The Complainant is General Motors LLC of Detroit, Michigan, United States of America, represented by Abelman Frayne & Schwab, United States of America.
The Respondent is Isaac Goldstein, unlisted media of Hong Kong, SAR of China.
The disputed domain name <chevycaprice.com> is registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 24, 2010. On March 24, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On March 29, 2010, eNom transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 30, 2010 providing the registrant and contact information disclosed by the Registrar, notifying the Complainant that the Complaint was administratively deficient, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on March 30, 2010. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 31, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 20, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 21, 2010.
The Center appointed Petter Rindforth as the sole panelist in this matter on April 27, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Administrative Panel shall issue its decision based on the Complaint, the Response, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent. The case before the Panel was conducted in the English language.
The Complainant is an automotive manufacturing company and is among the world's largest automakers. Complainant is the successor in interest to all trademarks and related goodwill formally owned by General Motors Corporation which was founded in 1908. Complainant today employs 244,500 people in major regions of the world, and sells and services vehicles in approximately 140 countries. The Complainant manufactures cars and trucks in 34 countries. In 2008, the Complainant and its subsidiaries sold 8.35 million cars and trucks globally.
The Complainant owns over 1000 trademark registrations for the trademark CHEVROLET, or trademarks containing CHEVROLET worldwide. A list of trademarks, as well as samples of Certificates of Registration, including but not limited to U.S. Registration No 0216070 for CHEVROLET (Registered in 1926) and Hong Kong Registration No 19210315 for CHEVROLET (Registered in 1920) is provided as Annex 3 and 4 of the Complaint. Further, the Complainant owns over 200 trademark registrations for the trademark CHEVY, or trademarks containing CHEVY worldwide, including Hong Kong (samples of Certificates of Registration provided as Annex 6 of the Complaint).
The Complainant owns over 30 trademark registrations for the trademark CAPRICE, or trademarks containing CAPRICE worldwide, including Hong Kong (samples of Certificates of Registration provided as Annex 8 of the Complaint).
The “Chevrolet Caprice” and “Caprice Classic” were full sized automobiles produced by the Complainant's predecessor General Motors Corporation in the United States and Canada from 1965 through 1996, and in Mexico from 1977 to 1983. The Complainant has announced that the Caprice will return as a full-size, rear wheel drive police vehicle in 2011.
The Complainant conducts business on the Internet, and the trademarks CHEVROLET, CHEVY and CAPRICE have a strong Internet presence (copies of printouts from “www.chevrolet.com” provided as Annex 12 of the Complaint).
The Respondent registered the disputed domain name on December 15, 2009. No specific information is provided about the Respondent's business activities except for what is stated below by the Complainant.
The Complainant states that CHEVROLET, also known as CHEVY, is one of the most well-known trademarks in the world, and presents in the Complaint the history of the trademark from the formation of the Chevrolet Motor Company in 1911, until today.
The Complainant claims to have a strong Internet presence and refers to numerous registered domain names containing the trademarks CHEVROLET, CHEVY and CAPRICE (domain names listed in annexes 13 – 15 of the Complaint). The Complainant also uses Internet resources such as Youtube, FLICKR and Facebook to advertise the CHEVROLET and CHEVY trademarks.
The Complainant further claims to expend enormous efforts on advertising and promotion of its CHEVROLET vehicles worldwide. As a result of long, continuous and extensive use, advertising, and promotion of the CHEVROLET, CHEVY and CAPRICE trademarks, and the commercial success of Chevrolet automobiles and products, the CHEVROLET, CHEVY and CAPRICE marks have developed an enviable cachet, image and reputation and are well-known trademarks in the automotive industry and to consumers throughout the world.
The Complainant argues that the disputed domain name is confusingly similar to the trademarks CHEVY and CAPRICE, as the first element of <chevycaprice.com> incorporates the trademark CHEVY and the second element incorporates the trademark CAPRICE. The trademarks CHEVY and CAPRICE are so well-known to consumers that consumers will assume that a domain name containing the words “Chevy” and “Caprice” is that of or associated with the Complainant.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name, as the Respondent has no license or other permission from the Complainant to register the disputed domain name, nor is the Respondent commonly known in reference to CHEVY, CAPRICE or “chevycaprice”.
