WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
General Motors LLC v. Ni Hao, Two Stooges LLC
Case No. D2012-1205
1. The Parties
The Complainant is General Motors LLC of Detroit, Michigan, United States of America (“United States”), represented by Abelman Frayne & Schwab, United States.
The Respondent is Ni Hao, Two Stooges LLC of Nanjing, Jiangsu, China.
2. The Domain Name and Registrar
The disputed domain name <gmcprotectionplan.com> (the “Domain Name”) is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 13, 2012. On June 14, 19, 20, 21, and 22, 2012, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the Domain Name. On June 15 and 22, 2012, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 22, 2012.
The Center verified that the Complaint and 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 June 25, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 15, 2012. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on July 16, 2012.
The Center appointed Steven A. Maier as the sole panelist in this matter on July 19, 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 Complainant is a major automotive manufacturer headquartered in Detroit, Michigan, United States. It is the successor in business to General Motors Corporation, which was founded in 1908. It is a global business, employing approximately 200,000 individuals worldwide and doing business in 157 countries, with manufacturing operations in 30 of those countries.
The Complainant is the owner of numerous trademark registrations worldwide for the marks GENERAL MOTORS, GM and GMC. Those registrations include, for example, United States trademark number 2459750 for GMC registered on June 12, 2001 in International Class 6 and European Community trademark number 4332607 for GMC registered on April 4, 2006 in International Classes 12, 28 and 37.
The Complainant operates websites at “www.gm.com” and “www.gmc.com”.
An affiliate of the Complainant’s operates a website at “www.gmprotectionplan.com” which offers a mechanical repair protection plan for the Complainant’s vehicles.
The Domain Name was created on October 18, 2010.
At the date of the Complaint, the Domain Name resolved to a website at “www.gmcprotectionplan.com”, being a pay-per-click website containing links to websites offering automotive goods and services, including goods and services offered by the Complainant’s competitors.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant relies on its trade mark rights including its registrations for the mark GMC and the
world-wide consumer recognition of that mark. It contends that “gmc” is the distinctive part of the Domain Name and that the terms “protection” and “plan” are merely descriptive. The term “gmc” has no recognized meaning in English other than to refer to the Complainant and consumers will inevitably assume that the Domain Name is associated with the Complainant.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Complainant has never authorized the Respondent to use its trademark GMC or to register the Domain Name. The Respondent was not known by the term “gmc” prior to the registration of the Domain Name and has not made any use of the Complainant’s mark otherwise in connection with the Domain Name. Nor is the Respondent using the Domain Name in connection with any bona fide offering of goods or services: on the contrary, the use of the Domain Name for a pay-per-click website is evidence of an attempt to capitalize upon and gain revenue from the Complainant’s well-known marks.
The Complainant contends that the Domain Name was registered and is being used in bad faith.
Because of the famous nature of the Complainant’s trademark, the Respondent must be inferred to have had actual or constructive notice of that mark. The Respondent has therefore acted with “opportunistic bad faith” in registering and using the Domain Name. Specifically, the Respondent is using the Domain Name to divert Internet traffic to a pay-per-click website, and has intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. The creation of a false association in this way amounts to bad faith use.
The Complainant requests a transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to succeed in its Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
A. Identical or Confusingly Similar
The Complainant has established that it is the owner of registered trademarks including GMC in numerous territories and that it has acquired substantial goodwill in that mark in the field of automotive products and services. Accordingly the Panel finds that the Complainant has rights in the mark GMC for the purposes of paragraph 4(a) of the Policy. The Panel accepts the Complainant’s contention that the term “gmc” is the distinctive element of the Domain Name and that the elements “protection” and “plan” are essentially descriptive in nature. In the view of the Panel these elements do not detract from the distinctive nature of the mark GMC within the Domain Name, but are suggestive instead of services to be provided by reference to it.
Accordingly the Panel finds that the Domain Name is confusingly similar to a trademark or service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, there are three sets of circumstances in particular (but without limitation) to which a respondent may point to demonstrate rights or legitimate interests in the domain name. These are:
(i) before any notice to the respondent of the dispute, its use 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) that the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) that the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel accepts the Complainant’s submissions with regard to “rights or legitimate interests”. The Respondent has tendered no evidence in this case, and on the evidence available to it the Panel does not consider that any of the above, or any other circumstances which would tend to indicate any rights or legitimate interests of the Respondent in the Domain Name, are present. It is to be inferred from all the circumstances that the Respondent registered and is using the Domain Name with the intention of diverting Internet users who intend to access a website operated or endorsed by the Complainant or its affiliate to a pay-per-click website offering links to providers of goods and services including those of the Complainant’s competitors. This is unfairly to take advantage of the Complainant’s goodwill. To the extent that the Respondent is using the Domain Name to offer goods or services, such offering is not bona fide in the circumstances. There is no evidence that the Respondent has been commonly known by the Domain Name, and the circumstances set out in subparagraph (iii) above plainly do not apply.
The Panel therefore concludes that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
The Panel finds that the conclusions it has reached under “rights or legitimate interests” above are also indicative of bad faith on the part of the Respondent.
In addition, paragraph 4(b)(iv) of the Policy provides that the following circumstance, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your website or location or of a product or service on your website or location.”
The Panel finds that the Respondent’s registration and use of the Domain Name falls within this provision. The Panel also notes the similarity between the Domain Name and the domain name operated by the Complainant’s affiliate <gmprotectionplan.com>. The Panel finds that, by the Respondent’s use of the Domain Name, the Respondent is intentionally attempting to attract Internet users who intend to access a website operated or endorsed by the Complainant or its affiliate to the Respondent’s own commercial website. Further, the Respondent is taking unfair advantage of the Complainant’s goodwill by diverting those Internet users to websites including those operated by the Complainant’s competitors.
The Panel therefore concludes accordingly that the Domain Name was registered and is being used in bad faith.
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 <gmcprotectionplan.com> be transferred to the Complainant.
Steven A. Maier
Date: July 31, 2012