General Motors LLC v. Hylton Jorssen dba S2Solutions
Claim Number: FA1605001675465
Complainant is General Motors LLC ("Complainant"), represented by Anessa Owen Kramer of Honigman Miller Schwartz and Cohn LLP, Michigan, USA. Respondent is Hylton Jorssen dba S2Solutions ("Respondent"), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gmconnects.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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 17, 2016; the Forum received payment on May 17, 2016.
On May 18, 2016, GoDaddy.com, LLC confirmed by email to the Forum that the <gmconnects.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 May 18, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 7, 2016 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@gmconnects.com. Also on May 18, 2016, the Written Notice of the Complaint, notifying Respondent of the email 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 June 7, 2016.
On June 14, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin as Panelist and so notified the Parties on that date.
The Forum received an Additional Submission from Complainant on June 15, 2016, after the deadline provided by the Forum's Supplemental Rule 7. Under the circumstances the Panel declines to consider the substance of Complainant's Additional Submission.
Also on June 15, 2016, the Forum received a joint request from the Parties (dated June 14, 2016) to stay this proceeding for 45 days pending a possible settlement of the matter. As the Panel had already prepared a draft of this decision and submitted it to the Forum at that time, the request for a stay is denied.
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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant is one of the world's largest automakers, and has sold vehicles under the GM mark since at least as early as 1933; the mark is the subject of numerous registrations in the United States and other jurisdictions.
Respondent is the registrant of the disputed domain name <gmconnects.com>, registered in October 2010. Complainant states that Respondent has never been a licensee of Complainant and has never been authorized by Complainant to use the GM mark.
Respondent uses the disputed domain name for a website that provides links to Complainant's websites and contains content that implies an affiliation with Complainant. Complainant asserts that the domain name and website are tarnishing, diluting, and infringing upon Complainant's mark and associated goodwill, and that the website "does not contain any legitimate offering of products or services." Compl. at ¶ 32.
Complainant states further that the links contained on Respondent's website are broken and the vehicle tracking service on the website is not functional. Complainant asserts that Internet users attempting to use the website will believe that it is associated with Complainant and its lack of functionality will reflect poorly on Complainant. Complainant further asserts that Respondent is using the domain name to divert Internet users to its website and away from Complainant's own websites, disrupting Complainant's business.
On the above grounds, Complainant contends that the disputed domain name <gmconnects.com> is confusingly similar to Complainant's GM mark; that Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent states that it used the disputed domain name "to enhance the buying experience of the General Motors customer." Respondent states the website was operated with Complainant's knowledge, and that Respondent communicated with Complainant's senior management and used data provided by Complainant. In support thereof, Respondent provided an Excel spreadsheet entitled "Annex A Example of data provided to us by General Motors" that appears to contain vehicle order numbers and related data from September 2010; and a copy of a letter dated November 12, 2010, from Respondent's counsel to a marketing director for Complainant proposing that the parties enter into a business relationship. Respondent claims that it developed the website "in good faith with the goal of establishing a working relationship" with Complainant, and that transferring the domain name would confer an unfair benefit to Complainant as a result of Respondent's six years of work on the website. Other than the filename, the spreadsheet does not contain any indication of its source or intended recipient, and the letter does not include any reference to the disputed domain name or any indication that it was received or acknowledged by Complainant.
Respondent notes that its website clearly stated that it was not part of Complainant: "GMConnects was established by a group of car enthusiasts who decided to get together and help other car enthusiasts track their car through the order and delivery process. . . . GMConnects is now wholly owned by Denver based 2CSolutions LLC."
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and has been used 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.
The disputed domain name is comprised of Complainant's well-known GM mark, the generic term "connects," and the ".com" top-level domain. Complainant contends that it is confusingly similar to its GM mark, and Respondent does not dispute this contention. The Panel so finds.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
Complainant has satisfied its initial burden; the issue is therefore whether Respondent has met its burden of production. It appears to the Panel that Respondent used the disputed domain name for a website that offered to provide order tracking information to Complainant's customers, and that Respondent on at least one occasion communicated with Complainant regarding its plans for the site. However, it is curious that, at least in the correspondence provided to the Panel, Respondent neglected to make any mention of the domain name containing Complainant's GM mark that Respondent had registered only one month earlier. Furthermore, there is no indication that Complainant ever responded to Respondent's entreaty nor that it acquiesced in Respondent's use of its mark. The website does not appear to be operational at present, and Respondent does not dispute Complainant's allegations that the website previously contained broken links and a nonfunctional vehicle tracking service.
Under the circumstances, the Panel concludes that Respondent has failed to come forward with concrete evidence of rights or legitimate interests, and that Complainant has met its burden of proving that Respondent lacks rights or legitimate interests in the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] 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 or service on [Respondent's] web site or location."
The Panel accepts Respondent's assertion that it developed its tracking service in good faith, and that it at least attempted to communicate with Complainant regarding its desire for a business relationship. However, Respondent does not appear to have communicated with Complainant regarding its use of a domain name containing Complainant's mark for that purpose. There is no evidence that Complainant ever agreed to enter into any sort of relationship with Respondent, or that it acquiesced in Respondent's registration or use of a domain name incorporating Complainant's mark.
In the Panel's view, Respondent has used the domain name in a manner likely to attract Complainant's customers by creating a likelihood of confusion with the mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website; and the domain name was registered for this purpose. The Panel therefore finds bad faith registration and use under paragraph 4(b)(iv) of the Policy.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gmconnects.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: June 15, 2016
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