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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

General Motors Corporation v. Vette Owners

Case No. D2000-0595

 

1. The Parties

Complainant is General Motors Corporation, a Delaware corporation, with an address at 300 Renaissance Center, Detroit Michigan 48265-3000 U.S.A. (General Motors).

Respondent is Vette Owners, an apparently fictitious name, with an address at 2831 Sheridan Way, Sacramento, California 95821, U.S.A. (Vette). This is the same address as the address for John Turnbow (Turnbow), the administrative and billing contact for Vette.

 

2. Domain Name and Registrar

The domain name in issue is:

corvette.com.

The registrar is Network Solutions, Inc. (NSI).

 

3. Procedural History

The WIPO Arbitration and Mediation Center (the Center) received General Motor’s complaint in hard copy on June 13, 2000, and via email on June 19, 2000. The Center verified that the complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). General Motors made the required payment to the Center. The formal date of the commencement of this administrative proceeding is June 23, 2000.

On June 19, 2000, the Center transmitted via email to NSI a request for registrar verification in connection with this case. On June 25, 2000, NSI transmitted via email to the Center NSI’s Verification Response, confirming that the registrant of the corvette.com domain name is "Vette Owners", with administrative and billing contact information c/o Turnbow at the California address noted above, and the domain name registration in issue in "Active" status.

On June 23, 2000, the Center transmitted Notification of Complaint and Commencement of the Administrative Proceeding, together with a copy of the Complaint, via post/courier, and without a copy of the complaint via email, to "Vette Owners Attention: John Turnbow" at the California address previously noted. The Center advised that the response was due by June 13, 2000, pointed out the response should be in accordance with specified rules, and described the consequences of a default if the response were not sent by that date. The Center noted also that General Motors had elected a three-member Panel and Vette was required to submit the names of three potential Panel members.

On July 13, 2000, the Center received a letter purportedly from John Turnbow. The Turnbow letter comprised two paragraphs containing a brief response to the complaint. On July 14, 2000, the Center acknowledged via email to Turnbow that the Center had received a hard copy of "the one-page response that you prepared." The Center pointed out that it appeared a copy had not been sent to General Motors, listed seven deficiencies in Turnbow’s response, and requested that Turnbow remedy the deficiencies by July 31, 2000.

On July 29, 2000, the Center received an email from "Tony Cox", referring to this case as its subject and stating "See Attachment". Also on July 29, 2000, the Center received a message from Turnbow dated July 28, 2000. The Turnbow July 28 message states Turnbow has "sent electronic copies [sic] my response to complainant(s)," lists three candidates for the Panel, and states "I have included an attachment containing the required full-response statement as per rules paragraph 5." On July 29, 2000, the Center acknowledged receipt of Turnbow’s submission, noted the Center had not received the attachment referred to, and requested that Turnbow send the attachment again. On July 31, 2000, the Center received an email from "Tony Cox" with the following message:

"Let’s try one more time. I have included the before mentioned attachment [sic]." Please acknowledge.

"Sincerely",

"John Turnbow"

Apparently accompanying the July 31, 2000 email from "Tony Cox" was a copy of Turnbow’s earlier letter of July 13, now dated July 28, 2000.

On September 11, 2000, the Center advised the parties via email of (1) the appointment of the Panel, viz.: David H. Bernstein, Esq., Anna Carabelli, Esq. and David W. Plant, Esq. (Presiding Panelist), and (2) the October 2, 2000 projected due date for the decision.

Upon receipt of the file in this matter, the Panel confirmed with the Center that the Center had not received "the required full-response" mentioned in Turnbow’s July 28 message to the Center. Accordingly, on September 13, 2000, the Center advised the parties via email that the Panel had requested "that the Respondent re-submit its Response attaching the referenced document [i.e. "the required full-response statement"]."

Having received no reply to the Center’s September 13 email request, the Center on September 25, 2000 requested via email that General Motors

"supply a copy of whatever the Complainant has received from Respondent that may arguably comprise a Response to the Complaint, or confirm that the Complainant has not received the Response ... ."

