WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
General Motors LLC v. PrivacyProtect.org / Hector Ortega, Media International SA
Case No. D2011-2129
1. The Parties
The Complainant is General Motors LLC of Detroit, Michigan, United States of America (the “United States”), represented by Abelman Frayne & Schwab, United States.
The Respondent is PrivacyProtect.org of Nobby Beach, Australia and Hector Ortega, Media International SA of Santiago, Chile.
2. The Domain Name and Registrar
The disputed domain name <chevroletspark.com> (the “Domain Name”) is registered with Power Brand Center Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 5, 2011. On December 6, 2011, the Center transmitted by email to Power Brand Center Corp. a request for registrar verification in connection with the Domain Name. On December 9, 2011, the Center transmitted by email to Power Brand Center Corp. a further request for registrar verification in connection with the Domain Name. On December 12, 2011, Power Brand Center Corp. transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 12, 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 13, 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”), 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 13, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 2, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2012.
The Center appointed David Williams as the sole panelist in this matter on January 17, 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 asserted, and provided evidence in support of, and the Panel finds established, the following facts:
(a) The Complainant’s Activities
The Complainant, General Motors LLC, is an automotive manufacturing company with its global headquarters in Detroit, Michigan, United States. It sells and services vehicles in more than 120 countries, including the United States, China, Brazil, the United Kingdom of Great Britain and Northern Ireland, Canada, Russia and Germany; manufactures vehicles in 31 countries; and employs over 209,000 people.
(b) The Complainant’s Trademarks and Domain Names
The Complainant is the successor in interest to all trademarks and related goodwill formerly owned by the General Motors Corporation. The Complainant owns over 1000 trademarks of or including the word “Chevrolet” in numerous countries. The Complainant also has over fifty trademark registrations or pending applications for the CHEVROLET SPARK trademark, in addition to registrations and pending applications for the SPARK trademark. Summaries of the CHEVROLET trademarks and SPARK trademarks are attached as Annexes 3 and 5 to the Complaint respectively, and samples of Certificates of Registration for the CHEVROLET trademarks and SPARK trademarks are provided in Annexes 4 and 6 respectively.
The Complainant gives an extensive history of the Chevrolet brand in support of its contention that CHEVROLET is a well-known trademark. The first Chevrolet vehicle was sold in 1912 and since then, over 100 million Chevrolet-branded vehicles have been sold; Chevrolet vehicles have won several awards, including the 2011 Motor Trend Car of the Year; the Complainant sells and promotes its Chevrolet vehicles on Internet sites; and Chevrolet vehicles have featured in a number of songs. Evidence of these facts is provided in the Encyclopedia of Consumer Brands, Volume 3, Durable Goods, which the Complainant has attached as Annex 7 to the Complaint; in copies of past advertisements in Annex 8 to the Complaint; and in screenshots of the Complainant’s Chevrolet-related websites <www.chevrolet.com> (Annex 9 to the Complaint) and <www.chevymall.com> (Annex 11 to the Complaint).
The Complainant owns numerous domain names containing the CHEVROLET trademark, including <chevrolet.com>, <chevroletapproved.com>, <chevrolet-store.com> and <chevroleteurope.com>. A full list of these is attached as Annex 10 to the Complaint.
The Respondent registered the Domain Name on September 26, 2006.
On October 6, 2011, the Complainant wrote to the Respondent requesting that it cease and desist any future use of the CHEVROLET trademark and that it transfer the Domain Name to the Complainant. The Respondent did not reply.
5. Parties’ Contentions
(a) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
The Complainant contends that the Domain Name is confusingly similar to its CHEVROLET, SPARK and CHEVROLET SPARK trademarks. The Domain Name includes the former two trademarks and is entirely comprised of the latter trademark. The Complainant asserts that the presence of the top level domain “.com” does not detract from this confusion. The Complainant lastly argues that as the CHEVROLET trademark is so well-known, and as it has no meaning in English other than in relation to Chevrolet-branded goods and services, consumers are likely to confuse any domain name containing the word “Chevrolet” as being associated with the CHEVROLET trademark.
(b) The Respondent has no rights or legitimate interests in respect of the Domain Name
The Complainant states that the Respondent does not have a trademark or business name corresponding to the Domain Name, is not commonly known by the Domain Name, and does not have a license or any other form of authorisation from the Complainant to use any of the Complainant’s trademarks in the Domain Name.
