WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
General Motors LLC v. Alex Pearson
Case No. D2012-2519
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 Alex Pearson of Danville, Quebec, Canada.
2. The Domain Name and Registrar
The disputed domain name <silverado2014.com> (the “Domain Name”) 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 20, 2012. On December 21, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 21, 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. On January 4, 2013, the Complainant filed an amendment to the Complaint.
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 January 7, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 27, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 28, 2013.
The Center appointed Warwick Smith as the sole panelist in this matter on January 31, 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
The Complainant is one of the world’s largest automakers. One of its best-selling light-duty pick-up trucks is called the Silverado, and the Silverado has won various achievements and awards over the years since 1999.
The Silverado Truck is featured on the Complainant’s website at “www.chevrolet.com’’, and the vehicle is also advertised on YouTube. The Complainant also markets a variety of personal accessories, hats, clothes and car accessories under a SILVERADO mark.
The Complainant’s predecessor registered the mark SILVERADO in the United States, in International Class 12, with effect from August 21, 1975. The Complainant also holds a registration for its SILVERADO mark in Canada, that registration having effect from February 3, 1998, and in numerous other jurisdictions.
The Complainant also owns a number of domain names which incorporate the word “Silverado”. Among them are the domain names <14silverado.ca> and <2014silverado.com>.
The Respondent and the Domain Name
The Domain Name was registered by the Respondent in August, 2012.
The Domain Name resolves to a website (“the Respondent’s website”) which consists solely of a parking page, with pay-per-click links to various third party websites offering goods and services. Some of these third party websites refer to the Complainant and its products, and some to the products of the Complainant’s competitors.
The Complainant has not authorized the Respondent to register the Domain Name, or to use the Complainant’s SILVERADO mark in any other way.
The Complainant produced copies of the Respondent’s website as it appeared as November 12 and December 17, 2012. On each of those dates the Respondent’s website consisted of a single “parking” page provided free by the Registrar, with sponsored links to a number of third party websites. All of these third party websites featured motor vehicles, including in some cases vehicles manufactured by the Complainant’s competitors.
In accordance with normal practice, the Panel has visited the Respondent’s website. That occurred on February 8, 2013. The Respondent’s website as it appeared on that date still consisted of a single parking page (provided free by the Registrar), with a number of links to third party websites. Again, all of the third party websites appeared to be concerned in one way or another with motor vehicles, and some featured products manufactured by the Complainant’s competitors.
The Complainant’s attorney sent a cease and desist letter to the administrative contact for the Domain Name on November 12, 2012. The Respondent replied on the same day, accepting that “the Chevy Silverado is a trademark that everyone knows”. However, the Respondent refused to transfer the Domain Name without monetary compensation, saying: “I can consider selling it, but I will not transfer it to you for free”. The Respondent then referred to the website at “’www.silverado.com’’, which he said was associated with a gold mine in British Columbia. The Respondent concluded by asserting his belief that he had the right to own the Domain Name.
5. Parties’ Contentions
The Complainant contends:
1. The Domain Name is identical or confusingly similar to the Complainant’s SILVERADO trademark. The Complainant is the registered proprietor of that mark, which is included in its entirety (as the first and dominant element) in the Domain Name. The presence of the generic top level domain “.com” is irrelevant in the comparison between a disputed domain name and a complainant’s trademark, and the addition of the numeral “2014” does not serve to distinguish the Domain Name from the Complainant’s SILVERADO mark. That is because the Complainant’s SILVERADO mark is so well-known to consumers that they will assume that a domain name containing that mark is associated with the Complainant. The addition of a year (in this case “2014”) after the “Silverado” strengthens the suggestion of an association with the Complainant.
2. The Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant contends:
(i) The Respondent has no license or consent to use the Complainant’s SILVERADO mark, whether in a domain name or in any other manner.
(ii) The Respondent has not used “Silverado”, or any other expression containing that word, as a trademark, company name, business or trade name. The Respondent is not otherwise commonly known by the Domain Name.
(iii) The Respondent does not use the Domain Name in connection with any bona fide offering of goods or services. The use of the Domain Name for pay-per-click purposes cannot be considered to be a bona fide offering of goods and services (citing Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273).
(iv) The use of a domain name that incorporates a well-known trademark to direct visitors to a website unconnected with the trademark owner, cannot constitute use in connection with a bona fide offering of goods and services, or otherwise be considered a legitimate interest in a domain name (citing Adobe Systems Incorporated v. Domain OZ, WIPO Case No. D2000-0057, and Campero International Corp., Campero International Limited, Campero International, S.A., Campero USA Corp., Pollo Campero, S.A., Pollo Campero, S.A. de C.V., Pollo Campero de Honduras, S.A. de C.V. v. Jordan Data Communication Services Company, WIPO Case No. D2004-1105).
(v) The Respondent’s purpose in purchasing the Domain Name and setting up the “parking page” at the Respondent’s website, was to gain business by portraying to be associated with the Complainant. Furthermore, it is impossible to conceive of a circumstance in which the Respondent could legitimately use the Domain Name without creating a false impression of association with the Complainant. Using a domain name with the intent to cause confusion (initial interest or otherwise) constitutes an abuse.
(vi) The Respondent was aware of the Complainant’s rights in its SILVERADO trademark when he registered the Domain Name. That gives rise to the presumption that the Respondent does not have any legitimate right or interest in the Domain Name.
