General Motors LLC v. Jeffrey Chan / AgentLED
Claim Number: FA1810001812068
Complainant is General Motors LLC (“Complainant”), represented by Jennifer M. Hetu of Honigman Miller Schwartz and Cohn LLP, Michigan, USA. Respondent is Jeffrey Chan / AgentLED (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <chevroletcares.com> and <chevycares.com>, registered with NameCheap, Inc.
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
Complainant submitted a Complaint to the Forum electronically on October 16, 2018; the Forum received payment on October 18, 2018.
On October 18, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <chevroletcares.com> and <chevycares.com> domain names (the “Domain Names”) are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 22, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of November 13, 2018 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@chevroletcares.com, and postmaster@chevycares.com. Also on October 22, 2018, 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 15, 2018, 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. 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 is one of the world’s largest automakers. Complainant has rights in the CHEVROLET and CHEVY marks through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (Chevy – Reg. No. 1,494,385, registered Jun. 28, 1998, and Chevrolet – Reg. No. 216,070, registered Aug. 3, 1926). Respondent’s Domain Names are confusingly similar to Complainant’s CHEVROLET and CHEVY marks as they merely add the descriptive term “cares” and a “.com” generic top-level domain (“gTLD”) to each mark.
Respondent has no rights or legitimate interests in the Domain Names. Respondent is not authorized to use either of Complainant’s CHEVY or CHEVROLET marks and is not commonly known by either of the Domain Names. Further, Respondent is not using the Domain Names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, they both resolve to websites featuring pay-per-click hyperlinks to Complainant’s competitors.
Respondent registered and uses the Domain Names in bad faith. Respondent is using them to attract, for commercial gain, users to his web sites, where he generates click-through revenues from hyperlinks to other entities, including Complainant’s competitors. Finally, Respondent had actual knowledge of Complainant’s rights in the famous CHEVROLET and CHEVY marks prior to registering the Domain Names.
B. Respondent
Respondent did not submit a Response in this proceeding.
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 provides that in order to make its case for an order cancelling or transferring a domain name, Complainant must prove each of the following three elements:
(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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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 (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.”).
The Panel finds as follows with respect to the matters at issue in this proceeding.
Complainant registered its CHEVROLET mark with the USPTO (Registration No. 216,070) on August 3, 1926, and its CHEVY mark with the USPTO (Registration No. 1,494,385) on June 28, 1998. See, Complaint Exhibit M. Registration of a mark with the USPTO is sufficient to establish rights in that mark for the purposes of Policy ¶ 4(a)(i). Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark).
Respondent’s Domain Names are confusingly similar to the CHEVROLET and CHEVY marks in that they merely add the term “cares” and the gTLD “.com” to each. These changes are not sufficient to distinguish the Domain Names from Complainant’s marks for the purposes of Policy ¶ 4(a)(i). Bloomberg Finance L.P. v. Sunny Bhadauria, FA 1786429 (Forum June 7, 2018) (finding the <bloombergquint.org> domain name to be confusingly similar to the complainant’s BLOOMBERG mark, as the name consists of the mark, the added term “quint” (which refers to the complainant’s Indian business partner “Quintillian Media”) and the gTLD “.org”).
For the reasons discussed above, the Panel finds that the Domain Names are identical or confusingly similar to the CHEVROLET and CHEVY marks, 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 of WIPO Panel Views on Selected UDRP Questions, Third Edition (“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 respondent of the dispute, respondent has used or has made 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) respondent (as an individual, business or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or
(iii) 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 Name because (i) he is not affiliated with, nor does he have permission from Complainant to use the CHEVROLET or CHEVY mark, (ii) he is not commonly known by either Domain Name, and (iii) he is not using the Domain Names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or other fair use because using a domain name to offer hyperlinks to web sites which sell goods which compete directly with the goods sold by the complainant, as Respondent is doing, cannot constitute a bona fide offering of goods and services. These allegations are supported by competent evidence.
According to the WHOIS report submitted with the Complaint as Exhibit A, the registrant is “Jeffrey Chan,” and the registrant organization is “AgentLED.” Neither of these names bears any resemblance to either Domain Name. UDRP panels have consistently held that evidence of a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name).
