World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

General Motors LLC v. SGC Holdings, LLC

Case No. D2012-2453

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 SGC Holdings, LLC of Palm Beach Gardens, Florida, United States of America, represented by Mr. Rinehart, United States of America.

2. The Domain Name and Registrar

The Disputed Domain Name <corvette2014.com> is registered with GoDaddy.com, LLC. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on December 13, 2012. On December 14, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 14, 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 together with the amendment 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 December 20, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 9, 2013. The Response was filed with the Center on January 9, 2013.

The Center appointed Richard W. Page as the sole panelist in this matter on January 17, 2013. 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 a world-renowned 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. General Motors today employs 209,000 people in major regions of the world, and sells and services vehicles in more than 120 countries. With its global headquarters in Detroit, Michigan, United States, General Motors manufactures cars and trucks in 31 countries. General Motor’s largest national market is the United States, followed by China, Brazil, the United Kingdom of Great Britain and Northern Ireland, Canada, the Russian Federation and Germany.

Throughout most of history, the name “Corvette” has been synonymous with style, performance and innovation in the automotive industry, and is one of the most well-known trademarks in the world.

General Motors owns over 300 registrations for the trademark CORVETTE, or trademarks containing CORVETTE, and the CORVETTE EMBLEM in the United States (collectively the “CORVETTE Mark”).

The CORVETTE is a sports car manufactured by the Chevrolet division of General Motors that has been produced in six generations. The first model, a convertible, was designed by Harley Earl and introduced at the GM Motorama in 1953 as a concept show car. Over the years, the CORVETTE has won numerous awards for its achievements and innovations, which earned CORVETTE the reputation of being one of the most famous trademarks in the world.

General Motors conducts business on the Internet, and the CORVETTE Mark has a strong Internet presence. General Motors advertises its CORVETTE videos on “Youtube”, displays CORVETTE photos on “Flickr”, and posts COREVETTE news updates and events on its website ‘‘www.chevrolet.com’’. In addition, consumers can become a fan of CORVETTE on “Facebook”.

General Motors has capitalized on the strength of its CORVETTE Mark and uses the CORVETTE Mark 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.

General Motors has sold and continues to sell an extensive number of CORVETTE vehicles in the United States and worldwide. Chevrolet automobiles, including the CORVETTE, have an established place in popular culture and songs.

General Motors has a long, continuous and extensive use, advertising and promotion of the CORVETTE Mark and CORVETTE vehicle. General Motors considers the goodwill associated with the CORVETTE Mark to be very valuable asset.

Respondent registered the Disputed Domain Name on October 10, 2009.

5. Parties’ Contentions

A. Complainant

General Motors contends that it has enforceable rights in the CORVETTE Mark. General Motors further contends the Disputed Domain Name is confusingly similar to the CORVETTE Mark because it incorporates the entirety of the CORVETTE Mark with the addition of the non-distinctive number “2014” and the “.com” gTLD.

General Motors argues that Respondent has no rights or legitimate interests in the Disputed Domain Name because Respondent has no license or consent to use the CORVETTE Mark in the Disputed Domain Name or in any other way. General Motors further argues upon information and belief that Respondent is not and has not used the Disputed Domain Name as its company name, trademark or trade name and is not otherwise commonly known by the Disputed Domain Name. General Motors has sent a cease and desist letter to Respondent and explained that use of the CORVETTE Mark is within the sole discretion of General Motors.

General Motors asserts that Respondent has not used the Disputed Domain Name in conjunction with the bona fide offering of any goods or services. General Motors alleges that the Disputed Domain Name is currently a “parking page” with links to pay-per-click advertising including unauthorized reference to General Motors. General Motors further asserts that Respondent had knowledge of the CORVETTE Mark and is intentionally causing confusion among Internet users for Respondent’s own commercial benefit.

General Motors alleges that Respondent has engaged in bad faith registration and use of the Disputed Domain Name under paragraph 4(b)(iv) of the Policy.

B. Respondent

Respondent does not contest General Motors’ assertion that it has enforceable rights in the CORVETTE Mark or that the Disputed Domain Name is confusingly similar to the CORVETTE Mark.

Respondent claims to own Corvette automobiles for decades. Respondent alleges that it was in the process of establishing a fan website with no commercial use to which the Disputed Domain Name would resolve. Respondent further alleges that General Motors has made insufficient allegations that Respondent has no rights or legitimate interests in the Disputed Domain Name.

