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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

General Motors Corporation and General Motors of Canada Limited v. Andre Rheaume

Case No. D2004-0664

1. The Parties

The Complainants are General Motors Corporation of Detroit, Michigan, United States of America and General Motors of Canada Limited of Oshawa, Ontario, Canada represented by Gowling Lafleur Henderson, LLP of Ottawa, Ontario, Canada.

The Respondent is Andre Rheaume of Ottawa, Ontario, Canada.

2. The Domain Names and Registrars

The disputed domain name <gmagent.com> is registered with Melbourne IT trading as Internet Name Worldwide.

The disputed domain names <gmagent.net>, <gmagents.com>, <gmagents.net> and <gmdealers.net> are registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 19, 2004. On August 20, 2004, the Center transmitted by email to Melbourne IT trading as Internet Name Worldwide and eNom a request for registrar verification in connection with the domain names at issue. On August 23, 2004, Melbourne IT trading as Internet Name Worldwide transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. On August 26, 2004, eNom. transmitted by email to the Center a partial verification response confirming that the language of the proceedings is English and that the domain names would remain under Registrar Lock throughout the proceeding. In addition to eNom’s partial response, the Center made WHOIS printouts, which showed that the disputed Domain Names were registered with eNom, and that Respondent, Andre Rheaume, was the current registrant of the disputed Domain Names.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced August 27, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was September 16, 2004. The Response was filed with the Center on September 15, 2004.

The Center appointed Ross Carson, Jacques A. Lйger and Daniel J. Gervais as panelists in this matter on October 21, 2004. The Panel finds that it was properly constituted. Each member of 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.

By e-mail, dated September 17, 2004, the Complainants inquired about filing a Supplemental Filing, namely a reply to the Response. By e-mail, dated September 17, 2004, the Case Manager advised the Complainants that in the event of a request to file a reply to the Response, the Administrative Panel, when duly appointed, would be informed of that fact and it would be in the sole discretion of the Panel to determine whether to admit and consider the Supplemental Filing in rendering its decision and whether to order further procedural steps, if any. By e-mail, dated September 24, 2004, the Complainants inquired of the Case Manager if, when indicating to the Panel that the Complainants wished to file supplemental filings, they must indicate the reasons for doing so, or if it were acceptable to provide the Panel with a blanket statement that the Complainants wish to file a Reply. By e-mail, dated September 27, 2004, the Case Manager informed the Complainants that they should indicate to the Panel the reasons why they wish to file a supplemental filing. By e-mail, dated September 27, 2004, the Complainants advised the Case Manager that they wished to file a Reply in connection with the Registrant’s allegations that the Complainants have been involved in infringing activities.

The Case Manager, in an e-mail dated October 21, 2004, advised the Panel of the Complainants request to file a reply to the Response and attached the e-mails between the Complainants and the Case Manager. On October 26, 2004, after receiving and reviewing the Annexes accompanying the hard copies of the Complaint and reviewing the Reply, the Panel decided that the reply to that portion of the Response, alleging that the Complainants had been involved in infringing activities, be accepted for filing. The Panel advised the Case Manager that the admissibility of the Reply and the substance of the Reply will be considered by the Panel when preparing the decision. The Case Manager advised the Parties of the Panel’s acceptance of the Reply to the Response on October 28, 2004.

The Complainants filed a Reply to the Response by e-mail on October 28, 2004. The Reply to the Response stated in full: “The Complainants deny the Respondent’s allegations that they have been involved in any infringing activities as alleged at Section V of the Response. In particular, the Complainants respectfully submit that they have not committed any acts of ‘copyright infringements or theft of intellectual property’. In any event, the Respondent’s allegations are immaterial to these proceedings.”

After receiving the Complainants’ Reply to the Response, the Panel advised the Center to inform the Respondent that the Respondent may file a response to the Complainants’ Reply to the Response on or before November 2, 2004. The Respondent’s Response must be limited to two issues referred to in the Complainants’ Reply. The Respondent was advised that the admissibility of the Response to the Complainants’ Reply, if filed, and the substance of the Response to the Complainants’ Reply will be considered when preparing the decision. The Case Manager advised the Respondent of the Panel’s decision on October 30, 2004. In the Response to the Complainants’ Reply, the Respondent states that the Complainants went about establishing their web presence by allegedly copying all the best ideas they could find on established automotive sites and explained how this was material to these proceedings.

