WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

General Motors LLC v. Purple Bucquet / PrivacyProtect.org

Case No. D2011-0066

1. The Parties

The Complainant is General Motors LLC of Detroit, Michigan, United States of America, represented by Abelman Frayne & Schwab, United States of America.

The Respondent is Purple Bucquet, supposedly with an address in Panama, Republic of Panama, and PrivacyProtect.org of Munsbach, Luxembourg.

2. The Domain Name and Registrar

The disputed domain name <gmfinancialservices.com> is registered with Power Brand Center Corp.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2011. On January 12, 2011, the Center transmitted by email to Power Brand Center Corp. a request for registrar verification in connection with the disputed domain name. On January 13, 2011, Power Brand Center Corp. (the “Registrar”) transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 18, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant duly filed an amendment to the Complaint on January 19, 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” 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 20, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 9, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 15, 2011. The Panel notes that the Written Notice of the Complaint could not be delivered by UPS to the Respondent’s given address as this was incomplete and the telephone number country code provided (if valid) would have been for Malta not for the Republic of Panama.

The Center appointed Keith Gymer as the sole panelist in this matter on March 1, 2011. 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, General Motors LLC, also known as GM, is the internationally-familiar automotive manufacturing company and is among the world’s largest automakers. General Motors LLC is the successor in interest to all trademarks and related goodwill formally owned by General Motors Corporation, which was founded in 1908. With global headquarters in Detroit, the Complainant manufactures cars and trucks in 31 countries. In 2008, General Motors LLC and its subsidiaries sold 8.35 million cars and trucks globally under the following brands and others: BUICK, CADILLAC, CHEVROLET, GMC, GM DAEWOO, HOLDEN, HUMMER, and OPEL.

The Complainant owns over 600 trademark registrations and pending applications for the trademark GM, or trademarks containing GM worldwide, including over 20 registrations and pending applications for the trademark GM or marks containing the trademark GM in the United States, including United States 283227 registered on May 19, 1931 and continuing in force.

The disputed domain name <gmfinancialservices.com> was created on December 27, 2009. According to the Complainant the original registrants’ identity was protected by privacy protect services, however, the Registrant’s address was available and listed the Registrant as then being located in the People’s Republic of China. The Registrar was listed as Hebei Guoji Maoyi Ltd, d/b/a Hebeidomains.com. On November 16, 2010, the WhoIs information was changed. The new Registrar was listed as Power Brand Center Corp., located in the Republic of Panama, and the registrant and administrative contact address was changed to an address in the Netherlands, but any beneficial registrant’s identity remained protected by Privacyprotect.org. Following filing of this Complaint, the Registrar disclosed the actual registrant as being identified as “Purple Bucquet”, with an address supposedly in Republic of Panama.

5. Parties’ Contentions

A. Complainant

The Complainant made extensive submissions in support of the Complaint and with reference to substantial supporting evidence in 29 Annexes. There follows edited extracts from the Complainant’s submissions:

Throughout most of history, the name GENERAL MOTORS, and/or GM, has been synonymous with style, performance and innovation in the automotive industry, and is one of the most well- known trademarks in the world.

The Complainant owns over 600 trademark registrations and pending applications for the trademark GM, or trademarks containing GM worldwide, including over 20 registrations and pending applications for the trademark GM or marks containing the trademark GM in the United States. [Worldwide summary reports of the Complainant’s trademark registrations for GM were provided as annexes to the Complaint, together with representative sample of copies of Certificates of Registration for the GM trademark in the United States, and other countries throughout the world.]

The Complainant has the reputation of being one of the most famous and well-known automotive manufacturing companies in the world – the Complainant previously led in global automotive sales for 77 consecutive years (1931 to 2008), longer than any other automaker. Currently, the Complainant officially ranks as the world’s second largest manufacturer as measured by OICA in 2009.

The history surrounding GM is available from applicable entries in “The Encyclopedia of The Motorcar”, “Wikipedia: History of General Motors”, and from the Complainant’s website at “www.gm.com/corporate/about/history/”. [Copies were provided as annexes to the Complaint.]

