General Motors LLC v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org
Claim Number: FA1601001656166
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 Protection Service INC d/b/a PrivacyProtect.org (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gm-uzbekistan.com>, registered with Registrar of Domain Names REG.RU 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 12, 2016; the Forum received payment on January 12, 2016.
On January 13, 2016, Registrar of Domain Names REG.RU LLC confirmed by e-mail to the Forum that the <gm-uzbekistan.com> domain name is registered with Registrar of Domain Names REG.RU LLC and that Respondent is the current registrant of the name. Registrar of Domain Names REG.RU LLC has verified that Respondent is bound by the Registrar of Domain Names REG.RU 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 January 13, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 2, 2016 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@gm-uzbekistan.com. Also on January 13, 2016, 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 February 4, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant has rights in the GM mark through its registration with the United States Patent and Office (“USPTO”) (e.g., Reg. No. 271,167, registered on May 27, 1930). Respondent’s <gm-uzbekistan.com> domain name is confusingly similar to the GM mark because it contains the mark along with a hyphen, the geographic term “uzbekistan” and the generic top-level domain (“gTLD”) “.com.”
ii) Respondent is not commonly known by the <gm-uzbekistan.com> domain name. In addition, Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website is used for commercial gain by fostering confusion.
iii) Respondent uses the <gm-uzbekistan.com> domain name in bad faith because it has offered the domain for sale to Complainant, and because the resolving website it used for commercial gain by fostering confusion. Respondent registered the <gm-uzbekistan.com> domain name in bad faith because it did so with knowledge of Complainant’s rights in the GM mark.
B. Respondent
Respondent has failed to submit a formal Response. The Panel notes that the <gm-uzbekistan.com> domain name was registered on July 24, 2013.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name 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 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 claims it has rights in the GM mark through its registration with the USPTO (e.g., Reg. No. 271,167, registered on May 27, 1930). The Panel finds that Complainant has rights in the GM mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”).
Complainant argues that Respondent’s <gm-uzbekistan.com> domain name is confusingly similar to the GM mark because it contains the mark along with the term “uzbekistan” and the gTLD “.com.” The Panel notes that the domain also contains a hyphen. Complainant urges that “uzbekistan” is a geographic term, and, therefore, inconsequently to Policy ¶ 4(a)(i). As the Panel agrees with this argument, it finds that the <gm-uzbekistan.com> domain name is confusingly similar to the GM mark. See AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that the <axachinaregion.com> domain name “is confusingly similar to the Complainant's trade mark ‘AXA’” because “common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy).
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), 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 (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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. 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.”).
Complainant asserts that Respondent is not commonly known by the <gm-uzbekistan.com> domain name. While Complainant has not provided any evidence to support this, the Panel notes that the available WHOIS information lists “Domain Admin” as Registrant and that Respondent has not provided a Response in this proceeding. As the Panel finds the record sufficiently void of evidence, it finds that Respondent is not commonly known by the <gm-uzbekistan.com> domain name according to Policy ¶ 4(c)(ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Complainant maintains that Respondent fails to use the <gm-uzbekistan.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website is used for commercial gain through misleading and diverting Internet users to it. Complainant has provided evidence of its operation of a manufacturing facility in Uzbekistan and evidence that purports to show the disputed domain name is used to foster an association with that facility. As the Panel finds this evidence sufficient, it finds that Respondent fails to use the <gm-uzbekistan.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because the respondent's sole purpose in selecting the domain names was to cause confusion with the complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use).
Complainant contends that Respondent uses the <gm-uzbekistan.com> domain name in bad faith because it has offered the domain for sale to Complainant. Complainant has provided an e-mail, in both Russian and in English translation from Respondent offering the domain for sale for 45 million Uzbek soums, which Complainant asserts is equivalent to approximately $20,000.00 USD. As the Panel finds this evidence sufficient, it finds that Respondent’s offer of sale shows bad faith use of the <gm-uzbekistan.com> domain name pursuant to Policy ¶ 4(b)(i). See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)).
Complainant alleges that Respondent uses the <gm-uzbekistan.com> domain name in bad faith because the resolving website it used for commercial gain through Respondent’s fostering of a likelihood of confusion surrounding the ownership of the domain. Complainant has provided evidence of its operation of a manufacturing facility in Uzbekistan and evidence that purports to show the disputed domain name is used to foster an association with that facility. As the Panel finds this evidence sufficient to show Respondent attempts to profit by creating such confusion, it finds that Respondent uses the <gm-uzbekistan.com> domain name in bad faith in bad faith under Policy ¶ 4(b)(iv). See Tower Labs. Ltd. v. Seltzer, FA 791325 (Nat. Arb. Forum Oct. 16, 2006) (concluding that the respondent registered and was using the <bromoseltzer.com> domain name in bad faith because it displayed a logo similar to the complainant’s BROMO SELTZER mark, which was likely to confuse the public as to the source of the material exhibited at the respondent’s website).
Complainant contends that Respondent registered the <gm-uzbekistan.com> domain name in bad faith because it did so with knowledge of Complainant’s rights in the GM mark. Complainant urges that Respondent had such knowledge because of the fame and status of the GM mark. The Panel infers from the fame of Complainant's mark and the manner of use of the disputed domain name by Respondent that Respondent had actual knowledge of Complainant’s rights, and thus the Panel finds that Respondent registered the <gm-uzbekistan.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights); but see Meredith Corp. v. CityHome, Inc., D2000-0223 (WIPO May 18, 2000) (finding that the respondent’s constructive notice of the complainant’s registered mark was insufficient to support a finding of bad faith registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gm-uzbekistan.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: February 12, 2016
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