The Panel will decide on the admissibility and substance of the supplemental submissions below.

4. Factual Background

The Complainant General Motors Corporation (GM), the world’s largest vehicle manufacturer, employs approximately 340,000 people, globally. Founded in 1908, the Complainant GM has been the global automotive sales leader since 1931. The Complainant GM has manufacturing operations in 32 countries, and its vehicles are sold in more than 190 countries. The Complainant GM’s vehicle brands include, inter alia, BUICK, CADILLAC, CHEVROLET, GMC, OLDSMOBILE, HUMMER and PONTIAC. According to its Consolidated Financial Statements for 2003, between the years 2001, and 2003, the Complainant GM’s total net sales and revenues were in excess of five hundred and thirty billion (USD$530,000,000,000.00) dollars. Annex 7 to the Complaint, a printout from the Complainant GM’s Consolidated Financial Statements for 2003, provides the Complainant GM’s net sales and revenues from 2001 to 2003.

The Complainant GM has been ranked as one of the world’s top ten licensors by the magazine License!. The December 2002 edition of License! ranked the Complainant GM eighth on its list, with reported worldwide retail sales of licensed merchandise of two billion (USD$2,000,000,000.00) dollars for 2001. In the April 2003 issue of License!, the Complainant GM was once again ranked eighth, with reported worldwide retail sales of licensed merchandise of two billion three hundred million (USD$2,300,000,000.00) dollars for 2002. The Complainant GM’s Canadian licensee, the Complainant General Motors of Canada Limited (GM Canada), is headquartered in Oshawa, Ontario, and is the largest vehicle manufacturer in Canada. The Complainant GM Canada employs over 22,000 people, while GM vehicle dealerships and retail outlets employ over 32,000 people across 800 locations in Canada. Vehicles sold through this network in Canada include BUICK, CADILLIAC, CHEVROLET, GMC, OLDSMOBILE, HUMMER and PONTIAC. The Complainant GM Canada has continuously sold vehicles in Canada since at least as early as 1908. During that time, the Complainant GM Canada has sold tens of millions of vehicles to Canadian customers. Since 2002, over one million (1,000,000) GM vehicles have been delivered to customers in Canada.

The Complainant GM Canada, alone and in cooperation with the more than 800 GM dealers in the GM Canada dealer network, extensively advertise and promote GM products and services in Canada. This advertising and promotion occurs in the form of print and broadcast advertising, point-of-sale product and program literature, direct mailings and the sponsorship of, and annual participation in a variety of automotive shows, trade shows and other events throughout Canada. Since 1989, the Complainant GM Canada’s dealer network has spent in excess of one billion (CDN$1,000,000,000.00) dollars for the purchase of media advertising for GM products and services. Each year, the Complainant GM Canada produces and distributes approximately five and a half million (5,500,000) new vehicle brochures in Canada. These brochures are primarily distributed to vehicle consumers and potential vehicle consumers through the various GM dealerships in the GM Canada dealer network. New vehicle brochures are also directly distributed by the Complainant GM Canada to vehicle consumers and potential vehicle consumers seeking information regarding particular GM vehicles. Since 1989, the Complainant GM Canada has spent in excess of eighty million (CDN$80,000,000.00) dollars on the publication of new vehicle brochures. The Complainant GM Canada’s new vehicle brochures are also distributed to consumers at auto shows, trade shows and events which the Complainant GM Canada supports or at which it exhibits GM products and services. The Complainant GM Canada annually spends in excess of fifteen million (CDN$15,000,000.00) dollars participating in events such as auto shows and trade shows.

The Complainant GM is the owner of numerous trademark registrations in Canada for or including the letters GM. The Complainant GM registered WWW.GMCANADA.COM as a trademark in Canada on June 18, 1998. This trademark is registered in relation to: “advertising and promotional services relating to the sale and servicing of motor vehicles and parts and accessories therefor; the operation of a business for the manufacture, sale and servicing of motor vehicles and parts and accessories therefor; providing on-line information to the public in the field of motor vehicles and parts and accessories therefor, and the sale and servicing thereof; providing multiple-user access to a global communications network for the dissemination of information relating to motor vehicles and parts and accessories therefor, and the sale and servicing thereof.”