The Complainant conducts business on the Internet, and the trademarks GM and GENERAL MOTORS have a strong Internet presence. For example, the Complainant operates a website at “www.gm.com” featuring the Company profile, GM Leadership, GM Merchandise, GM Heritage Center, News and events, Dealer information, current offers, photo galleries, media, Enthusiast sites, History & Heritage, and Awards & Accolades, etc. [Copies of printouts from the website “www.gm.com” and “www.gmheritagecenter.com” were provided as annexes to the Complaint.]

The Complainant has capitalized on the strength of its GENERAL MOTORS and GMtrademarks and uses the trademark GM on a wide variety of products and services in addition to automobiles, including but not limited to vehicle care kits, ceramic mugs, photographs, limited edition posters, holiday ornaments, personal accessories, car accessories, GM mobility assistance services for special needs drivers, and GM Credit Card services. [Copies of printouts from the website “www.gmphotostore.com”, “www.gmaccessorieszone.com”, “www.gm.com”, “www.gmupfitter.com” and “www.gmcard.com” were provided as annexes to the Complaint.]

The Complainant is also well-known in relation to its financial services. General Motors Acceptance Corporation (GMAC) was founded in 1919, to be a provider of financing to automotive customers. GMAC fueled the auto industry with loans that helped dealers build their business and to provide affordable financing to customers wishing to buy a car or truck. Since then, the business has expanded to include insurance, on-line banking, mortgage operations, and commercial finance. In 2006, GMAC Financial Services became an independent financial services provider, and in 2008, GMAC transformed into a bank holding company. GMAC financed more than 150 million cars and trucks, and serve more than 15 million customers worldwide. The company was renamed Ally Financial in 2010. [Copies of printouts from the Complainant’s website ”www.gmacfs.com” were provided as annexes to the Complaint.]

As a result of long, continuous and extensive use, advertising, and promotion of the GENERAL MOTORS and GM trademarks, and the commercial success of the Complainant’s automobiles and products, GM has developed an enviable cachet, image and reputation and is a well-known trademark in the automotive industry and to consumers throughout the world.

The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights:

The domain name <gmfinancialservices.com> is confusingly similar to the trademark GM. The first and dominant element of the domain name incorporates the trademark GM. The domain name includes the Complainant’s trademark GM in its entirety and the words “financial” and “services”. The presence of the top level domain (gTLD) “.com” suffix is irrelevant in the comparison of a domain name to a trademark.

The relevant portion of the domain name combines the trademark “GM” with the ordinary English words “financial” and “services”. When a well-known and invented mark is combined with a common noun or adjective, that combination constitutes a domain name which is confusingly similar to an invented and world-famous mark such as GM (see Sony Kabushuki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409, finding confusing similarity because “neither the addition of an ordinary descriptive word (either as prefix of suffix) nor the suffix “.com” detracts from the overall impression of the dominant part of the name in each case, namely the trademark SONY”).

The addition of the words “financial” “services” in the domain name <gmfinancialservices.com> does not serve to distinguish the domain name from the trademark GM. This is because:

a. The trademark GM is so well-known to consumers that consumers will assume that a domain name containing the word “GM” is that of or associated with the Complainant.

b. The trademark GM appears at the beginning of the domain name and is the primary element of the domain name <gmfinancialservices.com>.

c. The name “gmfinancialservices” suggests an association with the Complainant, and consumers will likely believe that “gmfinancialservices” means the “financial services of General Motors”.

The addition of a common term to a strong trademark is not sufficient to negate a finding that the

Disputed domain name is confusingly similar.

As the trademark GM has no real meaning in English other than in relation to the Complainant’s goods and services, the domain name disputed <gmfinancialservices.com> is calculated to confuse or deceive, as it falsely suggests its services are those of the Complainant.

