WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
General Motors LLC v. Mel Light / Domains By Proxy, Inc
Case No. D2011-2176
1. The Parties
The Complainant is General Motors LLC of New York, New York, United States of America (“United States”), represented by Abelman Frayne & Schwab, United States of America.
The Respondent is Mel Light of Los Angeles, California, United States, and Domains By Proxy, Inc. of Scottsdale, Arizona, United States.
2. The Domain Name and Registrar
The disputed domain name <chevyextendedwarranty.com> (the "Disputed Domain Name") is registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2011. On December 12, 2011, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the Disputed Domain Name. On December 13, 2011, GoDaddy.com, LLC 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 December 20, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 20, 2011. 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 December 22, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 11, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 18, 2012.
The Center appointed Neil, J. Wilkof as the sole panelist in this matter on March 1, 2012. 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
The Disputed Domain Name registration at issue is <chevyextendedwarranty.com>, registered on June 18, 2010. The Disputed Domain Name is registered in the name of Mel Light of Los Angeles, California, United States.
Annex 5 to the Complaint contains a summary report of over 200 registrations of the CHEVY mark, or marks that contain the CHEVY mark, throughout the world, as of December 7, 2011, including the following United States registrations (hereinafter also referred to as: “the Mark”).
Registration No. 1494385, for CHEVY in class 28.
Registration No. 2308986, for CHEVY in class 25.
Registration No. 2357128, for CHEVY in class 16.
Registration No. 2649537 for CHEVY TRUCKS in class 20.
Registration No. 2543117 for CHEVY TRUCKS in class 21.
Registration No. 2609931 for CHEVY TRUCKS in class 25.
Registration No. 2555071 for CHEVY TRUCKS EMBLEM in class 6.
Annex 6 to the Complaint contains copies of some of the registrations set out in Annex 5, including registration number 2649537 and registration number 2609931. Based upon an inspection by the Panel of the on-line data base of the United States Patent and Trademark Office, registration extracts for the other United States registrations set out above were found. The Panel carry out such limited factual research into matters of public record ("WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0")", paragraph 4.5).
5. Parties’ Contentions
The Complainant is the successor-in-interest to all of the trademarks and related goodwill owned by the General Motors Corporation, which was founded in 1908. The Complainant, through General Motors Corporation, is a world-renown automotive company and it is among the world’s largest companies in the automobile industry. The Complainant today manufactures cars and trucks in 34 countries and it employs approximately 244,500 people engaged in the sale and servicing of vehicles in 140 countries. The largest markets for the Complainant are the United States, followed by China, Brazil, the United Kingdom of Great Britain and Northern Ireland, Canada, Russian Federation and Germany.
Since the Chevrolet automotive company joined General Motors in 1918, the name CHEVROLET, also known as CHEVY, has been identified with style, performance and innovation in the automotive industry. Among the milestones of the Complainant is the introduction of the first 6-cylinder engine; innovations such as vacuum spark control, manifold heat control, no draft ventilation, and anti-lock brakes, and development of an extended range electric vehicle (The CHEVY VOLT). The Complainant has enjoyed significant sales of CHEVROLET vehicles since its inception nearly a century ago, already reaching one million units in sales in 1923. Annex 13 to the Complaint sets out a sampling of the Complainant's world-wide vehicle sales for the years 2005 – 2009. These sales have been supported by extensive and long-term marketing and advertising and the CHEVROLET and CHEVY names have been the subject of some of America's most distinctive advertising campaigns.
The Complainant has benefited from the strength of its CHEVROLET and CHEVY marks not only with respect to vehicles and related services, but also to a wide variety of other products, including personal accessories, hats, clothes, car accessories, die cast and collectibles, furniture, posters, tool boxes, watches and clocks and neon signs. Annex 12 of the Complaint contains copies of printouts of such products from the website “www.chevymall.com”. Based on the long-standing and extensive success enjoyed by the CHEVROLET and CHEVY marks, these marks have become among the most well-known trademarks in the automotive industry and to consumers throughout the world.
The Complainant states that on November 22, 2011, prior to commencing this UDRP proceeding, the Complainant’s attorney sent a letter to the administrative contact concerning the Disputed Domain Name. The letter was sent to the e-mail address as provided in the Whois record for the Disputed Domain Name <chevyextendedwarranty.com>. No response was received. A copy of both the email and letter are attached as Annex 18 to the Complaint.
The Complainant states that the Disputed Domain Name is currently used by the Respondent "in relation to the offering of services not authorized by the Complainant. The website offers CHEVY extended warranties for CHEVY vehicles. The website contains the word mark CHEVY as well as the well-known CHEVROLET LOGO. Visitors to the website “www.chevyextendedwarranty.com” will be confused into thinking that these services are those of or associated with the Complainant. By doing so, it may be inferred that the Respondent has deliberately attempted to deceive visitors to the website that the services offered on the website are those of the Complainant."