Complainant states that Respondent is not affiliated with it in any way, and that it has never licensed or authorized Respondent to use its CHEVROLET or CHEVY marks in any way. 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 and 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).
Complaint Exhibit P contains screenshots of the web sites resolving from each of the Domain Names. These sites display only pay-per-click links, some of which send users to the websites of Complainant’s competitors. Use of a domain name to link to a complainant’s competitors does not qualify as a bona fide offering of goods and services within the meaning of Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iv). Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business).
Complainant has made its prima facie case. On the evidence presented, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
(i) respondent has registered or 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 respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) 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 respondent has engaged in a pattern of such conduct; or
(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to 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 respondent’s web site or location or of a product of service on respondent’s web site or location.
The evidence of Respondent’s use of the Domain Names discussed above in connection with the rights or legitimate interests analysis also supports a finding of bad faith use and registration. It is clear from that evidence that Respondent is using the Domain Names intentionally to attempt to attract, for commercial gain, Internet users to his websites by creating a likelihood of confusion with Complainant's marks as to the source, sponsorship, affiliation, or endorsement of Complainant. Respondent is obtaining commercial gain from his use of the Domain Names and the resolving web sites. When a visitor to the web sites clicks on one of the links which appear there, Respondent receives compensation from the various website owners who are forwarded from the site. Most likely, Respondent receives compensation based upon the number of hits the web site owners get from being linked to its web site. Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”), AllianceBernstein LP v. Texas International Property Associates - NA NA, Case No. D2008-1230 (WIPO, 2008), and Brownells, Inc. v. Texas International Property Associates, Case No. D2007-1211 (WIPO, 2007), (finding in similar cases that a respondent intentionally attempted to attract internet searchers for commercial gain).
In, AllianceBernstein, supra, the respondent registered the domain name <allaincebernstein.com>, which was almost identical to complainant’s ALLIANCEBERNSTEIN mark. The domain name led to a search directory website with links to third party vendors, including competitors of Complainant. Id. The Panel inferred that the respondent received click-through fees by directing users to various commercial websites through these links and found that the respondent’s use was for commercial gain and was a bad faith use of the domain name under Policy ¶4(b)(iv). Id.
In Brownells, supra, the respondent registered the domain name <brwonells.com>, which the panel found to be nearly identical to the complainant’s mark, with two of the letters in the mark reversed. Id. The respondent’s website offered pay-per-click links to hunting equipment and related items. Id. The Panel found that such listing of links was provided purely for respondent’s commercial gain. Id.
Here, Respondent’s generation of click-through fees from the Domain Names results from pay-per-click links and by itself constitutes commercial gain. Furthermore, and similar to the facts in AllianceBernstein and Brownells, Respondent’s use of the Domain Names and his web sites results in a commercial gain for others by forwarding visitors to third parties. Just as commercial gain was sought for the respondents in the abovementioned cases, commercial gain was sought by Respondent here for himself and the various website owners who are forwarded from the links at the Domain Names. There is no other rational explanation for Respondent having registered and maintained the Domain Names and resolving them to pay-per-click sites with commercial links. Respondent’s use of the Domain Names is commercial because the various companies forwarded from the websites benefit from the subsequent interest and purchases of those who visit the sites. UDRP Panels have held that there only needs to be commercial gain sought by some party for the use to be commercial. See, Focus Do It All Group v. Athanasios Sermbizis, Case No. D2000-0923 (WIPO, 2000) (finding that “[I]t is enough that commercial gain is being sought for someone” for a use to be commercial).
Using a Domain Name that trades upon the goodwill of a complainant for commercial gain is manifest evidence of bad faith under Policy ¶ 4(b)(iv). See Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”).
Finally, Complainant has a world-wide presence as a major automaker. From this and from the close similarity between Complainant’s marks and Respondent’s Domain Names, it is obvious that Respondent had actual knowledge of Complainant’s CHEVROLET and CHEVY marks on January 26, 2016, when he registered the Domain Names. See, Complaint Exhibit A for registration date. The Policy acknowledges that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldwcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and actual knowledge of a complainant’s rights in a mark prior to registering an identical or confusingly similar domain name has often been held to be 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 ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chrvroletcares.com> and <chevycares.com> Domain Names be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
November 19, 2018
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