The website “www.gmcanada.com” currently receives an average of 850,000 visitors per month. The Complainant GM has launched websites in which the domain name includes ‘gm’ in 55 different countries in the world. In the year 2004, the website “www.gm.com” has received an average of 1,650,000 hits per month.

The Respondent registered the domain names in dispute on the following dates:

<gmagent.com>, April 10, 2001, Annex 1 to the Complaint; <gmagent.net>, April 9, 2001, Annex 2 to the Complaint; <gmagents.com>, April 9, 2001, Annex 3 to the Complaint; <gmagents.net>, April 9, 2001, Annex 4 to the Complaint; <gmdealers.net>, July 3, 2001, Annex 5 to the Complaint.

5. Parties’ Contentions

A. Complainant

The Respondent was formerly a GM dealership general manager for over twenty years. The Respondent states in a fax sent March 18, 2004, to authorized GM dealers in Canada, that he is President and founder of By Net World Inc. The fax refers to a few e-mails sent to the dealer group by By Net World Inc. announcing the upcoming launch of the byNet Business Directory (Canadian Edition) @ www.bynetworld.ca. The fax signed by the Respondent, identifying himself as President, also refers to the Respondent’s past management career in the automotive industry and over 25 years with the GM Group.

The first e-mail sent to the authorized GM dealers in Canada in February 2004, promoted <bynetworld.com>. Reference is made in the e-mail of February 2004, to the Respondent having been a Manager at GM stores for over 25 years.

The first e-mail states that our “Basic” listing is free. A “Business Link” listing which includes an Internet connection is CDN$49.00. A “bynet Plus” listing which creates an additional webpage is CDN$79.00.

The Complainant states that it first became aware of Respondent’s activities in connection with the domain name <gmdealers.net> in March 2004, when some dealers within its Canadian GM dealers network contacted the Complainants over what was perceived to be a Internet invoicing scam in which they were being invoiced for web listings which the dealers had not in fact ordered. The invoices were issued by By Net World Inc. for a By Net Enhanced Business Directory Listing in the amount of $79.00 with $5.53 for G.S.T. The charges are for listings in three directories: the <bynetworld.com>business directory, the <dealersbynet.com> dealer directory and the <gmdealers.net> GM Dealer Directory.

On March 31, 2004, the domain name <gmdealers.net> resolved to a website prominently displaying “GM dealers.net” at the top of the webpage. The website included the statement: a “GM Dealer Directory service for Canadian Businesses, focussed on guiding the internet community towards the dealers with resources on the web and located in their local market area.” Annex 16 to the Complaint.

By Net World Inc. was incorporated as a Canadian federal corporation on October 1, 2003. The Respondent is shown as a Director of By Net World Inc. According to one of By Net World Inc.’s websites, namely, “www.bynetworld.com,” By Net World Inc. is involved in offering a business directory for Canadian businesses which businesses can be located geographically and by business segment including transportation. Annex 14 to the Complaint. By Net World Inc. provides other web associated services including domain registration services, website hosting packages, website design services and website marketing services. Part of Annex 14 to the Complaint.

On April 6, 2004, the solicitors for the Complainants forwarded a cease and desist letter to By Net World Inc. to the attention of the Respondent. Annex 19 to the Complaint.

By letter dated April 7, 2004, to the solicitors for the Complainants, Annex 20 to the Complaint, the Respondent refused to transfer the domain name <gmdealers.net> to the Complainants. However, the Respondent indicated that he would be agreeable to selling the domain name <gmdealers.net> to the Complainants and that he would “entertain a reasonable offer.”

The Complainants, in a letter dated April 8, 2004, once again contacted the Respondent repeating their request that the domain name <gmdealers.net> be transferred to the Complainants.

In a letter dated April 8, 2004, sent by By Net World Inc. and Respondent, the Complainants were advised that “due to the recent problems with invoicing of the GM dealers, we suspended advertising of the WWW.GMDEALERS.NET web site at the beginning of the week, and that until we can get our database up to date as to which dealers want the service.” The Respondent also advised the Complainants that out of a spirit of cooperation and without accepting the Complainants’ allegations of infringement, the Respondent has “temporarily re-routed any web traffic that may visit WWW.GMDEALERS.NET to our WWW.DEALERSBYNET.COM web site.”

