Panel denied the UDRP complaint for the domain name MyCadillac.com that General Motors made at WIPO. The Panel denied the complaint because the domain was used offering PPC links to the “Cadillac” geographic term only and no links related to General Motors’s trademarks. Respondent’s offer to sell the Disputed Domain Name, for as much as $56,665.00 was not found to be bad faith as Respondent provided an uncontradicted explanation related to his registration of the Disputed Domain Name, that is, that it is related to the personal and geographic names associated with the word “Cadillac,” not Complainant’s trademark.
The Complaint was filed with the WIPO Arbitration and Mediation Center on November 6, 2012. The Complainant was General Motors LLC of Detroit and the Respondent was Chad Clegg of Mesa, Arizona. The Center appointed Douglas M. Isenberg as the sole panelist.
Complainant states that it is “world-renowned as an automotive manufacturing company and is among the world’s largest automakers.” Complainant further states that its predecessor in interest, General Motors Corporation, was founded in 1908 and that it today employs more than 200,000 people and sells and services vehicles in approximately 157 countries.
Complainant further states, and provides evidence to support, that its CADILLAC brand is protected by more than 500 trademark registrations and applications worldwide (the “CADILLAC Trademark”). Complainant further states that the CADILLAC brand was created in 1902 by Henry Leland, who “named the company after his ancestor, Antoine de la Mothe Cadillac, the founder of Detroit.”
Complainant has provided a list of important accomplishments associated with the CADILLAC brand through the years and says that it “has capitalized on the strength of its CADILLAC mark and uses the trademark CADILLAC on a wide variety of products in addition to automobiles.”
The Disputed Domain Name was created on December 24, 2000, and has been used by Respondent in connection with a pay-per-click (“PPC”) website that, as shown in an exhibit provided by Complainant, contains links for a variety of goods and services, including those labeled, inter alia, “Free Local Job Search,” “Michigan Government,” “Glam – Skincare 101” and “Facts About Michigan.”
Panel’s Discussion and Findings
A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant (supported by appropriate evidence, including copies of registration certificates), it is apparent that Complainant has rights in and to the CADILLAC Trademark. As to whether the Disputed Domain Name is identical or confusingly similar to the CADILLAC Trademark, the relevant comparison to be made is with the second-level portion of the domain name only (i.e., “mycadillac”), as it is well-established that the top-level domain (i.e., “.com”) should be disregarded for this purpose. As numerous previous panels (including this Panel) have found, the addition of the word “my” to a disputed domain name, in addition to a complainant’s trademark, “do[es] nothing to diminish confusing similarity.”
B. Rights or Legitimate Interests
Given that, for the reasons set forth above and below, it is unnecessary for the Panel to make a finding with respect to the second element of the Policy, paragraph 4(a)(ii), the Panel refrains from doing so.
C. Registered and Used in Bad Faith
With respect to paragraph 4(a)(ii): Although Complainant states that Respondent has a portfolio of 83 domain names, Complainant has not argued that any of them other than the Disputed Domain Name prevents a trademark owner from reflecting its mark in a corresponding domain name. Accordingly, the requisite “pattern” of conduct has not been established.
With respect to paragraph 4(a)(iii): Given that Complainant has failed to show how Respondent may be considered a “competitor,” and further, as discussed below, Respondent’s website using the Disputed Domain Name does not contain any links that Competitor alleges are competitive with Complainant’s own goods or services, the Panel is not persuaded that Respondent is a competitor of Complainant and, accordingly, this factor is unproven.
Given the long and far-reaching use of the CADILLAC Trademark, the Panel is not so naïve as to think that Respondent was unaware of the trademark when he registered the Disputed Domain Name or that the Disputed Domain Name, standing alone, could be considered by many to be anything other than associated with Complainant. However, there is nothing in the record to contradict Respondent’s assertions that he registered and is using the Disputed Domain Name solely because of its connection with the personal and geographic name “Cadillac” and not because of Complainant’s use of the word as a trademark. It may be that by using the Disputed Domain Name in connection with a website that contains links to Michigan, home state of the city of Cadillac, Respondent has merely attempted to disguise his intention in registering the Disputed Domain Name […] In any event, it would appear as if Respondent has taken precautions to avoid using the Disputed Domain Name in any manner that might cause a likelihood of confusion with Complainant. Such actions eliminate any finding of bad faith pursuant to paragraph 4(a)(iv).
Further, although Respondent has offered to sell the Disputed Domain Name, for as much as $56,665.00 – a figure that presumably is “valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name” – the record does not indicate that Respondent’s “primary” purpose in registering the Disputed Domain Name was to sell it to Complainant or a competitor of Complainant. Indeed, Respondent has provided an uncontradicted explanation related to his registration of the Disputed Domain Name, that is, that it is related to the personal and geographic names associated with the word “Cadillac,” not Complainant’s trademark.
Despite the Panel’s extreme suspicions about this explanation, the Policy and the Rules do not provide the Panel with any authority to ascertain the Respondent’s credibility given the limitations on filings, the absence of discovery and the procedural efficiencies that are a part of (although admittedly occasionally detrimental to) this process.
Finally, given Respondent’s arguments, actions and lack of actions, the Panel is also unconvinced that bad faith exists pursuant to the doctrine of “opportunistic bad faith.”
So the complaint failed at the third element of the UDRP. For the foregoing reasons, the Complaint was denied.