WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
General Motors LLC v. Internet Bogota
Case No. D2017-1538
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 of America.
The Respondent is Internet Bogota of Bogotá, Colombia, internally represented.
2. The Domain Name and Registrar
The disputed domain name <gmfinancialcolombiasas.com> is registered with Wild West Domains, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 8, 2017. On August 9, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 9, 2017, 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 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 15, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 4, 2017. On August 15, 2017 the Center received an email from the Respondent stating that it was merely providing services of registration. The Respondent did not file a formal Response.
The Center appointed Tobias Malte Müller as the sole panelist in this matter on September 8, 2017. 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
It results from the Complainant's undisputed allegations that the Complainant is a subsidiary of General Motors Company, a world-renowned automotive manufacturer. The Complainant has operations in more than 20 countries, providing auto finance solutions to approximately 16,000 automobile dealers worldwide, with operations in the United States, Canada, China, Europe, and Latin America.
Furthermore, it results from the undisputed evidence provided by the Complainant that it is the registered owner of a number of registered verbal trademarks, such as GM FINANCIAL (United States Trademark No. 4,564,281, registered on July 8, 2014, for services in class 36 for "Motor vehicle financing services"). Further trademarks consisting of or containing the verbal elements GM FINANCIAL are registered in 12 countries around the world.
According to the Registrar's verification response, the disputed domain name was registered to the Respondent since at least January 20, 2017. Although inactive at the time the Complaint has been filed, it results from the undisputed evidence provided by the Complainant that the website under the disputed domain name previously (e.g., on February 6, 2017) offered commercial and personal loans.
Prior to commencing this UDRP proceeding, on June 2, 2017, the Complainant's legal representative in Colombia sent a letter to the Registrant and Administrative contact formally requesting that the website be taken down. The Complainant's representative has not received a response to that letter.
5. Parties' Contentions
A. Complainant
The Complainant asserts that the disputed domain name <gmfinancialcolombiasas.com> is confusingly similar to the GM FINANCIAL mark. The generic Top-Level Domain ("gTLD") suffix ".com" is irrelevant in the comparison of a domain name to a trademark.
The Complainant further contends that the Respondent has no prior rights or legitimate interests in the disputed domain name. In particular, the Respondent is not a licensee of or otherwise affiliated with the Complainant. Moreover, the Respondent is not commonly known by the disputed domain name, has not made any 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, and has not used the disputed domain name for any legitimate noncommercial or fair use purpose. All to the contrary: Under the disputed domain name the Respondent was rather operating a webpage offering commercial and personal loans.
Finally, the Complainant contends that the Respondent registered and uses the disputed domain name in bad faith. In particular, the Complainant alleges that the Respondent is misleading the Internet users as to the source of the financial services originally offered under the disputed domain name. In this context, the Complainant refers to a set of previous UDRP decisions.
B. Respondent
The Respondent did not substantially reply to the Complainant's contentions. However, in an email sent on August 15, 2017, the Respondent stated that the owner of the disputed domain name is allegedly another person identified by the Respondent.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable". Paragraph 4(a) of the Policy requires a complainant to prove each of the following three elements in order to obtain an order that the disputed domain name be transferred or cancelled:
(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 Panel will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.
Before proceeding to the above analysis, the Panel notes that according to the Registrar's verification response, the Respondent is the Registrant of the disputed domain name. In contrast, the Respondent's mere allegation resulting from its email dated August 15, 2017, following which another person is allegedly the Registrant and therefore the correct Respondent, is irrelevant and not unsuitable to call into question the information resulting from the WhoIs information and the Registrar's verification response. The Respondent did not bring forward any evidence to support its allegation which is therefore set aside by the Panel.
A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, a complainant must first of all establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the complainant has rights.
It results from the evidence provided that the Complainant is the registered owner of several trademark registrations and applications consisting of or containing the verbal elements GM FINANCIAL, e.g., United States Trademark No. 4,564,281, registered on July 8, 2014. This mark predates the creation date of the disputed domain name, which is January 20, 2017.
Many UDRP panels have found that a domain name is confusingly similar to a complainant's trademark where the domain name incorporates the complainant's trademark in its entirety (e.g., Facebook, Inc. v. Mirza Azim,
WIPO Case No. D2016-0950; Compagnie Générale des Etablissements Michelin v. Christian Viola,
WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack,
WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies,
WIPO Case No. D2015-0812; Deutsche Lufthansa AG v. Mustermann Max, Muster AG,
WIPO Case No. D2015-1320; KOC Holding A.S. v. VistaPrint Technologies Ltd,
WIPO Case No. D2015-1910). In the present proceedings the Complainant's registered trademark is fully included in the disputed domain name.
Furthermore and as noted by many prior UDRP panels, the applicable gTLD suffix ".com" in the disputed domain name is normally to be disregarded under the confusing similarity/identity test.
In addition, it is the view of this Panel that the addition of the geographic term "colombia" and of the term "sas" does not add distinctive matter so as to distinguish it from Complainant's trademark. In numerous UDRP decisions, panels have found that the addition of a geographic term to a trademark does not serve to avoid a finding of confusing similarity with the trademark (see F. Hoffmann-La Roche AG v. James Maher, Maher / Wuxi Yilian LLC,
WIPO Case No. D2015-1335). The term "sas" will simply be understood as the reference to the company's specific legal form ("sociedad por acciones simplificadas").
In the light of the above, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent's rights or legitimate interests to the disputed domain name. In the Panel's view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name:
According to the Complaint's allegations, which have remained unchallenged, the Complainant has not authorized the Respondent's use of the trademark GM FINANCIAL by registering the disputed domain name comprising said mark entirely. In addition, the Panel notes that there is no evidence showing that the Respondent might be commonly known by the disputed domain name or might have acquired trademark rights pursuant to paragraph 4(c)(ii) of the Policy.
The website to which the disputed domain name resolves, originally offered commercial and personal loans and, therefore, services that directly compete with the services offered by the Complainant. Such use can neither be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue in the sense of paragraph 4(c)(i) and (iii) of the Policy.
It is acknowledged that once the Panel finds 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 disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence in this regard, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, "in particular but without limitation", be evidence of the disputed domain name's registration and use in bad faith.
It is undisputed that the website to which the disputed domain name resolves, originally offered commercial and personal loans and, therefore, services that directly compete with the services offered by the Complainant. In the absence of any response explaining the contrary, the Panel has no reason to doubt the related evidence and allegations. In the light of this, the Panel finds that the Respondent has registered the disputed domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") at section 3.1.4. with further references).
In the light of the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
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, <gmfinancialcolombiasas.com> be transferred to the Complainant.
Tobias Malte Müller
Sole Panelist
Date: September 22, 2017