On September 27, 2000, the Center received an email message from "Tony Cox", as follows:

"I am attempting to reach Mr. Turnbow the current registered owner of corvette.com. He is out of town on business, and should be contacting me shortly."1

On September 29, 2000, the Center received an email message from General Motors, as follows:

"After searching our records, we can confirm that we have not received the Response with the relevant attachment. ..."

On October 2, 2000, the Center advised the parties via email that the projected date for the decision in this case was extended to October 19, 2000.

Having received nothing further from Turnbow, or anyone else purportedly on his behalf, since the September 27 email message from "Tony Cox", the Center advised the parties via email, on October 17, 2000, as follows:

"The WIPO Center has received no further communications from the Respondent after the September 27th email. Under these circumstances, the Panel has determined that it will proceed with the Respondent in default, and that no late response will now be accepted from the Respondent. The Panel will consider, however, Mr. Turnbow’s undated letter received by the Center on July 13, 2000, the copy of the letter emailed to the Center on July 28 (attached), and Mr. Turnbow’s additional email message of July 29, 2000 (attached)."2

"The expected date of the Panel’s decision is extended to October 31, 2000."

 

4. Factual Background; Parties ’ Contentions

a. The Trademark

The complaint is based on the trademark CORVETTE. In their communications with the Center, Vette and Turnbow do not contest any of General Motors averments that:

The mark is the subject 19 U.S. federal registrations for various goods, the earliest of which dates back to 1953. Printouts regarding such registrations appear at Annexes C 1 - C 19 to the complaint.

The mark is famous.

The mark is a symbol of General Motors quality and commitment to excellence.

General Motors intends to "further expand its use" of its mark and "further capitalize on the goodwill and recognition" in the mark.

These averments (and all the averments of fact in the Complaint) are accepted as true in light of the Respondent’s default. Talk City, Inc. v. Michael Robertson, Case No. D2000-0009 (WIPO, Feb. 29, 2000), § 5(d).

b. The Complaint Re Vette’s and Turnbow’s Activities.

In Section B., under Statement of Facts, at pages 6 - 7, General Motors avers inter alia:

Turnbow registered the corvette.com on August 7, 1995.

"Vette Owners", the registrant, is a fictitious name.

Turnbow was never authorized to use the Corvette mark in any fashion.

Turnbow caused an advertisement to be posted at the corvette.com website stating in full (copy at Annex E to the complaint).

"The Domain Name"

"CORVETTE.COM"

"may be available for sale."

"There is no asking price. We will relay offers for the name to the owner of the name."

"Please note: This page is not involved with anything related to CORVETTE automobiles or U.S. Navy warships."

"The only purpose of this page is to announce the availability of the DOMAIN NAME for anyone interested in making an attractive and substantial offer to buy or lease the name for use on the Internet."

"Serious offers, only, please."

Turnbow never used corvette.com in connection with the sale or offer for sale of any goods or services other than the domain name itself.

The only posting on the site is the advertisement offering the domain name for sale.

In Section C. at pages 7 - 8, General Motors avers it "initially" corresponded with Turnbow, as follows:

On February 23, 1999, General Motors advised Turnbow that his "registration and financial exploitation" of the domain name infringes General Motors registered mark and insisted Turnbow advise General Motors in 14 days that he would transfer ownership of the domain name to General Motors. (Annex F.).

On February 27, 1999, Turnbow responded and acknowledged his web page did offer the domain name for sale, and Turnbow "sought to blame a third party" for the advertisement. As shown at Annex G, Turnbow’s letter stated in part –

"I was unaware of the unauthorized use of my domain name corvette.com by my IP Host. Upon receipt of your letter, I notified my provider to discontinue the current web site use of corvette.com."

"It has never been my intent to lease, sell or profit from my ownership of said domain."

Turnbow’s letter referred to an enclosed dictionary definition of "corvette", viz. a warship of particular characteristics.

In Section D., at page 8, with respect to "Turnbow’s Post-Correspondence Defiance of GM", General Motors avers inter alia:

"Hoping to resolve the dispute amicably," General Motors sent to Turnbow a domain name transfer form with the request that he fill it out. A copy of this April 5, 1999 letter appears at Annex H. It requests that Turnbow notify General Motors when he has forwarded the completed forms to NSI.

