WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
General Motors LLC v. desgate
Case No. D2012-0451
1. The Parties
The Complainant is General Motors LLC of Detroit, Michigan, United States of America, represented by Abelman Frayne & Schwab, United States.
The Respondent is desgate of Dubai, United Arab Emirates.
2. The Domain Name and Registrar
The disputed domain name <cadillacuae.com> is registered with Name.com LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2012. On March 7, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 7, 2012, the Registrar transmitted by email to the Center its verification response confirming that the 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 9, 2012. In accordance with paragraph 5(a) of the Rules, the due date for Response was March 29, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 17, 2012.
The Center appointed Brigitte Joppich as the sole panelist in this matter on April 18, 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 paragraph 7 of the Rules.
4. Factual Background
The Complainant is an automotive manufacturing company and is among the world’s largest automakers. General Motors is the successor in interest to all trademarks and related goodwill formally owned by General Motors Corporation, which was founded in 1908. The Complainant today employs over 240,000 people around the world, and sells and services vehicles in approximately 140 countries. With global headquarters in Detroit, the Complainant manufactures cars and trucks in 34 countries.
The Complainant owns over 500 trademark registrations for the trademark CADILLAC, or trademarks containing CADILLAC worldwide, inter alia United Arab Emirates trademark registration No. 130187 CADILLAC with priority of March 30, 2008, and European Community trademark registration No. 02351922 CADILLAC with priority of August 24, 2001 (hereinafter referred to as the “CADILLAC Marks”). Furthermore, the Complainant operates a website at “www.cadillac.com” featuring new models, dealer information, current offers, photo galleries, merchandise, Cadillac media, enthusiast sites, history and heritage, awards and accolades and events. The CADILLAC Marks have already been found to have “worldwide fame” and to be “well-known” by previous UDRP panels (cf. General Motors LLC v. Shenzhen Belding Golf Planning Co.,ltd, WIPO Case No. D2009-1781 (<cadillacgolf.com>); General Motors LLC v. Cann, Jay, WIPO Case No. D2009-1789 (<cadillacarmor.com>)).
The disputed domain name was registered on July 11, 2008 and is used to re-direct Internet users to the website available at “www.cadillacme.com”, which is owned by one of the Complainant’s affiliated companies, General Motors Overseas Distribution Corporation.
On January 13, 2012, the Complainant’s attorney sent a letter to the administrative contact concerning the disputed domain name. The letter was sent to the email address listed in the WhoIs record for the disputed domain name only as the mailing address appeared to be a fake address. The Complainant’s attorney did not receive a response.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The Complainant contends that the disputed domain name is confusingly similar to the CADILLAC Marks, one of the most well-known trademarks in the automotive industry and to consumers throughout the world, as it incorporates the CADILLAC Marks in their entirety and as the country abbreviation “UAE” (United Arab Emirates) and the generic top level domain (gTLD) “.com” are not sufficient to hinder a finding of confusing similarity.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name as it has not received any license or consent, express or implied, to use the CADILLAC Marks in a domain name or in any other manner from the Complainant, as the Complainant has not acquiesced in any way to such use or application of the trademark CADILLAC by the Respondent, as the Respondent did not use CADILLAC or any other marks containing CADILLAC as a trademark, company name, business or trade name, as the Respondent does not use the disputed domain name in connection with a bona fide offering of goods and services but to re-direct visitors to the website available at “www.cadillacme.com”, which is owned by one of the Complainant’s affiliated companies, General Motors Overseas Distribution Corporation, which is located in the United Arab Emirates, and as, based upon the numerous trademark registrations for the mark CADILLAC and the fame, goodwill and notoriety associated with the CADILLAC Marks, it is impossible to conceive of a circumstance in which the Respondent could legitimately use this disputed domain name without creating a false impression of association with the Complainant.
(3) With regard to bad faith, the Complainant contends that the Respondent is likely to have had constructive notice as to the existence of the Complainant’s trademark at the time the Respondent registered the disputed domain name because of the famous and distinctive nature of the CADILLAC Marks and that the Respondent is preventing the Complainant from using its trademark and advertising its CADILLAC vehicles in the United Arab Emirates in an efficient and consumer friendly manner, that the Respondent has intentionally attempted to create a false association, sponsorship or endorsement with or of the Complainant under paragraph 4(b)(iv) of the Policy and that the registration of a domain name containing well-known trademarks by a person and/or company with no connection to that trademark amounts to opportunistic bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the Complainant’s trademark; 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
The disputed domain name fully incorporates the Complainant’s highly distinctive and well-known CADILLAC Marks.