In a later exchange of e-mails the Respondent and By Net World. Inc indicated that the Complainants could purchase <gmdealers.net> for CDN$2,000.00.

The Complainants state that subsequent to the receipt of the Respondent’s correspondence of May 4, 2004, it came to the attention of the Complainants that in addition to <gmdealers.net>, the Respondent was also the registered owner of <gmagents.com>, <gmagents.net>, <gmagent.net> and < gmagent.com>, all registered on or around April 10, 200l, two months before the registration of <gmdealers.net>.

By way of correspondence dated June 16, 2004, the Complainants rejected the Respondent’s offer to transfer <gmdealers.net> in exchange for CDN$2,000.00, and in light of the Complainants’ recent findings that the Respondent was the owner of multiple GM domain name registrations, requested the transfer of all five of the domain names in dispute.

In correspondence dated June 23, 2004, the Respondent declared that his offer to sell <gmdealers.net> for CDN$2,000.00 had been withdrawn as, in the words of the Respondent, “it should be worth more.” The Respondent added that he would sell the GM Domain Names to the Complainants if he received a reasonable offer. The Respondent also threatened to sell the GM Domain Names to a third party if his demands were not met.

As of the date of this Complaint, the domain name <gmagent.com> resolved to a website listing the GM dealer, Hinton Pontiac Buick GMC. The Complainants state that the Complainants only recently became aware of the use of this domain name, and having not authorized the dealer to use the GM trademarks in this manner, the Complainants instructed the dealer to discontinue the use of <gmagent.com> as per the Dealer Sales and Service Agreement, Standard Provision (the “Dealer Agreement”). The Complainant states that the dealer has agreed to discontinue the use of the domain name.

The domain name <gmagents.com> formerly resolved to the same GM dealer website as <gmagent.com>, although it has since been deactivated. The domain names <gmagents.net> and <gmagent.net> are inactive, while <gmdealers.net> was recently rendered inactive.

The Complainant states that under the Dealer Agreement, the Complainant GM is the exclusive owner and licensor of the GM trademarks, and the Complainant GM has direct or indirect control over the character and quality of the wares and services associated with the GM trademarks. Dealers are provided a non-exclusive right to use the GM trademarks, said use being contingent upon the approval of the Complainants, and the dealers must discontinue the use of the GM trademarks at the request of the Complainants. The Dealer Agreement does not allow a dealer to sublicense the use of any of the GM trademarks.

Legal Grounds

Confusingly Similar

The Complainant GM is the registered owner of the GM trademarks. By virtue of these registrations, the Complainant GM has rights in the GM trademarks.

The Complainants submit that a domain name registrant may not avoid confusion by appropriating another’s entire mark in a domain name. The addition of generic or non-distinctive terms in a domain name is not material to the confusion analysis. A finding that a domain name incorporates the whole of a Complainant’s mark is sufficient to support a finding of “confusingly similar.”

The addition of the generic word “dealer,” “agent” or “agents” does not defeat a claim of confusing similarity.

Each of the domain names in dispute incorporates the whole of the Complainant GM’s famous GM trademarks, and the whole of the distinctive element of the GM trademarks, namely, the element GM. The fact that the domain names in dispute are followed by the generic terms “dealers,” “agents” and “agent,” does not militate against a likelihood of confusion as per the Policy, since such suffixes are immaterial to the confusion analysis. In fact, the Complainants respectfully submit that the likelihood of confusion is enhanced in this case by virtue of the nature and use of the domain names in dispute, coupled with the fame of the GM trademarks.

No Rights or Legitimate Interests

The Complainants submit that the Respondent has never been licensed, or otherwise authorized to use the Complainants’ registered trademark in, or as part of, a domain name, by the Complainants.

While domain name holders may identify Complainants’ goods or services, or those who are authorized to provide such services, domain name holders are not entitled to register a confusingly similar domain name for or including the trademark or service mark of the trademark owners.

With respect to marks to be used by dealers of a well-known trademark, it is the sole discretion of the trademark owner which website it may intend to provide for its authorized dealers under the trademark.

Use of the domain names in dispute by the Respondent does not constitute a legitimate use and the unauthorized registration and use of the domain names in dispute is likely to confuse Internet users into thinking that the use of the domain names in dispute is authorized and approved by the Complainants.