The Respondent has no rights or legitimate interests in respect of the domain name:

The Respondent has not received any license or consent, express or implied, to use the trademark GM in a domain name or in any other manner from the Complainant, nor has the Complainant acquiesced in any way to such use or application of the trademark GM by the Respondent. Indeed, at no time did the Respondent have authorization from the Complainant to register the domain name <gmfinancialservices.com>. To the best knowledge of the Complainant, the Respondent has no right or legitimate interest in the disputed domain name <gmfinancialservices.com>.

Prior to the registration of the disputed domain name <gmfinancialservices.com>, the Respondent has not demonstrated that it legitimately used GM, or any other marks containing GM as a trademark, company name, business or trade name. The Respondent is not otherwise commonly known in reference to GM or GMFINANCIALSERVICES.

Prior to commencing this UDRP proceeding, on November 10, 2010, the Complainant’s attorney sent a letter to the then apparent registrant of the domain name <gmfinancialservices.com> requesting that the registrant immediately cease and desist any future use of trademark GM, and that the registrant transfer the domain name <gmfinancialservices.com> to the Complainant [a copy of the letter was annexed to the Complaint].

The registrants’ identity was protected by privacy protect services, however, although the registrant’s address was available and listed the registrant as then being located in the People’s Republic of China. Moreover, the registrar was listed as Hebei Guoji Maoyi Ltd, d/b/a Hebeidomains.com.

No response to the cease and desist letter was received. However, on November 16, 2010 (six days after a cease and desist letter had been sent to the registrant via e-mail), the WhoIs information was changed. The new Registrar was listed as Power Brand Center Corp., located in the Republic of Panama, and the registrant and administrative contact address was changed to an address in the Netherlands, but the registrant’s identity remained protected by Privacyprotect.org. Therefore it was difficult to determine whether or not the registrant remained the same and the domain name was transferred to a new registrar, or if the domain name had been sold. Nevertheless, the website “www.gmfinancialservices.com” remained a “parking page” used for pay-per-click advertising. [Printouts from the website were annexed to the Complaint.]

On December 7, 2010, the Complainant’s attorney sent a further cease and desist letter [copy annexed to the Complaint] to the Respondent at the new address listed on the WhoIs report. No response was received.

A WhoIs search conducted on January 7, 2011, revealed that the registrant and administrative contact information had been changed again, to an address in Luxembourg. The website “www.gmfinancialservices.com” remained as a “parking page” used for pay-per-click advertising. However, an advertisement on the website listed the domain name <gmfinancialservices.com> as for sale by owner.

The Respondent does not use the disputed domain name <gmfinancialservices.com> in connection with a bona fide offering of goods and services. The disputed domain name <gmfinancialservices.com> is associated with links to pay-per-click advertising for an array of goods and services including the Complainant’s products and services and those of its competitors. 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.

In particular, the use of a well-known trademark as a domain name to link to such pay-per-click advertising websites is evidence that the Respondent deliberately sought to capitalize on the identity or close similarity of the domain name to the Complainant’s trademarks and to gain revenue therefrom. The domain name is currently advertised for sale. This gives support to the presumption that the Respondent does not itself have any right or legitimate interest in the domain name <gmfinancialservices.com>.

The Respondent registered the disputed domain name <gmfinancialservices.com> on December 27, 2009. At this time, the trademark GM was well-known among the automotive industry and consumers throughout the world. In the view of the above, it may be inferred that at the time the Respondent registered the disputed domain name <gmfinancialservices.com>, the Respondent was aware of the Complainants’ trademark rights in respect of the mark GM.

Based upon the numerous trademark registrations for the marks GM and GENERAL MOTORS, and the fame, goodwill and notoriety associated with the GM and GENERAL MOTORS marks, it is impossible to conceive of a circumstance in which the Respondent could legitimately use this domain name without creating a false impression of association with Complainant (see e.g.Sony Kabushiki Kaisha v. Sin, Eonmok, WIPO Case No. D2000-1007).

The Complainant’s predecessor General Motors Corporation adopted and has used the trademarks GENERAL MOTORS and GM for over 95 years. Such adoption and use of these marks precedes the registration date of the domain name <gmfinancialservices.com>. It can be inferred that the Respondent had notice of the GM trademark at the time when it registered the disputed domain name <gmfinancialservices.com>.

