WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
General Motors LLC v. Vinh Pham
Case No. D2011-0454
1. The Parties
Complainant is General Motors LLC of Detroit, Michigan, United States of America, represented by Abelman Frayne & Schwab, United States of America.
Respondent is Vinh Pham of Davis, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <chevyvolt.org> (“the Domain Name”) is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 9, 2011. On March 10, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On that same day, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on March 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 3, 2011. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 4, 2011.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on April 11, 2011. 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.
4. Factual Background
Complainant, General Motors, is world-renowned as an automotive manufacturing company. Complainant is the successor in interest to all trademarks and related goodwill formally owned by General Motors Corporation, which was founded in 1908. It owns over 1,000 trademark registrations for the trademark CHEVROLET, or trademarks containing CHEVROLET worldwide, including over 40 registrations and pending applications for the trademark CHEVROLET, or marks containing the trademark CHEVROLET in the United States. Complainant also owns over 200 trademark registrations for the trademark CHEVY or trademarks containing CHEVY worldwide (“the CHEVY Mark). And, Complainant owns over 50 trademark registrations and/or pending applications for the trademarks VOLT (“the VOLT Mark”) and CHEVROLET VOLT (“the CHEVROLET VOLT Mark”) worldwide.
In early 2007, Complainant revealed at the North American International Auto Show the concept for the Chevy Volt - an extended range electric vehicle. In 2011, the Chevy Volt was named the 2011 Motor Trend Car of the Year, the 2011 Automobile of the Year by Automobile Magazine, the 2011 North American Car of the Year and the American Council for an Energy-Efficient Economy listed it among the 2011 Greenest Vehicles of the Year.
Complainant conducts business on the Internet, and the trademarks CHEVROLET, CHEVY and VOLT have a strong Internet presence. For example, General Motors operates a website at “www.chevrolet.com” featuring new models, dealer information, current offers, photo galleries, Chevrolet media, Enthusiast sites, History & Heritage, Awards & Accolades and Events. Complainant has a strong Internet presence and owns numerous domain names containing the trademarks CHEVROLET, CHEVY and VOLT. Complainant’s predecessor General Motors Corporation has owned the domain name <chevy.com> since November 5, 1997 and the domain name <chevrolet.com> since December 20, 1994.
General Motors advertises its Chevrolet and Chevy videos on “Youtube”, displays Chevrolet and CHEVY photos on Flickr, and posts Chevrolet and Chevy news updates and events on its website “www.chevrolet.com”. In addition, consumers can become a fan of Chevy on “Facebook”, and download Chevy vehicle wallpaper to their mobile phones from the official Chevrolet website. Complainant has capitalized on the strength of its CHEVY mark and uses the trademark CHEVY on a wide variety of products in addition to automobiles, including but not limited to personal accessories, hats, clothes, car accessories, Die Cast & Collectibles, furniture, posters, tool boxes, watches and clocks and neon signs.
Complainant has sold and continues to sell an extensive number of Chevrolet vehicles in the United States and worldwide. As a result of long, continuous and extensive use, advertising, and promotion of the CHEVROLET and CHEVY trademarks, and the commercial success of Chevrolet automobiles and products, the CHEVROLET and CHEVY marks are well-known trademarks.
On March 7, 2007, Respondent registered the Domain Name <chevyvolt.org>.
5. Parties’ Contentions
Here is a summary of Complainant’s contentions.
The Domain Name <chevyvolt.org> is confusingly similar to the trademarks CHEVY, VOLT, and CHEVROLET VOLT. The first element of the domain name incorporates the trademark CHEVY and the second element of the domain name incorporates the trademark VOLT. Also, the Domain Name is identical to Complainant’s trademarks “CHEVY”, VOLT” and “CHEVY VOLT”. The only difference between the former and the latter is the addition of the generic top-level domain (gTLD) ".org" to the Domain Name, which is without legal significance. The trademark CHEVY is so well-known to consumers that they will assume that a domain name containing the word “chevy” is that of or associated with Complainant. As the trademark CHEVY has no meaning in English other than in relation to its goods and services, the Domain Name is calculated to confuse or deceive, as it falsely suggests its services are those of Complainant.