In applying the law relating to rights or legitimate interests to the facts, the Respondent does not have legitimate interests or rights in the GM Domain Names. The fact that the Respondent sought to establish an online GM dealer directory listing service does not confer upon him the right to register the GM Domain Names as said domain name registrations clearly go beyond what is required to advertise the Respondent’s services. Further, the Respondent did not receive the Complainants’ consent to register the GM Domain Names, thereby obviating a finding of bona fide or good faith use. The registration of the GM Domain Names by the Respondent falsely suggests that the Respondent is somehow affiliated with, or sponsored by, the Complainants. Such use further undermines a claim of bona fide or good faith use. The fact that a GM dealer agreed to the use of <gmagent.com> and <gmagents.com> does not in any way legitimize any of the GM Domain Name registrations, as the Respondent did not receive the consent of the Complainants, nor was the dealer in a position to license what it was not permitted to license or what it did not own.

There is no evidence to suggest the Respondent has ever used, or demonstrated preparations to use, the GM Domain Names, or a name corresponding to the GM Domain Names in connection with a bona fide offering of goods and/or services. Similarly, there is no evidence to suggest that the Respondent has been commonly known by the GM Domain Names in connection with a bona fide offering of goods and/or services. There is also no evidence that the Respondent is making, or intends to make, a legitimate non-commercial or fair use of the GM Domain Names.

Registration and Use in Bad Faith

The Complainants submit that the Respondent was a GM dealer manager for over twenty years. The Respondent had actual knowledge of the Complainants’ rights in the trademarks and service marks for or including GM at the time of registration of the domain names in dispute.

The Respondent registered the domain names in dispute to intentionally attempt to attract Internet users to the web service sites of the Respondent or By Net World Inc. for commercial gain, by creating a likelihood of confusion with the Complainants’ trademarks as to source, sponsorship, affiliation or endorsement. The Complainants submit that with respect to <gmdealers.net> there is overwhelming support for the position that this domain name was intended as a reference to the Complainants. Further, the domain name <gmagent.com> currently points to one of the Complainants’ dealer websites, while <gmagent.com> previously pointed to that same website. Finally, given the Respondent’s activities and conduct, as well as the nature of <gmagents.net>, there can be no doubt that these domain names were intended to refer to the Complainants.

Previous Panels have found that the use of domain names using the terms ‘dealers’ or ‘agent’ in association with a well known house mark, constitutes bad faith use for the purpose of attracting business for commercial gain by creating a likelihood of confusion as to source, sponsorship, affiliation or endorsement.

The evidence strongly supports a finding of registration and use in bad faith under Paragraph 4(b)(iv) of the Policy. The Complainants state that the evidence strongly supports the position that the Respondent intended to appropriate the goodwill of the Complainants in an effort to redirect traffic intended for the Complainants to the Respondent’s or By Net World Inc.’s websites by causing confusion among consumers as to source or sponsorship.

Use in Bad Faith Under Paragraph 4(b)(i) of the Policy

The evidence clearly demonstrates that the Respondent registered the domain names in dispute primarily for the purpose of selling or otherwise transferring the domain name registrations to the Complainants for an amount in excess of the Respondent’s documented out-of-pocket costs, directly related to the domain names.

B. Respondent

The Respondent submits ‘GM’ identifies the products and the words ‘dealers/agents’ identifies the companies or people selling and servicing the products.

The dealers/agents are independently owned and operate under franchise agreements with the manufacturer. The Respondent states that by granting dealers a franchise to sell and service manufacturer’s products, the Complainants also accept letting dealers/agents identify themselves as GM dealers. Domain names are used to identify websites relating to information about people, products, services…, and are not identified as company names.

The Respondent acquired the disputed domain names with the intention of directing Internet users to information and links to GM dealers and agents across the world, allowing these dealers and agents to link all of their web resources within our directory structure. The domain names are intended to link to a directory service of individuals and companies operating independently of the manufacturer, but commonly identified as GM dealers or agents because they are franchised to sell GM products and services.

The Respondent disputes the Complainant’s statement that Complainants only became aware of the domain name <gmdealers.net> in March 2004. Respondent states that he had shown the site to officials of GM Canada and General Motors Acceptance Corporation (GMAC) at an earlier date.