The Complainant states that the Respondent does not use <chevycaprice.com> in connection with a bona fide offering of goods and services. The disputed domain name is currently associated with links to pay-per-click advertising for an array of goods and services, including the Complainant's products and those of its competitors. (Copies provided as Annex 26 of the Complaint). According to the Complainant, the use of a domain name that incorporates a well-known trademark to direct Internet visitors to a website unconnected with the trademark owner cannot constitute use in connection with a bona fide offering of goods and services or otherwise be considered a legitimate interest in a domain name.
Finally, the Complainant accuses the Respondent of having registered and using the disputed domain name in bad faith. The Complainant argues that, because of the famous and distinctive nature of the CHEVY and CAPRICE trademarks, the Respondent, who is purportedly located in Hong Kong, is likely to have had constructive notice as to the existence of the said trademarks at the time the Respondent registered the disputed domain name.
The Respondent uses the disputed domain name to divert Internet traffic to his pay-per-click search engine, and has thus attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant's marks. The website linked to <chevycaprice.com> creates a false association with the Complainant and the Complainant's trademarks. As such, it may be inferred that the Respondent intentionally registered the disputed domain name to trade off the goodwill and reputation of the Complainant.
The Complainant requests, in accordance with paragraph 4(i) of the Policy, that the Administrative Panel issue a decision that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant's contentions.
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
The Complainant is the owner of the trademarks CHEVY and CAPRICE, both having a long and established history as well-known brands for automotive products.
The relevant part of the disputed domain name is “chevycaprice”. The addition of the generic top-level domain “.com” is insufficient to distinguish the disputed domain name from the Complainant's marks.
The disputed domain name is created by a simple combination of the Complainant's well-known trademarks CHEVY and CAPRICE.
Although not identical as such compared to one and each of the said marks, the Panel concludes that the disputed domain name is confusingly similar to both CHEVY and CAPRICE.
The Respondent has apparently no rights to use the Complainant's trademarks, and is not an authorized agent or licensee of the Complainant's products, services or trademarks.
By not submitting a Response, the Respondent has failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interest in the disputed domain name.
As shown by Annex 26 of the Complaint, the Respondent has used the disputed domain name for a website providing links to third party websites offering and promoting, inter alia, used car sale and services, car dealers, etc. As established in a number of UDRP cases under similar circumstances, such use cannot constitute a bona fide use of the disputed domain name pursuant to paragraph 4(c)(i) of the Policy, see Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809 (“Bona fide use does not exist when the intended use is a deliberate infringement of another's rights”). See also Mpire Corporation v. Michael Frey, WIPO Case No. D2009-0258 (stating that “…the Respondent is not connected with the Complainant, but uses the Complainant's mark with an intention to derive advantage from user confusion. Such use by the Respondent is not legitimate use and does not confer any rights in favor of the Respondent”).
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name <chevycaprice.com>.
As concluded above, the Complainant's trademarks CHEVY and CAPRICE are well-known throughout the world and accordingly so also in Hong Kong, the residence of the Respondent. The Respondent must had actual knowledge of the Complainant and its trademark rights at the time the Respondent registered the disputed domain name. See Exxon Mobil Corporation v. Joseph Fisher, WIPO Case No. D2000-1412 (finding that the respondent had actual and constructive knowledge of the complainant's EXXON mark given the worldwide prominence of the mark and thus the respondent registered the domain name in bad faith); see also Robert J. Goodman, Box Brothers Corporation v. Gary Lam, WIPO Case No. D2004-0785 (finding that if the respondent was aware of the complainant or the service mark, it is difficult to avoid the conclusion that the respondent's intention must have been to capitalize on the complainant's goodwill in the service mark).
The Complainant alleges that the Respondent registered the <chevycaprice.com> domain name for the purpose of commercially benefiting from the use of the two marks through the accural of click-through fees earned by the operation of the website that resolves from the disputed domain name.
The Panel finds that the disputed domain name is capable of creating a likelihood of confusion as to the Complainant's affiliation with the disputed domain name and corresponding website, and that this likelihood of confusion is deliberately created by the Respondent – thus acting in bad faith. See F. Hoffmann-La Roche AG v. DOMIBOT, WIPO Case No. D2006-0327.
This Panel also finds that the Respondent's use of the disputed domain name to display hyperlinks to various third-party websites, including some in direct competition with the Complainant, constitutes disruption under paragraph 4(b)(iii) of the Policy and is thus evidence of bad faith registration and use. See EBAY, Inc. v. MEOdesigns and Matt Oettinger, WIPO Case No. D2000-1368 (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).
Accordingly, the Panel concludes that the disputed domain name is registered and used in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <chevycaprice.com> be transferred to the Complainant.
Dated: May 11, 2010