General Motors LLC v. Domain Admin / Privacy Ltd. Disclosed Agent for YOLAPT
Claim Number: FA1510001643209
Complainant is General Motors LLC (“Complainant”), represented by Jennifer M. Hetu of Honigman Miller Schwartz and Cohn LLP, Michigan, USA. Respondent is Domain Admin / Privacy Ltd. Disclosed Agent for YOLAPT (“Respondent”), Isle of Man.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chevytruckclub.com>, registered with Fabulous.com Pty Ltd.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 20, 2015; the Forum received payment on October 20, 2015.
On October 21, 2015, Fabulous.com Pty Ltd confirmed by e-mail to the Forum that the <chevytruckclub.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 October 21, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 10, 2015 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@chevytruckclub.com. Also on October 21, 2015, 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 November 13, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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.
A. Complainant
Policy ¶ 4(a)(i)
Complainant has rights in the CHEVY mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,494,385, registered on June 28, 1988). Respondent’s <chevytruckclub.com> domain name is confusingly similar to the CHEVY mark because it contains the entire mark combined with the descriptive term “truck,” the generic term “club,” and the generic top-level domain (“gTLD”). “.com.”
Policy ¶ 4(a)(ii)
Respondent is not commonly known by the <chevytruckclub.com> domain name because there is no evidence to suggest being so known. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website provides links to competitors of Complainant.
Policy ¶ 4(a)(iii)
Respondent uses the <chevytruckclub.com> domain name in bad faith because it uses the resolving website to provide links to competitors of Complainant for commercial gain. Respondent registered the <chevytruckclub.com> domain name in bad faith because it did so with actual knowledge of Complainant’s rights in the CHEVY mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is General Motors LLC of Detroit, MI, USA. Complainant is the owner of domestic and international registrations for the marks CHEVROLET, CHEVY and CHEVY TRUCKS as well as variations thereof which constitute the family of CHEVROLET marks. Complainant has continuously used the CHEVY mark since at least as early as 1977 in connection with its provision of goods and services, including promotional items, in and related to the automotive industry. Complainant provides additional promotion and provision of its goods, services and related items on various websites including <chevy.com>.
Respondent is Domain Admin / Privacy Ltd. Disclosed Agent for YOLAPT, of the Isle of Man. Respondent’s registrar’s address is listed as Fortitude Valley, Australia. The Panel notes that the <chevytruckclub.com> domain name was created on January 28, 2005.
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant alleges it has rights in the CHEVY mark through its registration with the USPTO (e.g., Reg. No. 1,494,385, registered on June 28, 1988). Complainant has provided a copy of the registration in support of its contention. Past panels have found that registration with the USPTO suffices to demonstrate rights in a mark under Policy ¶ 4(a)(i). See UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (finding “no difficulty” in holding that the complainant had established rights in its asserted marks for the purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO). The Panel here finds that Complainant has rights in the CHEVY mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <chevytruckclub.com> domain name is confusingly similar to the CHEVY mark because it contains the entire mark combined with the terms “truck” and “club,” and the gTLD. “.com.” Prior panels have found that “.com” is irrelevant to Policy ¶ 4(a)(i). See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). Complainant argues that “truck” is descriptive of its business, while “club” is a generic term, and therefore, neither term adequately distinguishes the domain from the CHEVY mark. Previous panels have found that descriptive and generic terms do not distinguish marks and domains. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). The Panel here finds that Respondent’s <chevytruckclub.com> domain name is confusingly similar to Complainant’s CHEVY mark pursuant to Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes 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 Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Complainant has met this burden.
Complainant alleges that Respondent is not commonly known by the <chevytruckclub.com> domain name because there is no evidence to suggest being so known. The Panel notes that the WHOIS information lists “Domain Admin” as Registrant and that Respondent has failed to provide any evidence to indicate being commonly known by the domain name. Prior panels have found such a lack of evidence sufficient to show a respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). The Panel here finds that Respondent is not commonly known by the <chevytruckclub.com> domain name under Policy ¶ 4(c)(ii).
Complainant alleges that Respondent fails to use the <chevytruckclub.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website provides links to competitors of Complainant. Complainant has provided screenshots of the resolving website in support of its contention. Previous panels have found that providing links to competitors suffices to show a lack of bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(i) and ¶4(c)(iii). See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). The Panel here finds that Respondent fails to use the resolving website to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(i) and ¶4(c)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As the Respondent has not provided a response to this action, the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant alleges that Respondent uses the <chevytruckclub.com> domain name in bad faith because it uses the resolving website to provide links to competitors of Complainant for which Respondent, presumably, receives click-through fees. Past panels have found that hosting competitive links constitutes bad faith use pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). The Panel here finds such behavior, to the extent employed by Respondent here, constitutes registration and use of the <chevytruckclub.com> domain in bad faith pursuant to Policy ¶ 4(b)(iv).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <chevytruckclub.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: November 27, 2015
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