The Complainant further contends that the Respondent registered the Domain Name simply to confuse visitors looking for a legitimate Chevrolet website into visiting the Respondent’s own website at the Domain Name. In support of this, the Complainant asserts, is the fact that CHEVROLET trademark is so well known, the fact that it is meaningless in English except in relation to the Complainant’s goods and services, and the fact it was registered long before the Domain Name was registered. The Complainant states that the Respondent benefits from confused Internet users visiting its website at the Domain Name. The Respondent’s website at the Domain Name allegedly contains links to advertisements for products manufactured by both the Complainant and its competitors, and each time those links are clicked, the Respondent receives a commission from the advertisers. The Complainant maintains that this pay-per-click advertising arrangement does not constitute a bona fide offering of goods or services on the part of the Respondent, and that therefore the Respondent cannot have any rights or legitimate interests in the Domain Name.
(c) The Domain Name was registered and is being used in bad faith
The Complainant advances three reasons why the Respondent has registered, and is using, its Domain Name in bad faith. The Complainant first argues that because the CHEVROLET trademark is so widely known, the Respondent cannot have been unaware of it at the time of registering its Domain Name. The Complainant then cites several cases which have found that where a Respondent registers a Domain Name containing a well-known trademark without having a connection to that trademark, the Respondent will be acting in “opportunistic bad faith.” The Complainant secondly points to paragraph 4(b)(iv) of the Policy, which states that a finding of bad faith will follow where a Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark. The pay-per-click advertising described above, the Complainant alleges, falls within this paragraph.
The Respondent did not reply to the Complainant’s contentions. The Panel notes paragraph 5(e) of the Rules, which states, “If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.” Therefore the Panel will proceed to decide the dispute.
6. Discussion and Findings
Preliminary Procedural Issue: The Identity of the Respondent
The Complainant was initially unable to uncover the identity of the entity which had registered the Domain Name as it was masked by a privacy protection service. The Complainant thus named that service, PrivacyProtect.org, as the Respondent. On December 12, 2011, Power Brand Center Corp emailed the Center disclosing the name and contact details provided to it in the registration (Hector Ortega, Media International S.A.). This differed from the named Respondent and contact information in the Complaint. On December 12, 2011, the Center notified the Complainant of this and invited it to submit an amendment to the Complaint. On December 13, 2011, the Complainant filed an amendment to its Complaint adding “Hector Ortega, Media International S.A.” as a Respondent. The Complaint has been sent to this Respondent and Privacy.Protect.org has also received a copy. As with prior disputes under the UDRP involving privacy protection services (see Xtraplus Corporation v. Flawless Computers, WIPO Case No. D2007-0070 and Viacom International Inc. v. Pablo, Palermao / Moniker Privacy Services, WIPO Case No. D2008-1179), this Panel finds that the underlying registrant, Hector Ortega, Media International S.A., is the proper Respondent in this case.
For the Complainant to succeed in its request that the Domain Name be transferred to it, pursuant to paragraph 4(a) of the Policy, the Complainant must establish each of the following three elements:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; 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.
These issues will be discussed consecutively.
A. Identical or Confusingly Similar
To establish paragraph 4(a)(i) of the Policy, the Complainant must prove that (a) the Domain Name is identical or confusingly similar to the Complainant’s trademark; and (b) that the Complainant has rights in the claimed trademark.
As to the first requirement, the Panel upholds the Complainant’s submission that the disputed Domain Name is confusingly similar to the Complainant’s CHEVROLET, SPARK and CHEVROLET SPARK trademarks. There are several reasons for this finding.
First, the Domain Name includes the CHEVROLET and SPARK trademarks in their entirety, and, apart from addition of the top level domain “.com”, is entirely comprised of the latter trademark. As numerous prior UDRP panels have held, where a domain name and trademark are otherwise confusingly similar, the addition of a top level domain such as “.com” will not remove this confusion. Second, the CHEVROLET trademark is known to consumers around the world, meaning it would immediately come to mind upon reading the word “Chevrolet”. This is evidenced by the number of CHEVROLET-related trademarks and domain names the Complainant has registered, the fact that over a hundred million Chevrolets have been sold, the fact that the brand has existed for a hundred years, and the large number of countries Chevrolet vehicles are manufactured and sold in. Third, the word “Chevrolet” does not have an English meaning independent from the General Motors LLC brand. These three factors compound to show that a reasonable Internet user would be likely to confuse the Respondent’s Domain Name and its corresponding website with the Complainant’s business.