The additional word “uae” is the acronym of the United Arab Emirates and therefore a geographical identifier. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of geographical identifiers, such as “uae” (cf. DaimlerChrysler AG v. Kotobi Group c/o Mohammad Hossein Erfani a/k/a None, NAF Claim No. 301767 (<daimlerchrysler-uae.com>, <daimlerchrysleruae.info> at al.); Skype Limited v. Hosterix.com c/o Ramin Behzadi, NAF Claim No. 960654 (<skypeforuae.com>)).
Furthermore, it is well established that the generic top level domain name is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the respondent of the dispute, the use by the respondent of, or 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; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of coming forward with evidence of the respondent’s rights or legitimate interests in the disputed domain name will then shift to the respondent.
The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.
The Respondent did not deny these assertions in any way and therefore failed to prove any rights or legitimate interests in the disputed domain name.
Based on the evidence before the Panel, the Respondent’s use of the disputed domain name was not bona fide under the Policy. The Respondent itself does not offer any own goods or services under the disputed domain name or a name corresponding to the disputed domain name but uses the disputed domain name to re-direct Internet users to the website available at “www.cadillacme.com”, which is owned by one of the Complainant’s affiliated companies. Such use does not create rights or legitimate interests under paragraph 4(c)(i) of the Policy.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraphs 4(a)(ii) and 4(c) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the 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 who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out of pocket costs directly related to the domain name; or
(ii) the 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, 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 its website or location.
The Panel is convinced that – more likely than not – the Respondent registered the disputed domain name with full knowledge of the Complainant and its rights in the CADILLAC Marks. The Panel is aware that the Complainant’s distinctive CADILLAC Marks have been used for more than 100 years and that such marks are very well-established because of their long standing and extensive use. It is therefore inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainant’s rights. This finding is supported by the fact that the Respondent has re-directed the disputed domain name to the website of one of the Complainant’s affiliated companies which it would have hardly done without any knowledge of the Complainant and the CADILLAC Marks. The Panel is therefore satisfied that the Respondent registered the disputed domain name in bad faith under paragraph 4(a)(iii) of the Policy.
As to bad faith use, the Panel finds that the Respondent acted in opportunistic bad faith when registering the disputed domain name, as the disputed domain name is so obviously connected with the Complainant and its products that already its very use by the Respondent, which has no connection with the Complainant, clearly suggests the disputed domain name has been selected with a deliberate intent to create an impression of an association with the Complainant (cf. Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226; RapidShare AG, Christian Schmid v. Ali Private Company, Ali Kamran, WIPO Case No. D2010-0610; Société des Hôtels Méridien v. Korea Worldtravel, WIPO Case No. D2005-1215).
Furthermore, by re-directing the disputed domain name to the website of one of the Complainant’s affiliated companies, the Respondent has in all likelihood intentionally attempted to attract, for commercial gain, Internet users to other online location, by creating a likelihood of confusion with the Complainant's mark as set out under paragraph 4(b)(iv) of the Policy. Although it is unusual to re-direct a domain name to a website affiliated to the Complainant, such use interferes with the Complainant’s ability to control the use of its own trademark on the Internet as the Respondent may alter the link at his own will and must therefore also be considered as use in bad faith (cf. Barclays Bank PLC v. Domains By Proxy, LLC and Stake Inc, WIPO Case No. D2012-0300; Barclays Bank PLC v. Afrikhostings, WIPO Case No. D2012-0297; Ameriquest Mortgage Co. v. Jason Banks, WIPO Case No. D2003-0293; Altavista Company v. Brunosousa, aka Bruno Sousa, WIPO Case No. D2002-0109; Harrods Limited v. Shin Jaeho, WIPO Case No. D2004-0353).
Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant has also satisfied the requirements of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <cadillacuae.com> be transferred to the Complainant.
Dated: May 1, 2012