On the issue of invoicing of some GM dealers by By Net World Inc. for web services not ordered by some dealers, the Respondent relies on the content of the attachments of By Net World Inc.’s e-mails and fax attached to Annex 20 to the Complaint. The Respondent states that no dealers have been charged for web services they didn’t want.

The Respondent denies that GM trademarks and GM design marks were displayed on Respondent’s website.

Managers at GM Canada were aware of the <gmagents.com> domain name as early as mid-2001. The Respondent also states that he had informed the solicitors for the Complainants, in a telephone conversation prior to the letter dated June 16, 2004, about other ‘gm’ domain names which the Respondent registered in addition to <gmdealers.net>. Annex 25 to the Complaint.

The Respondent submits that his letter to the Complainants dated June 23, 2004, in which the Respondent withdrew his offer to sell the domain name <gmdealers.net> to the Complainants for CDN$2000.00 was written in frustration. The Respondent advised the Complainants that if they wished to acquire the domain names in dispute, they could make the Respondent a “reasonable offer.” The Respondent also advised the Complainants’ solicitors that due to the aggravation caused by the Complainants, he was considering offering the domain names in dispute to others if the Complainants’ offer is not reasonable.

In the Respondent’s Response filed November 2, 2004, the Respondent states that the domain names in dispute were not acquired to take advantage of the potential value of the names for the Complainants, as demonstrated by the minimal amount requested from the Complainants when they showed interest in the domain names in dispute.

The Respondent maintains that authorized GM dealers and agents are identifiable to the public by the GM trademarks. The identity enables the public to procure the products and offer services with respect to products of the GM manufacturer. The Respondent submits that the domain names in dispute were acquired by the Respondent to point to web directory services and search engines to help the public find GM dealers and agents. The Respondent states that he registered the domain names in dispute in good faith.

The Respondent also alleged copyright issues and theft of intellectual property rights with respect to the development and content of Complainants’ websites in both the Response and Respondent’s Response to Complainants’ Reply to the Response.

6. Discussion and Findings

Preliminary matters

As recited in the Procedural History, Paragraph 3 above, the Complainants were permitted to file a Reply to the Response. The Panel permitted the filing of the Reply to the Response and informed the parties that the Panel would consider the admissibility of the Reply to the Response in the Discussions and Findings. Likewise, the Respondent was permitted by the Panel to file a Response to the Complainants Reply to the original Response. The Panel informed the parties that the Panel would consider the admissibility of and the substance of the Response filed by the Respondent in the Discussion and Findings.

The Reply to the Response filed by Complainants stated in full: “The Complainants deny the Respondent’s allegations that they have been involved in any infringing activities as alleged at Section V of the Response. In particular, the Complainants respectfully submit that they have not committed any acts of ‘copyright infringements or theft of intellectual property.’ In any event, the Respondent’s allegations are immaterial to these proceedings.”

The jurisdiction of the Panel under the Policy and Rules is set out in Paragraph 4 of the Policy entitled “Mandatory Administrative Proceeding.” Paragraph 4 of the Policy states: “This Paragraph sets forth the type of disputes for which you are required to submit to a mandatory administrative proceeding.” Paragraph 4(a) of the Policy states as follows:

“a. Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

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

In the administrative proceeding, the complainant must prove that each of these three elements are present.”

The Panel has no jurisdiction to consider the alleged infringing copyright activities of the Complainant referred to in the reply to the Response filed by the Complainant.

These allegations of copyright infringement and theft of intellectual property by the Complainant in developing the Complainants’ websites as alleged in Paragraph V of the Response under the heading “Internet Presence” are irrelevant with respect to the issues in Paragraph 4(a) of the Policy, which relates solely to the registration and use of the domain names in dispute by the Respondent.

The Panel finds for the above noted reasons that the Supplemental Filings both of the Complainants and the Respondent are inadmissible on the grounds that they are irrelevant to the UDRP proceeding.

A. Identical or Confusingly Similar

The Complainants’ registered trademarks and common law trademarks for or including GM are well known trademarks in Canada and throughout the world and have been well known for over half a century.

The Panel finds that the domain names in dispute are confusingly similar to the Complainants’ registered and unregistered trademarks for and including GM.