Based on the foregoing, the Complainant alleges the following:
1. The Disputed Domain Name is confusing similar to the Mark.
2. The Respondent has no rights or legitimate interests in the Disputed Domain Name.
3. The Disputed Domain Name was registered and has been used in bad faith.
The Respondent did not reply to the Complainant’s contentions. Therefore, the Panel may accept all reasonable allegations set forth by the Complainant as true and accurate.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Respondent has failed to respond to the Complaint. Therefore, the Panel may accept all reasonable allegations set forth by the Complainant as true and accurate.
Based on the registrations and extensive use of the CHEVY mark in the name of the Complainant, the Panel rules that the Complainant has established rights in the Mark.
In determining whether there is confusing similarity between a domain name and a mark with respect to paragraph 4(a)(i) of the Policy it is a well-established principle that special attention should be paid to the mark as compared to the dominant part of the domain name. As the panel in Dr. Ing. H.c.F. Porsche AG v. Vasily Terkin, WIPO Case No. D2003-0888, noted, "a domain name that wholly incorporates a Complainant's registered mark may be sufficient to establish confusingly similarity for purposes of the UDRP.” The panel in the case of Dr. Ing. H.c.F. Porsche AG, supra further noted that “[t]he fact that the word “auto parts” is added to the Complainant's trademark does not eliminate the identity, or at least the similarity, between Complainant's trademark and the disputed name, as “auto parts” is a descriptive component of the disputed domain name.” Moreover, it is well-established that the presence of the top level domain (TLD) “.com” is not relevant in comparing a domain name to a trademark.
The Disputed Domain Name fully incorporates the Mark CHEVY together with the ordinary English words “extended” and “warranty”. In such a circumstance, this combination of the words "chevyextendedwarranty" is confusingly similar to the mark CHEVY. As stated by the Panel in Sony Kabushuki Kaisha v. Inja, Kil, WIPO Case No. D2000-1409, “neither the addition of an ordinary descriptive word nor the suffix“.com” detracts from the overall impression of the dominant part of the name, namely the trademark SONY”. That is the case in the instant situation.
For the foregoing reasons, the Panel rules that the Disputed Domain Name is confusingly similar to the Mark.
B. Rights or Legitimate Interests
Here, as well, the Respondent has failed to respond to the Complaint. Therefore, the Panel may accept all reasonable allegations set forth by the Complainant as true and accurate. The Panel finds that the Complainant has carried its burden of proof on this element and has demonstrated a prima facie case that the Respondent has no rights or legitimate interests.
The Respondent does not use the Disputed Doman Name in connection with a bona fide offering of goods or services. There is no evidence that the Respondent has registered any mark that consists of, or contains, the Mark, or any material portion thereof. There is no evidence that the Complainant has entered into any agreement, authorization or license with the Respondent with respect to the use of the Mark. The name of the Respondent bears no resemblance to the Disputed Domain Name nor is there any basis to conclude that the Respondent is commonly known by the Mark or the Disputed Domain Name. Having regard to the three suggested grounds set out in paragraph 4(c) of the Policy, on the basis of which a respondent may support a claim that it has rights or legitimate interests in the domain name, the Respondent has not submitted any Response to support such a claim.
Based on the foregoing, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
C. Registered and Used in Bad Faith
Here, as well, the Respondent has failed to respond to the Complainant. Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that point to bad faith conduct on the part of the Complainant, as follows:
(i) Circumstances indicate that the Respondent has registered the Disputed Domain Name primarily to sell or otherwise transfer it to the Complainant who is the owner of the trademark or to a competitor of the Complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Disputed Domain Name.
(ii) The Disputed Domain Name has been registered to prevent the Complainant from reflecting its Mark in a corresponding domain name.
(iii) The Disputed Domain Name has been registered primarily for the purpose of disrupting the business of a competitor.
(iv) The use of the Disputed Domain Name indicates an intention to attract Internet users to the Respondent’s website, for commercial gain, by creating a likelihood of confusion with the Complainant’s Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Panel believes that the circumstances described in subsection 4(b)(iv) above of the Policy apply in this case and, as such, support the conclusion that the Respondent has acted in bad faith. In the Respondent’s choice and use of the Disputed Domain Name, the Panel is of the view, based on the particular circumstances of this case, that the Respondent is likely attempting to attract Internet users to the Respondent’s website by attempting to create a false association, sponsorship or endorsement with or of the Complainant. In this case, the Respondent seeks to create a false impression that its offer for an "extended warranty plan" for CHEVY vehicles is connected with the Complainant. In so doing, it is acting in a bad-faith manner in exploiting the goodwill and reputation of the Complainant and the Mark for the purpose of the Respondent’s commercial gain.