Turnbow did not respond to the April 5 letter or to a June 8, 1999 follow up letter. (Annex I.)

General Motors sent "yet another letter" to Turnbow "asking that he transfer the domain name registration to GM in exchange for (1) GM reimbursing him for the expense he incurred in registering the domain name; and (2) GM’s release of him from any claims GM might have against him for past damages for trademark infringement, ... ." A copy of this letter, dated March 6, 2000, appears at Annex J.3

Turnbow did not respond to the March 6, 2000 letter.

Under the heading Analysis, at page 8, General Motors asserts that all three requirements of Policy Paragraph 4.a. have been met.

In Section A., under this heading, at page 9, General Motors asserts that the domain name is identical to General Motors’ trademark.

In Section B., at page 9, General Motors asserts that Turnbow has no legitimate interest in the domain name, because:

The only use Turnbow has made of the domain name is his attempt to use it as a "cyber-billboard for his offer to sell ... to the highest bidder."

Despite Turbow’s assertion in his February 17, 1999 letter, Turbow has made no use in the five years he has had the website in any way related to the dictionary definition of "corvette". General Motors cites Panavision Int’l, L.P. v. Toeppen, 141 F.3d 1316 (9 Cir. 1998), for the proposition that courts ignore "token descriptive use especially where it is a ploy or an after-the-fact justification."

Turnbow has no legitimate right to use the domain name based on the fictitious "Vette Owners". The website is not "vetteowners.com", so Turnbow has no fair use argument. Turnbow’s cite has nothing to do with Corvette® cars. Turnbow’s use of "Vette Owners" is merely a transparent attempt to divert attention from his cybersquatting scheme.

In Section C.1., at pages 10 - 11, General Motors asserts that factors (i) and (iv) of Policy Paragraph 4.b., in light of the facts here, demonstrate Turnbow registered and used the domain name in bad faith. Turnbow was necessarily aware of the Corvette mark in light of its indisputable fame. He used the nickname for Corvette automobiles (Vette) has part of his fictitious registrant’s name. He expressly disclaimed any association with Corvette (the complaint says Corvette "mark", the website referred to "automobiles"). In short, the evidence -- especially the content of his website advertisement -- shows a bad faith attempt to "reap a windfall off of the fame and recognition accruing to GM’s intellectual property." In addition, General Motor asserts that it is logical to conclude that, in seeking the highest bidder, Turnbow chose "to convert a famous and popular mark into a domain name to attract the most potential bidders. . . ." General Motors characterizes Turnbow’s defense (in his February 27, 1999) letter as "laughable" and "head in the sand."

In Section C.1., at pages 11 - 12, General Motors asserts that none of the three factors in Policy Paragraph 4.c. is present in this case:

At the time General Motors first objected to Turnbow, Turnbow was offering the domain name for sale. Turnbow never used or planned to use the domain name in connection with any goods or services.

Turnbow was not known by the Corvette mark.

Turnbow has not made fair use of the domain name. For example, the site has never been used in connection with warships. Turnbow acquired the domain name and offered it for sale.

At page 12, General Motors requests that the domain name in issue be transferred to General Motors.

c. The Response

As discussed in Section 3., supra, Vette and Turnbow are technically in default. The only submissions that might be construed as a response are; (1) the undated letter from Turnbow received by the Center on July 13, 2000 (and retransmitted under date of July 28, 2000), and (2) the July 28, 2000 letter from Turnbow to the Center dealing with procedural matters.

The July 13 letter touches on the substance of this matter. It states, in full:

"The following is in response to your letter dated June 23, 2000, in reference to case #D2000-0595: The facts of my situation are: At the time I bought the domain name "Corvette.com" in August, 1995, the site was available for purchase by anyone. It was never my intention to sell the domain name of "Corvette.com" to anyone. My purpose for securing the domain name was to start my own web site for Corvette enthusiasts. The complaint alleges that I attempted to sell the domain name. An ad appeared on the web offering the domain name "Corvette.com". This was done without my knowledge or expressed permission by parties unknown to me at a site that is no longer in business."

