WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

GM Holden Ltd v. Publishing Australia Pty Ltd

Case No. DAU2011-0002

1. The Parties

The Complainant is GM Holden Ltd. of Port Melbourne, Victoria, Australia represented by Piper Alderman, Australia.

The Respondent is Publishing Australia Pty Ltd. of West Chatswood, New South Wales, Australia, represented by Cooper Mills Lawyers, Australia.

2. The Domain Name and Registrar

The disputed domain name <holdendiscounts.com.au> is registered with IntaServe.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2011. On January 13, 2011, the Center transmitted by email to IntaServe a request for registrar verification in connection with the disputed domain name. On January 19, 2011, IntaServe 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 sent a formal deficiency notification to the Complainant on January 19, 2011. The Complainant filed an amended Complaint on January 20, 2011. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 24, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 13, 2011. The Respondent filed a response on February 11, 2011.

The Center appointed Andrew F. Christie as the sole panelist in this matter on February 21, 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 is an Australian based subsidiary of the General Motors Company, which is based in the United States of America. The Complainant is the exclusive authorized user of over 100 Australian registered trademarks that comprise the word HOLDEN and/or a lion device. The Complainant’s trademarks are registered in the name of General Motors LLC, which is also a subsidiary of the General Motors Company. The Complainant or its predecessors have used the trademark HOLDEN in relation to motor vehicles in Australia since about 1930. Since early 1998, the Complainant has promoted a website at “www.holden.com.au” which uses the HOLDEN trademark and advertises the Complainant’s goods and services. The Complainant has authorized others to operate websites at domain names which contain the HOLDEN trademark and which promote the Complainant’s goods and services. The Complainant’s vehicles are marketed under the HOLDEN trademark and promoted as “Holden” vehicles.

The Respondent is part of a group of companies that operate the business “Private Fleet”. This is a car buying service that has been established since 1999, in which the company assists a potential buyer of a vehicle to complete their purchase. It includes negotiating discounts on price, arranging test-drives and organizing delivery through authorized dealerships. The disputed domain name was registered in or about September 23, 2008, and it resolves to a website purporting to “use their buying power to save you time, hassle and money in your vehicle purchase.”

On October 25, 2010, lawyers for the Complainant sent a cease and desist letter by post and e-mail to the Respondent, seeking several undertakings by the Respondent and its directors, including the immediate transfer of the disputed domain name to the Complainant. There was no response to this letter by the Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to the trademark HOLDEN in which the Complainant has rights, because the word “holden” is the dominant component of the disputed domain name. The word “discounts” does no more than describe a desirable element involved in the purchase of a vehicle of the type sold by the Complainant.

The Complainant contends the Respondent has no rights or legitimate interests in respect of the disputed domain name because at no time has the Complainant or any of its affiliates granted rights to the Respondent to use any of the Complainant’s trademarks. The website to which the disputed domain name resolves displays high quality images of Holden motor vehicles (which contains the Complainant’s trademark) but the Complainant did not supply these photographs to the Respondent. The Respondent has registered and operates a website from the disputed domain name that is “powered by Private Fleet”, and it suggests that Private Fleet is a “Holden dealer” and/or specializes in selling Holden motor vehicles; however, neither the Respondent nor Private Fleet are authorized dealers. Further, the Respondent does not gain the right in respect of the disputed domain name simply by virtue of allegedly providing Holden vehicles for sale to the public.

The Respondent has registered at least 18 other domain names consisting of other popular motor vehicles and their trademarks (e.g., Audi, Ford, Mazda, Toyota, etc.) and it hosts similar looking websites at these domain names. This demonstrates that the Respondent has engaged in a course of conduct with the intention of misleading consumers to the belief that it specializes in the provision of a specific brand of motor vehicle, whereas it actually hosts the domain name and purports to provide vehicles for at least 18 other motor vehicle brands.

Even though the Respondent states on the website to which the disputed domain name resolves that “HoldenDiscounts.com.au and Private Fleet are not affiliated with Holden Australia but make use of strong relationships with franchised dealers to secure incredible discounting”, confusion nevertheless arises by a simple comparison between the Complainant’s trademark and the disputed domain name itself.

The Respondent is not known by the disputed domain name and has no Australian registered trademark rights that incorporate the word “Holden”.