As to the second requirement of Paragraph 4(a)(i) of the Policy, the Panel finds that the Complainant has rights in the claimed trademarks (CHEVROLET, SPARK, and CHEVROLET SPARK). The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the “WIPO Overview”) states that “[i]f the Complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.” The decisions of many previous panels confirm this proposition (see, for example, The Toronto-Dominion Bank v Boris Karpachev, WIPO Case No. D2000-1571). The Panel accepts the Complainant’s evidence that it has registered multiple trademarks of and including the words “Chevrolet”, “Spark” and “Chevrolet Spark” in several classes in countries throughout the world. The Complainant has provided lists of, and samples of certificates of registration for, its trademarks in Annexes 3, 4, 5 and 6 to the Complaint.
The Panel thus finds that the disputed Domain Name is confusingly similar to the Complainant’s CHEVROLET, CHEVROLET SPARK and SPARK trademarks.
B. Rights or Legitimate Interests
While the burden of proving that the Respondent lacks rights or legitimate interests in the Domain Name ultimately rests with the Complainant, if the Complainant makes out a prima facie case that this is so and the Respondent fails to rebut it, the Complainant is usually deemed to have satisfied its burden: See WIPO Overview, paragraph 2.1; Cornell Trading, Inc. v. Web-Interactive.com Inc., WIPO Case No. D2000-0887; and Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
Paragraph 4(c) of the Policy sets out several ways in which a Respondent may demonstrate that it holds rights or legitimate interests:
Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate the Respondent’s rights or legitimate interest to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to the Respondent of the dispute, the Respondent’s 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) 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;
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.”
Turning to paragraph 4(c)(i), the Panel finds that the Respondent is not using the Domain Name in connection with a bona fide offering of goods and services. A respondent using a domain name which incorporates a well-known trademark to lure visitors to its website at a disputed domain name, in the hope that those visitors will click on links to advertisements and earn the respondent a “per click” commission from the advertisers, does not amount to a bona fide offering. In support of this, the Panel cites two cases referred to by the Complainant: Adobe Systems Incorporated v. Domain Oz, WIPO Case No. D2000-0057 and Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273. The Panel in the latter case held that “the Respondent has not made a bona fide offering of goods or services in the terms of paragraph 4(c)(i) of the Policy, because it has solely sought to take advantage of the Complainant’s well-known trademark by diverting Internet users to Respondent’s link farm.”
In issue therefore is whether the Respondent is using its Domain Name to host pay-per-click advertising. The Panel finds that it is. The ubiquity of the Chevrolet brand, and the fact that the Respondent registered the Domain Name on September 26, 2006, long after the Complainant had registered many of its trademarks and established rights to its CHEVROLET trademark, indicates that the Respondent could not have been ignorant of the Complainant’s business. On the contrary, it intended to take advantage of the similarity of its Domain Name to the Complainant’s brand by luring visitors to its website at the Domain Name to click on the provided links. Even more compellingly, when the Panel visited <chevroletspark.com>, it found merely a list of links which, when clicked, led to advertisements for vehicles manufactured by the Complainant and its competitors. The Complainant alleges that it is likely that the Respondent receives a commission per click from the advertisers. The Panel agrees. Payment of commissions is common practice with links to advertising; there is no other logical reason why the Respondent would provide these links; and the Respondent has not refuted the Complainant’s allegation.
In terms of paragraph 4(c)(i), the Complainant has asserted that the Respondent has not registered a trademark corresponding to its Domain Name, does not have a licence or other authorisation from the Complainant to use the Complainant’s trademarks, and is not otherwise known by the name “chevroletspark”. The Respondent has not answered this assertion, nor is there any evidence to the contrary. The Panel accepts that the Respondent is not commonly known by its Domain Name.
The Panel lastly finds that the Respondent’s conduct does not fall within paragraph 4(c)(iii) of the Policy. As discussed above in relation to paragraph 4(c)(i), in registering a Domain Name which is similar to the Complainant’s trademarks, the Respondent intended to mislead customers looking for websites related to the Complainant’s products to the Respondent’s own website at the Domain Name, where it would profit from those customers clicking on the links to advertisements.
C. Registered and Used in Bad Faith
Paragraph 4(b)(iv) of the Policy states that the following is evidence of bad faith: by using the 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 your website or location. The above analysis regarding paragraphs 4(c)(i) and 4(c)(iii) of the Policy clearly demonstrates to this Panel that the Respondent’s conduct falls within paragraph 4(b)(iv).
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 <chevroletspark.com> be transferred to the Complainant.
Dated: January 31, 2012