The domain names in dispute are comprised of the Complainants’ trademarks and service marks for or including GM followed by the suffixes ‘agent,’ ‘agents’ or ‘dealers,’ which name a class of persons or companies authorized by the Complainants to sell, lease, repair and service vehicles manufactured by the Complainants. The distinctive portion of the domain names in dispute is ‘gm.’ The suffixes used by the Respondent in the domain names in dispute associate the domain names with authorized representatives of the Complainants. The domain names in dispute are confusingly similar to the Complainants’ trademarks and service marks for or including GM. See United Services Automobile Association v. Ang Wa Assoc., WIPO Case No. D2004–0535; Xerox Corporation v. Imaging Solution, WIPO Case No. D2001–0313. This Panel agrees with the conclusions of the Panel in the aforementioned Xerox case in which the domain name <xeroxdealers.com> was in dispute where the Panel found “The Domain Name at issue wholly incorporates the Complainant’s central trademark (“Xerox”). This is sufficient to justify the finding that the name is “confusingly similar” to the Complainant’s registered trademarks listed in Section 4 above, notwithstanding the addition of the word “dealers” after the trademark “Xerox” in the Domain Name.” See also Koninklijke Philips Electronics N.V. v. Anpol, WIPO Case No. D2001–1151.

Pursuant to the above mentioned reasons, the Panel is, therefore, of the opinion that the Complainant has satisfactorily met its burden of proof as required under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel finds that the Respondent does not have rights or any legitimate interests in the domain names in dispute within the meaning of Paragraph 4(a)(ii) of the Policy. The Respondent has failed to demonstrate its rights or legitimate interests in the domain names in dispute as provided in Paragraph 4(c) of the Policy. The Respondent has not established that before any notice of the dispute, the Respondent used or made demonstrable preparations to use the domain names in dispute or a name corresponding to the domain names in connection with a bona fide offering of goods or services. The Respondent was a former employee of one or more authorized GM dealer for many years and was and is familiar with the Complainants’ trademarks for or incorporating GM. There is no evidence that the Respondent is using or made demonstrable preparations to use the domain names in dispute or a name corresponding to the domain names in dispute in association with a bona fide offering of goods or services.

The Respondent states that while the Complainants are the trademark owners of the trademarks and service marks for or incorporating GM, authorized GM dealers are entitled to use these trademarks or service marks. The Respondent further submits that he is entitled to register the domain names in dispute and operate directory websites in association with the domain names in dispute listing authorized GM dealers on the websites. See Response, paragraph VII. The evidence does not support a finding that the Respondent is offering directory web services in association with the domain names in dispute. Even if the Respondent was operating a web directory, the Panel finds that the Respondent is not entitled to use the domain names in dispute which are confusingly similar to the Complainants’ marks in respect of directory services. See Koninklijke Philips Electronics N.V. v. Anpol, WIPO Case No. D2001–1151.

By Net World Inc. promoted <gmdealers.net> and <bynetworld.com> together. By Net World Inc. also offered a link to the dealer’s website for CDN$49.95 a year and additional information about the dealer and additional links for CDN$79.95 per year. By Net World Inc. offered net website services including “Domain Registration, Web Hosting and Site Design & Marketing.” In addition, By Net World Inc. advertised custom design websites and full maintenance if required. By Net World Inc. was using the domain name <gmdealers.net> to promote the broad range of web-related services offered by By Net World.Inc. The Panel finds that the Respondent, who is President of By Net World Inc., authorized use of the domain name <gmdealers.net> by By Net World.Inc. to promote the varied web businesses offered by By Net World Inc. among authorized GM dealers without authorization from the Complainants. Such use by By Net World Inc. is not a bona fide use of the domain name <gmdealers.net> by the Respondent.

In early 2004, By Net World Inc. invoiced numerous authorized GM dealers for web services for inclusion in a website of authorized GM dealers. The inclusion had not been ordered by numerous GM dealers. The web address of the GM dealer directory is shown on the invoice as “www.gmdealers.net” The use of the domain name <gmdealers.net> by By Net World Inc. was not authorized by the Complainants. Further, By Net World Inc. invoiced numerous authorized GM dealers for web services they had never ordered. These activities of By Net World Inc. are not bona fide use of the domain name <gmdealers.net> by the Respondent in association with directory services.