In this Panel’s view, the Respondent has presumed knowledge of the Mark and the rights of the Complainant therein. This is shown inter alia by the notice at the bottom of the webpage that is associated with the Disputed Domain Name, which states that "[t]he Chevy names and logos are trademarks owned by General Motors." LLC, In such a situation, when the Respondent adopted the Mark as the principal component of the Disputed Domain Name, this was adopted in bad faith in order to exploit the rights of the Complainant in the Mark.
This conclusion is not changed by the fact that the Respondent has included the following disclaimer at the bottom of the web page that is associated with the Disputed Domain Name.
"ChevyExtendedWarranty.com is an independent website about Chevy Extended Warranties and is not sponsored by or in any way affiliated with Chevy."
"3.5 What is the role of a disclaimer on the web page of a disputed domain name?
Consensus view: The existence of a disclaimer cannot by itself cure bad faith, when bad faith has been established by other factors. This is typically explained by UDRP panels with reference to the probability of Internet user "initial interest confusion" - by the time such user reaches and reads any disclaimer under the domain name, any registrant objective of attracting visitors for financial advantage to its website through use of the trademark in the domain name will generally have been achieved. A disclaimer can also show that the respondent had prior knowledge of the complainant's trademark. However a disclaimer, especially if it is sufficiently clear and prominent, may sometimes be found to support other factors indicating good faith or legitimate interest" (Relevant decisions omitted).
Here, the disclaimer is not set out in a manner that makes it "sufficiently clear and prominent" so as to overcome the "initial interest confusion" engendered by the adoption and use of the Disputed Domain Name. Much of the text on the webpage is presented in a font size larger than that of the disclaimer. As such, there is no assurance that a disclaimer placed on the bottom of the website, in the manner as done so by the Respondent, will necessarily be noticed and even if it is noticed, a potential customer may not read or understand it.
An inspection of the web page by the Panel does not find any other indicia that support that the Respondent has acted in good faith in its selection of the Disputed Domain Name. Indeed, the copyright notice found at the bottom of the web page reinforces that the conclusion that the Disputed Domain Name has been selected in bad faith. The copyright notice states follows:
"© Copyright 2012 | Chevy Extended Warranty – Chevy Extended Warranties"
The fact is that the Respondent has chosen to name the copyright holder by reference to the Mark further supports the conclusion that the Respondent has acted in bad faith.
As stated by the Complainant in paragraph 33 of the Complaint, "[t]he Respondent could have just as easily registered the domain name <vehicleextendedwarranties.com>, <autoextendedwarranty.com>, etc. It is not necessary to use the Complainant’s CHEVY trademark in the domain name." The Panel concurs with this view. In circumstances such as those described above, the Panel believes that the Respondent has made out a prima facie case for "initial interest confusion."
"Does ownership of a registered trademark to which the domain name is identical or confusingly similar automatically satisfy the requirements under paragraph 4(a)(i) of the UDRP?
Consensus view: If the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights. The location of the trademark, its date of registration (or first use) [see also paragraph 1.4 below], and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP. However, such factors may bear on a panel's determination whether the respondent has registered and used the domain name in bad faith under the third element of the UDRP” (relevant decisions omitted).
From an inspection of the webpage that is associated with the Disputed Domain Name, it does not appear that the services offered are targeted to a non United States-based audience. However, in reviewing the list of registered trademarks for the CHEVY mark in the United States, as set out in Annex 5 of the Complaint, the Panel does not find any registered marks for the mark in international class 12, which most directly covers automobiles and related products, or for related services, such as warranties for automobile vehicles. It is true that the Complainant has registered the mark in class international 12 in other countries but, as noted, it does not appear that the services offered by the Disputed Domain Name are being targeted for consumers outside of the United States.
The Panel would have preferred that the Complainant be more forthcoming in the presentation of its evidence, especially with respect to its rights in the CHEVY (as opposed to the CHEVROLET) mark in the United States. Nevertheless, based on the totality of the evidence regarding trademark registrations for the Mark, and having regard to the extensive use of the CHEVY mark in the United States since the early 1920's, the Panel is of the view that the Mark has obtained wide-spread recognition and notoriety in the United States. This is also seen by the notice provided by the Respondent in which it acknowledges the Complainant's rights in the Mark, as noted above. Accordingly, the Panel is of the view that the apparent lack of a registration for the CHEVY mark in the United States in international class 12 does not alter the Panel's conclusion that the Respondent has acted in a bad faith manner in its registration and use of the Disputed Domain Name.
For 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, <chevyextendedwarranty.com>, be transferred to the Complainant.
Neil J. Wilkof
Dated: March 15, 2012