by passing off as Complainant, likely in furtherance of a phishing scheme. Respondent had actual knowledge of Complainant’s rights in the ONSTAR mark at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant General Motors LLC and Onstar LLC (hereinafter referred to in this decision as “Complainant”) are United States companies that are very prominent in the automobile company.
2. Complainant has established its trademark rights in the ONSTAR mark through its registrations of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. 4,080,213, registered Jan. 3, 2012).
3. Respondent registered the <onstarguide.com> domain name on April 23, 2019.
4. Respondent has used the domain name to pass itself off as Complainant in likely furtherance of a phishing scheme.
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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the ONSTAR mark through its registrations of the mark with the USPTO (e.g. Reg. 4,080,213, registered Jan. 3, 2012). See Compl. Ex. E. Registration with the USPTO is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, as the Panel agrees, it finds Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s ONSTAR mark. Complainant argues that Respondent’s <onstarguide.com> domain name is identical or confusingly similar to the ONSTAR mark. Under Policy ¶ 4(a)(i), adding a generic word to a disputed domain name along with the “.com” gTLD is generally insufficient in differentiating a disputed domain name from the mark it incorporates. See Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis.). The disputed domain name incorporates the ONSTAR mark in its entirety and adds the generic word “guide” along with the “.com” gTLD. An internet user would therefore assume that the domain name was an official domain name of Complainant dealing with a guide to its goods and services. As the Panel agrees, it finds the domain name is confusingly similar to Complainant’s ONSTAR mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s ONSTAR mark, adding the generic word “guide” suggesting that the domain name was an official domain name of Complainant dealing with a guide to its goods and services;
(b) Respondent registered the <onstarguide.com> domain name on April 23, 2019;
(c) Respondent has used the domain name to pass itself off as Complainant in likely furtherance of a phishing scheme;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent is not commonly known by the <onstarguide.com> domain name, nor has Complainant authorized or licensed Respondent to use its ONSTAR mark in the disputed domain name. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name, while a lack of evidence affirming otherwise may affirm a Complainant’s assertion that it never authorized or licensed Respondent to use its mark in the disputed domain name. See Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain name where the WHOIS information listed Respondent as “Operi Manaha,” and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.). The WHOIS of record identifies Respondent as “Muhammet Mahmut Uruk”, and nothing in the record rebuts Complainant’s submission that it never authorized or licensed Respondent to use its ONSTAR mark in the disputed domain name. See Registrar Verification Email. Therefore, as the Panel agrees, it finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the <onstarguide.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to either offer competing and related services, or to pass off while phishing for user information is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business); see also DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Complainant provides screenshots of the disputed domain name’s resolving website, which purports to offer the same services as Complainant. See Compl. Ex. F. Complainant argues that Respondent is passing itself off as Complainant to harvest user information from those who believe they are on Complainant’s official site. Therefore, as the Panel agrees, it finds Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <onstarguide.com> domain name in bad faith. Under Policy ¶¶ 4(b)(iii) and (iv), using a disputed domain name to pass off as a Complainant and offer competing goods and services or phish for user information may be evidence of bad faith. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business); see also Bittrex, Inc. v. Caroline Alves Maia, FA 1796113 (Forum Aug. 6, 2018) (finding the respondent registered and used the domain name in bad faith per Policy ¶ 4(b)(iv) because the respondent used the disputed domain name to present users with a website that was “virtually identical, with the same color scheme, the same layout and the same substantive content” and used the website to gain access to users’ cryptocurrency accounts). The Panel recalls Complainant’s screenshots of the disputed domain name’s resolving website, which purports to offer the same services as Complainant. See Compl. Ex. F. Complainant argues that Respondent is passing itself off as Complainant to harvest user information from those who believe they are on Complainant’s official site Therefore, as the Panel agrees, it finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Secondly, Complainant argues that Respondent registered the <onstarguide.com> domain name in bad faith because it had actual knowledge of Complainant’s rights in the ONSTAR mark. Under Policy ¶ 4(a)(iii), actual knowledge is generally sufficient in demonstrating bad faith, and may be established through Respondent’s incorporation of a registered/well-known mark into and use of a disputed domain name. See WordPress Foundation v. mich delorme / mich d dots tlds, FA1410001584295 (Forum Nov. 25, 2014) (“Because Respondent here relies on the WORDPRESS mark in the disputed domain name and also makes use of Complainant’s services at the resolving page, the Panel finds that Respondent had actual knowledge of Complainant’s mark, and that such knowledge evidences Policy ¶ 4(a)(iii) bad faith.”). The Panel recalls that the ONSTAR mark is fully incorporated into the disputed domain name, while the resolving website offers similar services to those under Complainant’s mark. See Compl. Ex. F. Therefore, as the Panel agrees, it finds Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <onstarguide.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC
Panelist
Dated: February 21, 2022
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