Further, GM is a distinctive trademark. The mark has no real meaning other than as a reference to the Complainant and the Complainant’s goods and services. In view of this, it can be inferred that the disputed domain name <gmfinancialservices.com> would not have been registered, but for the renown of the trademarks (see e.g.Nike, Inc v. B.B. de Boer, WIPO Case No. D2000-1397; Societe des Produits Nestle SA v Telmex Management Services, WIPO Case No. D2002-0070). This further supports the presumption that the Respondent does not have any legitimate right or interest in the domain name <gmfinancialservices.com>.

The domain name was registered and is being used in bad faith:

The Complainant alleges that the disputed domain name <gmfinancialservices.com> was registered in bad faith.

On account of the famous and distinctive nature of the GM trademark, the Respondent is likely to have had constructive notice as to the existence of the Complainant’s trademark GM at the time the Respondent registered the disputed domain name. Such constructive notice suggests that the Respondent acted with opportunistic bad faith in registering the disputed domain name <gmfinancialservices.com> (see e.g.Sony Kabushiki Kaisha v. Sin, Eonmok, WIPO Case No. D2000-1007 in Annex 23; Nintendo of Am. Inc v. Pokemon, WIPO Case No. D2000-1230; Yahoo! Inc. v. Ashby,WIPO Case No. D2000-0241).

The Respondent is using the disputed domain name to divert Internet traffic to a pay-per-click search engine, and has thus attempted to attract, for commercial gain, Internet users to their website. In registering and using the disputed domain name <gmfinancialservices.com>, 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 marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. The website “www.gmfinancialservices.com” creates a false association with the Complainant and the Complainant’s GM trademark. As such, it may be inferred that the Respondent intentionally registered the disputed domain name <gmfinancialservices.com> to trade-off the goodwill and reputation of the Complainant.

As stated above, the Respondent is offering the disputed domain name for sale on the website “www.gmfinacialservices.com”. As such, it may be inferred that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling or transferring the disputed domain name to the Complainant or to a competitor of the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name (See Skype Limited v. Xiaochu Li, WIPO Case No. D2005-0996).

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” (see e.g.Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137, Veuve Clicquot Ponsardin, Maison Fondee 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).

In view of the foregoing, the Respondent has registered and used the disputed domain name <gmfinancialservices.com> in bad faith.

In accordance with Paragraph 4(i) of the Policy, the Complainant requests that the disputed domain name <gmfinancialservices.com> be transferred to the Complainant.

B. Respondent

The Respondent made no reply to the Complainant’s contentions.

6. Discussion and Findings

In order for the Panel to decide to grant the remedy of transfer of a domain name to the Complainant under the Policy it is necessary that the Complainant must prove, as required by paragraph 4(a) of the Policy, that

(i) the disputed 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 disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

The fact that the Respondent has not provided a Response to the Complaint does not relieve the Complainant of the burden of proving its case. In the absence of a Response, paragraph 5(e) of the Rules expressly requires the Panel to “decide the dispute based upon the complaint”. Under paragraph 14(a) of the Rules in the event of such a “default” the Panel is still required “to proceed to a decision on the complaint”, whilst under paragraph 14(b) of the Rules it “shall draw such inferences therefrom as it considers appropriate.”

Consequently, the Panel must proceed with an assessment of the Complaint on its merits.

A. Identical or Confusingly Similar

The disputed domain name is <gmfinancialservices.com>.

The Complainant has amply demonstrated earlier registered trademark rights, fame and reputation in the distinctive and immediately recognisable GM character mark, predating the date of creation of the disputed domain name by decades.

The disputed domain name will be readily recognised by any reader familiar with English as comprising the initial distinctive reference to the familiar mark GM, run together with the descriptive verbal elements “financial services”. The absence of an spaces (or hyphens) between the component elements of the disputed domain name and the addition of the generic domain suffix “.com” are of no relevance to the overall comparison. Internet users are well aware that motor manufacturers commonly provide financial services to support purchasers of their vehicles. The disputed domain name will essentially be perceived simply as referring to “financial services” provided by the Complainant under its famous GM mark.