There is no evidence of any use or plans to use the domain names <gmagent.com>, <gmagent.net> or <gmagents.com> or <gmagents.net> by the Respondent even though these domain names have been registered since 2001. The Panel agrees with the finding of the Panel in Koninklijke Philips Electronics N. V. v. Anpol, WIPO Case No. D2001–1151, paragraph 6.(2) that “Simple stocking of the domain names by the Respondent, as this is the case at present, does not create any right or legitimate interest in the domain names with respect to the above noted domain names which have been registered but not used for several years.”

The Respondent has no connection or affiliation with the Complainant, who has not consented to the use of the domain names in dispute by the Respondent. There is no evidence that the Respondent has ever used the domain names in dispute in connection with a bona fide offering of goods or services. The Respondent is not an authorized dealer or agent of the Complainant. The Respondent is not known at all under the domain names in dispute. Further the Respondent has not made or stated that he intends to make a legitimate non commercial use of the domain names in dispute.

The Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the domain names in dispute.

C. Registered and Used in Bad Faith

The third element which the Complainant must prove is that the Respondent registered the domain names in dispute and is using the domain names in dispute in bad faith. Pursuant to paragraph 4(b) of the Policy, certain circumstances among others shall be evidence of the registration and use of a domain name in bad faith for the purposes of paragraph 4(a)(iii) of the Policy. Paragraph 4(b)(iv) reads as follows:

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

The Respondent acknowledges that he was employed by authorized GM dealers during his many years in the automobile business. The Respondent was fully aware of the well known GM trademarks and service marks incorporating GM for decades before registering the domain names in dispute. In 2003, the Respondent briefly used the domain name <gmdealers.net>. Commencing early in 2004, the domain name <gmdealers.net> was in use by By Net World Inc. The Respondent was the President of By Net World Inc. and the Panel infers from the evidence that the Respondent authorized By Net World Inc. to use the domain name <gmdealers.net>. By Net World Inc. was promoting its web services; offering links to the websites of GM dealers; agreeing to provide page listings in association with the link to the authorized dealers; offering a full range of Internet-related services including domain name registration, web hosting and website design and marketing.

The Panel finds that the Repondent has intentionally permitted By Net World Inc. to use the domain name <gmdealers.net> to attract, for commercial gain, Internet users to By Net World Inc.’s web services by creating a likelihood of confusion with Complainant’s marks as to source, sponsorship, affiliation or endorsement of the Respondent’s <gmdealers.net> website.

The Panel also finds that the Respondent permitted By Net World Inc. to invoice authorized GM dealers for web services not ordered by numerous authorized GM dealers. The Panel finds that the invoicing of services in association with the domain name <gmdealers.net> which had not been ordered by GM authorized dealers constitutes use of the domain name <gmdealers.net> in bad faith.

There is no evidence that the domain names <gmagent.net>, <gmagents.com> or <gmagents.net> have been used by the Respondent or others since their registration in 2001. As the Respondent is not an authorized GM dealer or agent the Respondent cannot use these domain names in good faith. If ever put to use by Respondent the above referred to domain names would result in consumer confusion which meets the bad faith requirement of sub-paragraph 4(b)(iv) of the Policy. See CBS Broadcasting, Inc. v. LA-Twilight-Zone, WIPO Case No. D2000–0397.

There is no evidence that the Respondent himself has ever used the domain name <gmagent.com> in association with an active website. The Panel finds that any use by the Respondent of the domain name <gmagent.com> would cause confusion with the Complainants’ registered trademarks and service marks for or including GM, which amounts to bad faith use of the domain name under sub-paragraph 4(b)(iv) of the Policy.

The Complainant has also alleged that the Respondent registered the domain names in dispute primarily for the purpose of selling the domain name registrations to the Complainants for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain names.

The Panel finds that the Complainants have proven that the Respondent has registered and used the domain names in dispute in bad faith. (Paragraph 4(a)(iii) of the Policy)

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <gmagent.net>, <gmagent.com>, <gmagents.com>, <gmagents.net> and <gmdealers.net> be transferred to the Complainant, General Motors Corporation.

Ross Carson
Presiding Panelist

Jacques A. Lйger
Panelist

Daniel J. Gervais
Panelist

Dated: November 4, 2004