To the best knowledge of Complainant, Respondent has no right or legitimate interest in the domain name <chevyvolt.org>. Respondent has not received any license or consent, express or implied, to use the trademarks CHEVY and VOLT in a domain name or in any other manner from Complainant, nor has Complainant acquiesced in any way to such use or application of the trademarks CHEVY and VOLT by Respondent. Indeed, at no time did Respondent have authorization from Complainant to register the domain name <chevyvolt.org>. On information and belief prior to Respondent’s registration of the Domain Name, Respondent did not use CHEVY, VOLT or any other marks containing CHEVY and/or VOLT as a trademark, company name, business or trade name. Thus, Respondent is not otherwise commonly known in reference to CHEVY, VOLT, and/or CHEVYVOLT.
Before commencing this UDRP proceeding, on November 4, 2010, Complainant’s attorney sent a letter to the Administrative contact concerning the domain name <chevyvolt.org>. The letter was sent to the e-mail address and mail address as provided in the Whois record for the Domain Name. No response was received. At first glance the website “www.chevyvolt.org” appears to be operating as a fan site. The website contains articles, pictures, and vehicles specs with respect to the Chevy Volt. However, the website is not limited to discussions and/or forums about the Chevy Volt. If a visitor to the website clicked on the heading/category “Electric Cars”, the visitor would have access to articles and information regarding the “Nissan Leaf”, “Tesla Roadster” and the “Toyota Rav4EV”. One would not expect to see a competitor’s products discussed in a favorable light on a “fan site”, the purpose of which is to promote one particular product and/or brand. Operating a fan site has not generally been regarded as a “legitimate interest” under the Policy.
Respondent is also using the Domain Name for commercial purposes. The website “www.chevyvolt.org” is currently associated with links to Google pay-per-click advertising for an array of goods and services including Complainant’s products and those of its competitors. By clicking on some of the links, the Internet user is directed to several advertisements and other commercial sites. Using a well-known trademark as a domain name to link to pay-per-click advertising websites is evidence that Respondent deliberately seeks to capitalize on the identity or close similarity of the domain name to Complainant’s trademarks and to gain revenue there from. From Respondent’s use of the Domain Name it may be inferred that Respondent’s purpose for setting up the website was to gain business by portraying to be associated with Complainant.
Respondent registered the Domain Name on March 7, 2007. At this time, the trademarks CHEVY and CHEVROLET were well-known among the automotive industry and consumers throughout the world. Moreover, in January 2007, the Chevy Volt concept was revealed. In view of the above, it may be inferred that at the time Respondent registered the Domain Name, Respondent was aware of Complainant’s trademark rights in respect of the marks CHEVY, CHEVROLET and VOLT. Based upon the numerous trademark registrations for the marks CHEVY, CHEVROLET, and VOLT, and the fame, goodwill and notoriety associated with the CHEVY and CHEVROLET marks, it is impossible to conceive of a circumstance in which Respondent could legitimately use the Domain Name without creating a false impression of association with Complainant.
Complainant’s predecessor General Motors Corporation adopted and has used the trademarks CHEVROLET and/or CHEVY for over 95 years, and has used the trademark VOLT since 2007. Such adoption and use of these trademarks precedes the registration date of the Domain Name. It can be inferred that Respondent had notice of the CHEVY and CHEVROLET trademarks at the time when it registered the Domain Name. It may also be inferred that Respondent knew of the new vehicle concept, the Chevy Volt, which was revealed in January 2007 at the time when it registered the Domain Name. Further, CHEVY and CHEVROLET are distinctive trademarks. The marks have no meaning other than as a reference to Complainant and Complainant’s goods. In view of this, it can be inferred that the Domain Name would not have been registered but for the renown of the trademarks. This gives rise to the presumption that Respondent does not have any right or legitimate interest in the Domain Name.