3. The Domain Name was registered and is being used in bad faith. The Complainant relies on the following:
(i) The fact that the Respondent makes no genuine use of the Domain Name gives ample grounds for drawing the conclusion that the registration and use has been in bad faith (citing Nike Inc v. Farrukh Zia, WIPO Case No. D2000-0167).
(ii) The Respondent 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 SILVERADO marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. That is evidence of bad faith registration and use under paragraph 4(b)(iv) of the Policy.
(iii) The Respondent intentionally registered the Domain Name to trade off the goodwill and reputation of the Complainant.
(iv) The registration of a domain name containing a well-known trademark by a person having no connection with that trademark, amounts to “opportunistic bad faith” (citing Expedia Inc v European Travel Network, WIPO Case No. D2000-0137, and Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co, WIPO Case No. D2000-0163).
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. What the Complainant must prove under the Policy - General
Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed domain name 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.
Paragraph 15(a) of the Rules requires the panel to:
“… 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”.
Where a respondent has not submitted a response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the Panel may draw such inferences from a respondent’s failure to comply with the Rules (e.g. by failing to file a response), as the Panel considers appropriate.
B. Identical or Confusingly Similar
The Complainant has proved this part of its Complaint.
The Complainant is the registered proprietor of the trademark SILVERADO in the United States, Canada, and numerous other jurisdictions, and therefore has rights in that mark. The mark is both included in its entirety within the Domain Name and recognizable as such within it. In those circumstances, the addition of the generic or descriptive numeral or year “2014” in the Domain Name is insufficient for the Respondent to avoid a finding of confusing similarity under paragraph 4(a)(i) of the Policy.1
The top level name suffix “.com” is not taken into account in the comparison which is required by paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
“(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”
“[…] a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. […] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
In this case, the Complainant has not authorized the Respondent to use the Complainant’s SILVERADO mark, whether in a domain name or otherwise. There is nothing in the evidence which might suggest that the Respondent, or any business or organization operated by him, might be commonly known by the Domain Name, and therefore there is no basis for any defense under paragraph 4(c)(ii) of the Policy. As the Respondent appears to have been operating the Respondent’s website for commercial gain (in the form of pay-per-click advertising revenue), nor can there be any defense of “noncommercial” use of the Domain Name […] “without intent for commercial gain”, under paragraph 4(c)(iii) of the Policy.
In his November 12, 2012 reply to the Complainant’s cease and desist letter, the Respondent did not claim any right or particular interest in the Domain Name (other than such rights as he might have had as the registered owner). He acknowledged that he was aware of the Complainant’s SILVERADO mark, and attempted to justify his ownership of the Domain Name only by referring to the existence of a third party website, apparently unconnected with either the Respondent or the Complainant, at “www.silverado.com’’.
The foregoing combination of circumstances is sufficient to establish a prima facie case of “no rights or legitimate interests” in the Domain Name. The burden of production therefore shifts to the Respondent to produce evidence or argument showing that he has some right or legitimate interest in the Domain Name. The Respondent having failed to submit any Response, that burden has not been discharged, and the Complainant’s prima facie proof prevails.
The Complainant has therefore sufficiently proved this part of its Complaint.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances include:
“(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.”
The Panel is satisfied that the Complainant has proved circumstances falling within this paragraph of the Policy.
In his reply to the Complainant’s cease and desist letter, the Respondent acknowledged that he was aware of the Complainant’s SILVERADO mark, and he offered no reason for his decision to include it in the Domain Name. The Respondent’s website is not being put to any active use, and the Respondent did not suggest that he had any legitimate purpose in mind for the Domain Name. He did refer (in his reply to the cease and desist letter) to a “silverado” website associated with a gold mine in British Columbia, but he did not suggest that he had any connection or association with the operators of that website. He has failed to respond to the Complaint.
The Panel also notes that the Complainant is the owner of the domain name <2014silverado.com>. At least in the absence of any explanation from the Respondent for his choice of the Domain Name, it seems improbable that he registered the Domain Name without reference to this domain name owned by the Complainant. The only difference between the two, is that the order in which the “2014” and the “silverado” appear in the Domain Name has been reversed.
On the evidence produced, it seems clear that the Respondent was “targeting” the Complainant and its SILVERADO mark when he registered the Domain Name.
Having regard to the foregoing considerations, the Panel concludes that the Respondent has intentionally attempted to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s SILVERADO mark as to the source, sponsorship, application or endorsement of the Respondent’s website. He has done that by causing or permitting the Domain Name to be linked to the Respondent’s website, and by causing or permitting the Registrar to display thereon sponsored links to third party websites concerned with automobiles (some of them featuring products of the Complainant’s competitors). This is clearly being done for commercial gain (why else would anyone provided these links?), and it is immaterial for the purposes of paragraph 4(b)(iv) of the Policy whether the commercial gain is derived by the Registrar or by the Respondent (see on that point Grisoft, s.r.o. v. Original Web Ventures Inc, WIPO Case No. D2006-1381 – the Respondent is ultimately responsible for the content of the website).
Circumstances falling within paragraph 4(b)(iv) of the Policy are deemed to provide evidence of bad faith registration and use. There being no countervailing evidence, that evidence is sufficient proof of bad faith registration and use by the Respondent, and the Complainant has made out its case under 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, <silverado2014.com>, be transferred to the Complainant.
Date: February 11, 2013
1 The Center’s document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions Second Edition (“WIPO Overview, 2.0”), summarizes the consensus view of WIPO UDRP panels on the “identical or confusingly similar“ question, in the following terms:
“1.2 […] The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms […] typically being regarded as insufficient to prevent threshold internet user confusion. […]”