"The complainant’s assertion that I attempted to sell the name is completely untrue. I am still developing plans for operating the site in the future. I will continue to proceed in all matters related to "Corvette.com" in good faith. It is my sincere hope that WIPO will see through the erroneous accusation of the complainant, and allow me to continue my dream for Corvette enthusiasts. I have been harassed extensively since legally obtaining the rights to the aforementioned domain name, and hope that General Motors will not be allowed to extort this name from me. If further clarification is needed, please advise and I will respond immediately."

 

5. Discussion and Findings

Paragraph 4.a. of the Policy directs that General Motors must prove, with respect to the domain name in issue, each of the following:

(i) The domain name in issue is identical or confusingly similar to General Motor’s mark in issue here, and

(ii) Respondent has no rights or legitimate interests in respect of the domain name, and

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

Paragraph 4.b. of the Policy sets out four illustrative circumstances, which for purposes of Paragraph 4(a)(iii) above shall be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if proved by respondent, shall demonstrate respondent’s rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii) above.

General Motors has the burden of proving each of these elements. It is particularly important that, in a default case, complainant carry this burden in its complaint.

a. Identity or Confusing Similarity

There is no question that the mark and the domain name are identical on their faces. In its correspondence with General Motors and with the Center, Vette and Turnbow have never suggested the contrary or even attempted to address this issue. On this record, this element has been established.

b. Rights or Legitimate Interests

On this record, no challenge has been leveled with respect to; (1) the validity of the Corvette trademark, (2); General Motor’s rights in the mark with respect to the various goods which are the subjects of the 19 U.S. federal registrations, or (3); the global fame and goodwill associated with the mark.

The evidence adduced by General Motors shows that Vette and Turnbow have never used, or made substantial preparation to use the domain name with a bona fide offering of goods or services. Turnbow’s letter of July 13 to the Center confirms this, viz.:

"I am still developing my plans for operating the site in the future. ... It is my sincere hope that WIPO will ... allow me to continue my dream for Corvette enthusiasts."

These purely conjectural statements are not supported in any way by any evidence in this record. Indeed, if Vette or Turnbow had any evidence supporting Turnbow’s representations to the Center, it is not too much to have expected such evidence to have accompanied his purported response to the complaint. Indeed, Paragraph 4.c. of the Policy and Rule 5.(b)(i) of the Rules place the burden on respondents to come forward with such evidence. Document Technologies, Inc. v. International Electronic Communications, Inc., Case No. D2000-0270 (WIPO, June 6, 2000), at Discussion, § 2.

In addition, nothing undercuts General Motors’ assertion that neither Vette nor Turnbow has been commonly known by the domain name.

The website at corvette.com has either; (1) not been used, of (2); used only to offer the domain name for lease or sale to the highest bidder. Thus, neither Vette nor Turnbow could rationally claim that either had made legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. First, non-use of the domain name as an address for a website is, of course, no use at all and no evidence of any rights or legitimate interests of Vette or Turnbow in the domain name. Second, offering the domain name for lease or sale at the site whose address is the domain name is neither legitimate non-commercial use nor fair use of the domain name. Wherever the domain name was offered for lease or sale, such offer is entirely inconsistent with any right or legitimate interest of Vette of Turnbow in the domain name.

The best that Vette and Turnbow have been able to muster is the unsupported contention in the July 13, 2000 letter that the advertisement was done without Turnbow’s "knowledge or expressed permission by parties unknown to me at a site that is no longer in business." This simply does not ring true.4 In his February 27, 1999 letter to General Motors, Turnbow asserted:

"I was unaware of the unauthorized use of my domain name corvette.com by my IP Host. Upon receipt of your letter, I notified my provider to discontinue the current web site use of corvette.com."

Either Turnbow knew who placed the advertisement (February 27, 1999) or he did not know (July 13, 2000). These assertions simply can not be reconciled.