The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith because: (i) it prevents the owners of the trademark comprised in the disputed domain name from reflecting their mark in corresponding domain names; (ii) it demonstrates an intention to direct the business of Internet users away from authorized dealers of the Complainant and other manufacturers so as to derive a commercial benefit; (iii) registration of multiple domain names incorporating well-known trademarks may evidence registration in bad faith of the disputed domain names(s) specifically as misuse of the domain name(s) for commercial gain; (iv) the Respondent is abusing the disputed domain name to attract customers to whom it can then offer goods unrelated to the Complainant and Holden vehicles by also offering competitors’ vehicles, as evidenced through its other websites; (v) by using the disputed domain name containing the Complainant’s trademark, the Respondent intentionally attempts to attract for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s trademark 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; and (vi) the Respondent is attempting to trade on the reputation and goodwill built up by the Complainant and its affiliates since at least 1948 in respect of the Holden brand.

B. Respondent

The Respondent contends that the disputed domain name is not identical with any of the names, trademarks or service marks in which the Complainant has rights. Whilst the disputed domain name contains the term “Holden” it is clearly differentiated by the addition of the word “discounts”, so as to avoid any confusion. Further, the website to which the disputed domain name resolves does not have the same color scheme, look or feel of the trademark HOLDEN, and clearly states that the Respondent has no association or affiliation with the Complainant.

The Respondent contends that its use of the disputed domain name promotes the sale of new Holden motor vehicles exclusively through franchised Holden dealers and that the Respondent’s conduct is of great benefit to the Complainant and its authorized dealers. The Respondent contends that it has rights or legitimate interests in the disputed domain name because: (i) it offers discounts on Holden vehicles; (ii) it solely and exclusively promotes Holden vehicles; (iii) it clearly and accurately describes in its disclaimers that it is not affiliated with the Complainant; (iv) it is not trying to corner the market with domain names; and (v) there is a complete absence of links to what may be considered competing products.

The Respondent contends that the disputed domain name was not registered and is not being used in bad faith because: (i) the Complainant did not want to reflect its trademark in this domain name, otherwise it would have registered it; (ii) the Respondent has sought to increase sales of Holden vehicles through the Complainant’s authorized dealers; and (iii) there are three express statements on the website to which the disputed domain name resolves which say that the Respondent is not affiliated with the Complainant.

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain name incorporates the whole of the Complainant’s trademark HOLDEN, and adds the descriptive word “discounts”. The addition of the word “discounts” does not lessen the inevitable confusion of the disputed domain name with the Complainant’s trademark. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights pursuant to paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The requirement of paragraph 4(a)(ii) of the Policy is, in essence, identical to the requirement of paragraph 4(a)(ii) of the Uniform Domain Name Dispute Resolution Policy (“UDRP”), and the requirements of paragraph 4(c) of the Policy are, in essence, identical to the requirements of the paragraph 4(c) of the UDRP. The Panel can see no reason why the Policy should differ from the UDRP on the interpretation and application of paragraphs 4(a)(ii) and 4(c). Accordingly, the Panel has taken into account the reasoning of cases interpreting the requirements of paragraphs 4(a)(ii) and 4(c) of the UDRP when applying the requirements of paragraph 4(a)(ii) and 4(c) of the Policy to the facts of this case.

It is well established under the UDRP that a respondent who is a “reseller” of goods or services to which the disputed domain name relates can be making a bona fide offering of those goods or services for the purposes of paragraph 4(c)(i), and thus can have a legitimate right or interest in the disputed domain name for the purposes of paragraph 4(a)(ii), if certain requirements are satisfied. These requirements include: (1) the respondent must actually be offering goods or services related to the trademark in respect of which the domain name is confusingly similar; (2) the respondent must offer only those goods or services in connection with the disputed domain name; (3) the respondent must have disclosed its true relationship with the owner of the trademark to which the domain name is identical or confusingly similar; and (4) the respondent must not have attempted to “corner the market” in domain names that reflect that trademark – see, e.g., Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (hereinafter “Oki Data”). This principle has been extended to apply to resellers who do not have a contractual relationship with the trademark owner (i.e., unauthorized resellers) – see, e.g., DaimlerChrysler A.G. v. Donald Drummonds, WIPO Case No. D2001-0160; Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent, WIPO Case No. D2004-0481.