Respondent further alleges that its registration of the Disputed Domain Name was in good faith under the doctrine of nominative fair use, under the first sale doctrine and under paragraph 4(a)(ii) of the Policy.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

i) that the Disputed 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) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and,

iii) that the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant contends that it has enforceable rights in the CORVETTE Mark. Complainant further contends the Disputed Domain Name is confusingly similar to the CORVETTE Mark because it incorporates the entirety of the CORVETTE Mark with the addition of the non-distinctive number “2014” and the “.com” gTLD.

Respondent has not contested the trademark rights of Complainant or the assertion that the Disputed Domain Name is confusingly similar to the CORVETTE Mark. Therefore, the Panel finds that the Disputed Domain Name is confusingly similar to the CORVETTE Mark pursuant to paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Complainant argues that Respondent has no rights or legitimate interests in the Disputed Domain Name.

Paragraph 4(a)(ii) requires Complainant to prove that Respondent has no rights to or legitimate interests in the Disputed Domain Name. Once a Complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270.

The Policy paragraph 4(c) allows three nonexclusive methods for the Panel to conclude that Respondent has rights or legitimate interests in the Disputed Domain Name:

(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are 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.

Complainant alleges that Respondent has no license or consent to use the CORVETTE Mark in the Disputed Domain Name or in any other way. Complainant further argues upon information and belief that Respondent is not and has not used the Disputed Domain Name as its company name, trademark or trade name and is not otherwise commonly known by the Disputed Domain Name.

Complainant asserts that Respondent has not used the Disputed Domain Name in conjunction with the bona fide offering of any goods or services. Complainant alleges that the Disputed Domain Name is currently a “parking page” with links to pay-per-click advertising including unauthorized reference to Complainant. Complainant further asserts that Respondent had knowledge of the CORVETTE Mark and is intentionally causing confusion among Internet users for Respondent’s own commercial benefit.

Complainant has sustained its burden of making a prima facie showing that the Respondent lacks rights to or legitimate interests in the Disputed Domain Name.

Respondent alleges that it has maintained a YouTube fan channel and an automotive fan website dedicated to providing information on the CORVETTE sports car. The fan channel and fan website were created in 2010. Respondent argues that this shows adequate intent in the registration and use of the Disputed Domain Name as a fan site.

Respondent invokes the doctrine of nominative fair use to support the conclusion that a fan site is a noncommercial and fair use. In addition, Respondent invokes the doctrine of first sale such that the original purchaser of a CORVETTE has an implied license to resell, judging or commenting on the CORVETTE sports car.

The Panel notes that the Disputed Domain Name was registered on October 10, 2009. The fan channel and website were set up in 2010.

There is no evidence that the Disputed Domain Name has ever actually resolved to a fan website or to a website offering Complainant’s products for sale. The only use of the Disputed Domain Name has been as a pay-per-click site. This Panel notes that the “pay-per-click” links include unauthorized reference to Complainant but also links to competitors and other non related services.

The Panel finds Respondent’s evidence insufficient to support the inference that his intent in registration and use of the Disputed Domain Name is for noncommercial and fair use. Respondent has had three years since registration of the Disputed Domain Name and two years since setting up the fan channel and fan website. However, there is no evidence of any efforts to redirect the pointers of the Disputed Domain Name to content for CORVETTE fans or for resale, judging or commenting on the CORVETTE.

The Panel finds that Respondent’s evidence of rights and legitimate interests is inadequate to rebut the prima facie showing of Complainant. Therefore, the Panel finds that Respondent has no rights or legitimate interests in the Dispute Domain Name pursuant to the Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Complainant alleges that Respondent has engaged in bad faith registration and use of the Disputed Domain Name under paragraph 4(b)(iv) of the Policy.

The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Name, one of which is paragraph 4(b)(iv):

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product

Respondent cites the doctrine of nominative fair use and the doctrine of first sale to disprove the allegations of bad faith registration and use.

The Panel found above that the Disputed Domain Name is confusingly similar to the CORVETTE Mark and that the allegations of Respondent were insufficient to support a conclusion of noncommercial use. The elements of paragraph 4(b)(iv) have been met by Complainant. Therefore, the Panel finds that Complainant has demonstrated the existence of the criteria in the Policy, paragraph 4(b)(iv) and that Respondent registered and used the Disputed Domain Name in bad faith pursuant to the Policy paragraph 4(a)(iii).

7. Decision

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 <corvette2014.com> be transferred to the Complainant.

Richard W. Page
Sole Panelist
Date: February 2, 2013

 

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