The Panel therefore finds that the disputed domain name is to be considered identical or confusingly similar to an earlier trademark in which the Complainant has rights, and the requirements of paragraph 4(a)(i) of the Policy are met.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, any of the following circumstances, (by way of example) might serve to demonstrate the Respondent’s rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to the Respondent of the dispute, 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 trade mark or service mark rights; or

(iii) the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

The Respondent has made no response to the Complainant’s submissions and provided no justification for any claims to relevant rights of its own. Clearly, the Respondent, originally hiding behind a so-called “privacy” shield, and supposedly now identified as “Purple Bucquet” is not commonly known by the disputed domain name, nor has it claimed to have made any legitimate use of the disputed domain name.

The Panel finds that the evidence in the Complaint supports the Complainant’s assertion that the Respondent has simply adopted the disputed domain name to take advantage of public recognition of the Complainant’s famous GM mark and business name, to set up a website, “www.gmfinancialservices.com” which would inevitably convey the impression that it referred to “financial services” provided by GM and which was apparently intended to mislead and divert consumers to other sites. In the Panel’s view, this could not in any way be considered as a bona fide offering or use. The Respondent, having provided no Response in this matter, has failed to rebut the Complainant’s prima facie case under this element of the Policy.

Consequently, the Panel holds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are met.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy, the following are examples of the sort of conduct which a panel may consider (without limitation) to present evidence of registration and use in bad faith:

“(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 [the Respondent’s] 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 [the Respondent’s] website or location.”

In the Panel’s opinion, the unchallenged evidence in the Complaint demonstrates persuasively that the Respondent has registered the disputed domain name with the intention of establishing a website “www.gmfinancialservices.com” using the GM mark and name together with a descriptive reference to “financial services” (which consumers would reasonably expect the Complainant to provide) to attract Internet users, for its own commercial gain, and intentionally creating a misleading and confusing impression as to the source, affiliation or endorsement of the Respondent’s website operations. It is inevitable that such misuse would cause disruption and damage to the Complainant’s business name and reputation.

The Panel also considers it significant that the Respondent has sought to conceal its identity behind so-called “privacy” services (whose legitimate purpose is plainly all too easily subverted and misused as a front to enable bad actors to evade proper business supervision and regulation), and to move the domain name from one registrar to another as soon as it had wind of the Complainant’s concerns, and even provided evidently inaccurate contact address details to the privacy service – the confirmation mail copy of the Complaint could not be delivered by UPS to the incomplete Republic of Panama address on the record and the country code for the telephone number given on the record (if valid) would have been for Malta, not Republic of Panama. The website printouts provided with the Complaint further show that there was apparently no contact address provided on the Respondent’s website to identify where the business behind the “www.gmfinancialservices.com” website was really located. In the Panel’s view, such attempts at concealment, evasion and lack of proper identification are a characteristic feature of bogus websites set up to trade off the name and reputation of legitimate businesses, and supports the Complainant’s allegation of bad faith use and registration in this case.

In the Panel’s view, the Complainant’s business name and mark has been adopted simply to assist the Respondent’s deceptive intent as claimed in the Complaint, and (although there was no direct evidence of this in the present Complaint) the domain name is such that it could very easily have ultimately been put to use as an instrument of fraud for “phishing” to obtain personal financial information from customers seeking financial services from what they might have thought was a legitimate Complainant’s business site.

For the same reasons as in Section B above, the Panel also considers the example of paragraph 4(b)(iv) of the Policy is directly applicable in the present case.

Consequently, for the purposes of the Policy, the Panel concludes that the disputed domain name has been registered and is being used in bad faith and that paragraph 4(a)(iii) of the Policy is also met.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <gmfinancialservices.com> be transferred to the Complainant.

Keith Gymer
Sole Panelist
Dated: March 15, 2011