Because of the famous and distinctive nature of the CHEVY and CHEVROLET trademarks, Respondent, who is purportedly located in the United States, is likely to have had constructive notice as to the existence of Complainant’s trademarks CHEVY and CHEVROLET at the time Respondent registered the domain name. Moreover, it is likely Respondent had constructive notice of the new vehicle concept, the Chevy Volt, which was revealed in January 2007. Such constructive notice suggests that the Respondent acted with opportunistic bad faith in registering the Domain Name. Respondent uses the Domain Name to divert Internet traffic to its pay-per-click search engine, and has thus attempted to attract, for commercial gain, Internet users to its website. As such, it may be inferred that Respondent intentionally registered the Domain Name to trade-off the goodwill and reputation of Complainant. The crucial issue is whether Respondent’s “fan site” is commercial or non-commercial. When a fan site is used for monetary gain, the domain name has been regarded as used in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that a complainant prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Based on Complainant's uncontested evidence regarding its use of the CHEVY, VOLT and CHEVROLET VOLT Marks in the United States before Respondent registered the Domain Name, and Complainant’s United States trademark registration for the CHEVY Mark, the Panel concludes that Complainant has rights in these Marks.
The Domain Name <chevyvolt.org> incorporates in its entirety a combination of Complainant's CHEVY and VOLT Marks. Where a domain name incorporates complainant's marks, this is sufficient to establish that the domain name is identical or confusingly similar for purposes of the Policy. See Société des Produits Nestlé SA v. Stuart Cook, WIPO Case No. D2002-0118; Vivendi S.A., The Seagram Company Ltd., Joseph E. Seagram & Sons, Inc., Universal Studios, Inc., and Universal City Studios, Inc. v. Yu Fu Zhao (aka Tyou Star) ("Zhao"), WIPO Case No. D2000-0717. The only difference between the Domain Name and the Marks is the addition of the generic top-level domain (gTLD) ".org", which is without legal significance. See CBS Broadcasting Inc. v. Worldwide Webs, Inc., WIPO Case No. D2000-0834.
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
Complainant asserts that Respondent cannot have any legitimate interest or rights in the Domain Name because: (1) (to the best of its knowledge) Respondent has not been commonly known by the Domain Name; (2) Respondent is not making a legitimate noncommercial use of the Domain Name without intent for commercial gain because the Domain Name is being used on a site that contains hyperlinks to third-party sites, many offering competitive products and services, from which Respondent derives click-through revenue; and (3) Respondent's use of the Domain Name has not been in connection with a bona fide offering of goods or services, rather with an infringing one.
Complainant's facts, without contrary evidence from Respondent, are sufficient to permit a finding in Complainant’s favor on this issue. Alcoholics Anonymous World Services, Inc. v. Lauren Raymond, WIPO Case No. D2000-0007.
For the foregoing reasons, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
By failing to submit a Response, Respondent has failed to invoke any of the circumstances that could demonstrate it did not register and use the Domain Name in bad faith.
Respondent registered the Domain Name on March 7, 2007, many years after Complainant began using the CHEVY Mark and months after Complainant announced the new vehicle concept for its Chevrolet/Chevy Volt car at the auto show in early 2007. Given Complainant's widespread and long-term use of the registered CHEVY Mark as well as its use of the VOLT Mark and the CHEVROLET (CHEVY) VOLT Mark for its then newly announced concept car, before Respondent registered the Domain Name, the Panel finds it is highly unlikely Respondent was unaware of these marks when it registered the Domain Name. Moreover, there is no evidence of record that Respondent had a legitimate interest in the CHEVY, VOLT, or CHEVROLET VOLT Marks before registering the Domain Name. The only evidence of record shows that Respondent used the Domain Name for its own commercial purposes. Thus, the Panel concludes that Respondent registered the Domain Name in bad faith.
With regard to bad faith use, Respondent is using a domain name that is confusingly similar to Complainant's marks to host a site having links to Google pay-per-click advertising for an array of goods and services including Complainant’s products and those of its competitors. The Panel concludes that by using the Domain Name in this manner, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant's marks as to the source, sponsorship, affiliation or endorsement of such site or the products or services advertised on such site, within the meaning of paragraph 4(b)(iv) of the Policy. Advance Magazine Publishers Inc. v. Red Wagon Films, WIPO Case No. D2006-0893. Even if the users who access Respondent's website may conclude that it is not what they were originally looking for, Respondent has already succeeded in its purpose of using Complainant's mark to attract users for commercial gain. See Red Bull GmbH v. Unasi Management Inc., WIPO Case No. D2005-0304.
For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <chevyvolt.org> be transferred to Complainant.
Harrie R. Samaras
Dated: April 25, 2011