Accordingly, the Panel concludes General Motors has established that neither Vette nor Turnbow has any right or legitimate interest in the domain name "corvette.com".

c. Registration and Use in Bad Faith

Registration and use of the domain names in issue in bad faith are matters of the appropriate inferences to draw from circumstantial evidence, including Respodent’s default. Rule 14(b) of the Rules; Talk City, Case No. D2000-0009, at § 5(d). Both registration in bad faith and use in bad faith must be proved by General Motors.

As demonstrated by General Motors, at least factor (i) of Paragraph 4.b. of the Policy is applicable and establishes bad faith registration of corvette.com by Vette (and Turnbow).

The credible evidence compels the conclusion that Vette and Turnbow registered or acquired the domain name "primarily for the purpose of selling, renting ... the domain name registration to the complainant ... or to a competitor of that complainant, for a valuable consideration in excess of [Vette’s and Turnbow’s] out-of-pocket costs directly related to the domain name." 5 Turnbow’s naked denial of any intent to sell, in his letter of July 13, 2000 to the Center, does not undercut the inference necessitated by the undisputed facts and by Turnbow’s own arguments.

The domain name has either never been used or has been used as an address for a website which undeniably solicited offers to buy or lease the domain name. The advertisement expressly acknowledges the existence of Corvette automobiles, and thus, manifests an awareness of the CORVETTE mark. As we have already noted in Section 5.b., supra, Turnbow’s naked disavowal in his July 13, 2000 letter of knowledge or permission with respect to the advertisement found at the domain name in issue does not ring true in light of his letter of February 17, 1999, attributing the advertisement to his "IP host". It is inconceivable that Turnbow was unaware of this use of the domain name before General Motors first wrote to Turnbow. See Electronic Commerce Media, Inc. v. Taos Mountain, Case No. FA0008000095344 (NAF, Oct. 11, 2000) (offer to sell domain name on website constitutes bad faith).

An independent basis for finding bad faith is that, since registering this domain name in 1995, Respondent has not used it in any way (other then to offer it for sale). When a domain name comprised of a genuinely famous mark is registered and then simply held by the registrant with no use at all, that itself constitutes bad faith and cybersquatting. Telstra Corp. v. Nuclear Marshmallows, Case No. D2000-003 (WIPO, Feb. 18, 2000), § 7.12.

The Panel concludes that Vette’s and Turnbow’s registration and use of the corvette.com domain name have both been in bad faith.

 

6. Decision

In light of the findings by the Panel, the Panel unanimously decides that General Motors has met its burden of proving; (1) the domain name in issue is identical to the CORVETTE mark, (2) Vette and Turnbow have no rights and no legitimate interest in respect of the domain name, and (3) the domain name has been registered and has been used by Vette and Turnbow in bad faith.

Accordingly, the Panel requires that the registration of the "corvette.com" domain name be transferred to General Motors.

 


 

David W. Plant
Presiding Panelist

David H. Bernstein Anna Carabelli
Panelists

Dated: October 20, 2000


 

Footnotes:

1. NSI’s records show that Vette, not "Mr. Turnbow", is the "current registered owners" of corvette.com.

2. Because the transmittal was sent electronically, and because the subject letters had a code that automatically generated the date, the two attachments were dated "October 17, 2000", the date of the transmittal. The attachments are (1) copy of Turnbow’s undated letter received by the Center on July 13 and again under date of July 28, and (2) copy of Turnbow’s July 28 letter directed to procedural issues.

3. In the March 6, 2000 letter, the amount General Motors offered to pay Turnbow was $70. Also, General Motors requested Turnbow to fill out the enclosed domain name transfer form and return it to General Motors within 20 days.

4. Among the material infirmities in the July 13, 2000 letter is Turbow’s failure to certify the completeness and accuracy of his statements. Rule 5(b)(viii) of the Rules; see Talk City, Case No. D2000-0009, at § 5(a)(i) (response cannot be accepted in the absence of the required certification).

5. In Turnbow’s July 13, 2000 letter to the Center, he claims to have "bought" the domain name in August 1995. Whether or not that is true, NSI verifies that Vette Owners is the registrant.

 

Источник информации: http://www.internet-law.ru/intlaw/udrp/2000/d2000-0595.html

 

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