General Motors LLC won the domain name MyChevrolet.com at the WIPO Arbitration and Mediation Center after waiting 12 years to file a complaint.
The disputed domain name MyChevrolet.com has resolved to an inactive website since it was registered on July 18, 2001. The Panel found that Respondent’s inaction constitutes a passive holding of the disputed domain name.
The owner was John Brady/ N2 The Net of Cookeville, Tennessee, represented internally.
The Center appointed Mark Partridge as the sole panelist in this matter on December 4, 2012.
General Motors, LLC (“GM” or “Complainant”) is the internationally-familiar automotive manufacturing company and is among the world’s largest automakers. GM 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 34 countries. Complainant also employs over 200,000 people worldwide, and sells and services vehicles in approximately 140 countries.
Complainant currently holds more than 1,000 registered trademarks consisting of, or containing, the CHEVROLET mark, with use dating from at least 1912. Complainant uses the CHEVROLET mark on a wide variety of products in addition to automobiles, including personal accessories, hats, clothes, car accessories, die cast and collectibles, furniture, posters, tool boxes, watches and clocks, and neon signs.
The Complaint includes or attaches extensive evidence that the CHEVROLET marks are well established, cited frequently not only in advertising but in media stories, industry awards, and even popular culture since at least the 1950s. Other UDRP panels have found that the CHEVROLET marks are distinctive and well-known, as a result of long, continuous, and extensive use and the commercial success of Complainant’s products branded with those marks. See, e.g., General Motors LLC v. Jeffery Page, WIPO Case No. D2011-0710; General Motors LLC v. Vinh Pham, WIPO Case No. D2011-0454.
Complainant operates numerous websites and social media sites using domain names containing the CHEVROLET trademark. Complainant and its predecessor have used the domain name <chevrolet.com> since December 1994.
The disputed domain name <mychevrolet.com> has resolved to an inactive website since it was registered on July 18, 2001.
Respondent contends that the disputed domain name is distinct from and not likely to be confused with Complainant’s known brand. Respondent further alleges that it registered the domain name “with the intention of designing a Chevrolet fan site where users could post and discuss their Chevrolet products . . . in a family-friendly web environment that is free of corporate-based marketing programs and allows honest and open communication among loyal Chevrolet product owners.” Respondent also alleges that while there has been no site hosted on the domain since it was registered in 2001 due to organizational limitations, that it is committed to developing the site and accordingly has not ever offered to sell the domain to a third party. Its most recent business plan indicates that it intends to use the domain name “as a vehicle to drive traffic to the 3 or 4 [other domains owned by Respondent] and build a marketing company around said traffic” – essentially it is intended to be one of several “’drive’ sites that are used as commercial tools that drive traffic to the primary sites.”
Panel’s Discussion and Findings
A. Identical or Confusingly Similar
In the present case, the famous trademark is included in its entirety in the disputed domain name. Moreover, the adjunction of the word “my” to the name “Chevrolet” in the disputed domain name does not change the overall impression to the Panel or diminish the confusing similarity with the trademark, since the essential part of the disputed domain name and the trademark is the term “Chevrolet” and the word “my” is an ordinary English word in common use by website operators for adjunct web pages relating to its customers. Domain names that combine a common word with another’s trademark have been held to be confusingly similar to the trademark.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights and that Complainant has met the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
In connection with Paragraph 4(a)(ii) of the Policy, the Panel finds that Complainant exclusively owns the federal trademark and service mark registrations for the mark CHEVROLET. The disputed domain name has been inactive since its registration, and Respondent has neither used nor made demonstrable preparations to use the domain name at issue before notice of the dispute in connection with a bona fide offering of goods or services. While Respondent indicates it intends to use the domain name for the purpose of driving traffic to its main websites, other UDRP panels have concluded that use of a domain name that incorporates a well-known trademark to direct visitors to a website unconnected with the trademark owner is not use in connection with a bona fide offering of goods and services and does not otherwise create a legitimate interest in a domain name.
Respondent is not commonly known by the disputed domain name. Previous UDRP decisions have found this combination of facts insufficient to establish rights or legitimate interest in the domain name.
Therefore, the Panel finds that Respondent has no rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
In this case, Respondent has acknowledged that Complainant’s CHEVROLET trademark is well known and that it was aware of Complainant’s famous trademark at the time the domain name was registered in 2001. Accordingly, the Panel finds that the domain name at issue has been registered in bad faith.
With respect to the use aspect of paragraph 4(a)(iii) of the Policy, the record shows that the website in connection with the disputed domain name has been inactive since its registration. Accordingly, the Panel finds that Respondent’s inaction constitutes a passive holding of the disputed domain name.
It has previously been recognized that a respondent’s passive holding of the domain name amounts to a bad faith use of the domain name in certain circumstances.
In light of the above particular circumstances, the Panel concludes that Respondent’s passive holding of the disputed domain name meets the requirement of paragraph 4(a)(iii) of the Policy that the domain name “is being used in bad faith” by Respondent.
Therefore, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith.
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 <mychevrolet.com> be transferred to Complainant.