The first issue to be addressed by the Panel is whether the Respondent is a “reseller” of goods or services to which the disputed domain name relates. According to the information contained in the present record, the Respondent is not a seller of cars. Rather, the Respondent acts as an agent for car purchasers – that is, the Respondent negotiates with authorized car retailers to secure the sale of a car to the client of its car-buying service. Although these services are not “reselling” services, they are, in the Panel’s opinion, sufficiently analogous to reselling services to make the principles established under the UDRP in respect of paragraph 4(c)(i) applicable to them. That is to say, the use of a domain name by a buying agent can in certain circumstances be a bona fide offering of services under that domain name. Thus, the Panel considers that the Respondent will have demonstrated a legitimate right or interest in the disputed domain name if its use of the disputed domain name complies with the four requirements of Oki Data and is otherwise bona fide.

In GM Holden Ltd v. Blogger Pty Ltd, WIPO Case No. DAU2008-0016, it was found that using the disputed domain name to resolve to a website that merely provided a link to another website offering the relevant services did not satisfy the first requirement of Oki Data. In this case, however, the present record appears to establish that the Respondent’s website does provide the means by which a Holden car buyer can engage the agency services of the Respondent. The Complainant has not contended that the Holden car-buying service described at the Respondent’s website is a sham. Thus, according to the present record, the Respondent does actually provide a Holden car buying service from the website to which the disputed domain name resolves. The first requirement of Oki Data is therefore satisfied.

According to the present record, the Respondent has registered at least 18 other domain names in the format <WELLKNOWNCARBRANDdiscounts.com.au> (where the well-known brand of a car is inserted ahead of the word “discounts”). Thus, it is clear that the Respondent’s provision of the car-buying service is not limited to cars of the Holden brand. However, this fact alone does not violate the second requirement of Oki Data. That requirement is that the website to which the domain name resolves offers only goods or services related to the relevant trademark. It is not a requirement that the Respondent must not have any other website offering services in respect of other trademarks. Thus, so long as the website to which the disputed domain name resolves does not make any mention of another trademark, the second requirement of Oki Data will be satisfied. According to the present record, the website to which the disputed domain name resolves mentions only the Holden brand of car. The second requirement of Oki Data is therefore satisfied.

The Respondent is not an authorized representative of the Complainant. The present record in this case shows that the website to which the disputed domain name resolves states prominently that “HoldenDiscounts.com.au and Private Fleet are not affiliated with Holden Australia but make use of strong relationships with franchised dealers to secure incredible discounting”. The website also states, much less prominently, that “<holdendiscounts.com.au> is not in any way connected with, nor endorsed by Holden Australia”. In the Panel’s opinion, the content and prominence of the first statement is sufficient to satisfy the third requirement of Oki Data.

The Complainant has not contended, and there is nothing in the present record of this case to indicate, that the Respondent has registered numerous domain names incorporating the Complainant’s trademark. Thus, there is nothing in the present record to suggest that the Respondent has attempted to “corner the market” in domain names containing the Complainant’s trademark and thereby prevent the Complainant from reflecting its trademark in a domain name. The fourth requirement of Oki Data is therefore satisfied.

Finally, there is nothing in the present record of this case to indicate that the Respondent’s use of the disputed domain name in connection with its offering of car-buying services is other than bona fide. The Complainant pointed to text on the Respondent’s website stating “So, to request a no-obligation fleet-discounted quotation from your local Holden dealer, use our Enquiry Form on the right or call us …”, and contended that this amounted to a (false) suggestion that the Respondent “is a ‘Holden dealer’ and/or specialises in selling Holden Motor vehicles”. The Panel does not accept that contention. In the Panel’s opinion, the website text (correctly) suggests that the Respondent will procure a quote from a local Holden dealer, not that it is a local Holden dealer.

In summary, the Panel is of the opinion that the principles set out in Oki Data and other cases on the application of paragraphs 4(a)(ii) and 4(c) of the UDRP to resellers are applicable to the equivalent provisions under the Policy as they apply to analogous situations. The case of the Respondent acting as a car buyer’s agent is an analogous situation. The Respondent’s use of the disputed domain name in this case satisfies the Oki Data requirements, and is otherwise bona fide. Accordingly, on the present record the Complainant has failed to establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered or Subsequently Used in Bad Faith

Given the conclusion above regarding the Complainant’s failure to establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name, it is not necessary for resolving the outcome of the Complaint to determine if the Respondent has registered or used the disputed domain name in bad faith.

7.Decision

For all the foregoing reasons, the Complaint is denied.

Andrew F. Christie
Sole Panelist
Dated: March 7, 2011