WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

General Motors LLC v. Flashcraft, Inc DBA Cad Company

Case No. D2011-2117

1. The Parties

The Complainant is General Motors LLC of Detroit, Michigan, United States of America (the “United States”), represented by the law firm Abelman Frayne & Schwab, United States.

The Respondent is Flashcraft, Inc DBA Cad Company of Albuquerque, New Mexico, United States, internally represented.

2. The Domain Name and Registrar

The disputed domain name <cadillacperformance.com> is registered with Network Solutions, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2011. On December 5, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 5, 2011, Network Solutions, LLC 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 verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 on December 6, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 26, 2011. The Response was filed with the Center on December 24, 2011.

The Center appointed Richard G. Lyon as the sole panelist in this matter on January 16, 2012. The Panel finds that it was properly constituted and has jurisdiction over this administrative proceeding. The Panel has submitted his 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 one of the world’s largest automobile makers. Among its longtime and well-known product lines is the Cadillac. Cadillac motor cars have been made and sold in the United States since 1902, and throughout their long history the car and the brand have been known for style, performance, innovation, and luxury. The Complainant holds more than 500 registered trademarks for CADILLAC around the world, more than forty of which are registered in the United States. As is true with many well-known brands, the Complainant has extended its trademark registrations beyond the initial product, automobiles, to include various accessories that it markets to take advantage of the brand’s renown.

The Respondent’s principal has been a racing car driver and active provider of parts, services, and support to those running Cadillac cars as daily drivers, competition vehicles, and show vehicles around the world. The Respondent has owned and operated several companies that incorporated the name “Cadillac”, and in his racing days drove a Cadillac. At no time however has Respondent or its principal ever been affiliated with, sponsored by, or otherwise contractually related to the Complainant.

The Respondent registered the disputed domain name in August 2008. Since its inception the disputed domain name has resolved to a page with the Respondent’s name (CAD Company) and logo prominently at the top.

This logo does not resemble the Complainant’s logo. Entitled a “test page,” the content describes the Respondent’s business and includes links to its products, further information about its business, photographs (including the standard automotive cheesecake picture), and similar information. On its website at the disputed domain name the Respondent describes its business as follows: “Cad Company is the originator of performance parts for the Cadillac 472/500/425 engine family, and has been in active operation since 1984. We can supply you with every single piece and part you'll ever need to hotrod, upgrade, overhaul, maintain, race and tow with these great motors. (*Well, almost every part).” At the bottom of the page in bold type, same type size as the other text on the page, is “NOTE: Cad Company is not affiliated, in any way shape or form, with Cadillac Division of General Motors.”

The Complainant sent the Respondent, via email, a cease-and-desist letter on October 27, 2011, but received no reply.

5. Parties’ Contentions

A. Complainant: The Complainant contends as follows:

1. The Complainant holds rights in CADILLAC by reason of its many registered trademarks. CADILLAC is the dominant feature of the disputed domain name. Neither the addition of a common English word (and that word one often associated with motor cars) nor the generic top level domain obviates confusion with the Complainant’s marks.

2. The Complainant has never licensed or otherwise authorized the Respondent to use its CADILLAC mark. Neither the Respondent nor its principal has ever been commonly known by “Cadillac” or “Cadillac Performance”. The Respondent’s use of the Complainant’s famous and distinctive mark in connection with its business is not bona fide or legitimate for Policy purposes because it directs Internet users to a business unconnected with the trademark owner. The Complainant asks the Panel to infer that, given the longtime renown of the CADILLAC mark, the Respondent selected the disputed domain name misleadingly to “deceive” Internet viewers into thinking that the Respondent is affiliated with or has been authorized by the Complainant.

3. The Respondent registered the disputed domain name long after the Complainant’s mark had become famous, and did so misleadingly to imply sponsorship or association with the Complainant. Such conduct falls within the example of evidence of registration and use in bad faith set out in paragraph 4(b)(iv) of the Policy, as an intentional attempt to attract, for commercial gain, Internet users to its website “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 [the Respondent’s] web site or location.”

B. Respondent: The Respondent contends as follows:

1. While acknowledging the Complainant’s trademark rights in CADILLAC, the Respondent denies confusing similarity of the disputed domain name with the mark. By adding the word “performance” there is no likelihood of confusion with the Complainant’s mark. Many websites unaffiliated with the Complainant, including one cited in the Complaint, employ the word “Cadillac” with other distinguishing words. “Cadillac” is more than the name of an automobile; the term is used as a geographic name (a city in Michigan and a mountain in Maine, for example), a slang term for illicit drugs, a symbol of quality, among other things. Many businesses have used CADILLAC in domain names without interference by the Complainant; indeed it is common in the automotive industry for entities unaffiliated with manufacturers to use automobile brand names, with distinguishing words, to advertise the products or services they sell. Any marketplace confusion thus appears to be tolerated by the Complainant. Internet users are well aware of this and are not likely to be confused.

2. The Respondent uses the disputed domain name for a legitimate business: providing parts and services for Cadillac motors that are no longer supported by General Motors. The current website is a test page only because current economic conditions have prevented further development. The Respondent sets forth plans for further development, and claims the safe harbor of paragraph 4(c)(i) of the Policy. Once on the Respondent’s website an Internet user is not confused, as the prominent logo and disclaimer dispel any affiliation with the Complainant.

3. For the reasons set forth above the Respondent’s registration and use of the disputed domain name have not been in bad faith. The Respondent emphasizes that an Internet user who has reached the disputed domain name will instantly know that there is no affiliation with the Complainant. Indeed the Respondent has used blocking technologies to disable crawling by search engines to avoid confusion. Redirection is a commonplace on websites, including those maintained by the Complainant, and not evidence of bad faith. The parties do not compete with one another.

6. Discussion and Findings

To obtain a Panel order directing transfer of the disputed domain name the Complainant must demonstrate, by a preponderance of the evidence, that:

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

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

(iii) the Respondent registered and used the disputed domain name in bad faith.

A. Identical or Confusingly Similar.

The Complainant has proven this Policy element. The dominant feature of the disputed domain name is identical to the Complainant’s many registered trademarks, and as the Complainant argues the addition of a common word does not obviate confusion under the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.9.

Much of the Respondent’s contrary contentions are better placed in a trademark infringement action, in which confusing similarity is judged under very different standards. For example, under United States trademark law the degree to which a mark owner has enforced (or not) its rights may bear on a defense that the mark has been abandoned or has become descriptive. Such issues have no place under paragraph 4(a)(i) of the Policy, for one reason because a panel is incapable of evaluating them in the abbreviated format prescribed by the Policy. In a UDRP proceeding the comparison under paragraph 4(a)(i) is made based solely upon the Panel’s reasoned look at the written, aural, and other sensate elements of the Complainant’s mark and the disputed domain name. For the reasons stated in the preceding paragraph confusing similarity has been established here.

B. Rights or Legitimate Interests.

At the outset the Panel stresses that no one involved in this proceeding, including the Complainant, questions the legitimacy of the Respondent’s business. The issue for the Panel to determine under this Policy head is whether the Respondent’s use of the Complainant’s mark in the disputed domain name is bona fide or legitimate.

Policy precedent dictates that the Complainant carries its burden of proof by “mak[ing] out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) . If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.” WIPO Overview 2.0, paragraph 2.1, Consensus View.

The Complainant here has made the required prima facie showing. The Respondent or its principal has never been commonly known by the word “Cadillac”, and the Complainant has not licensed, sponsored, or otherwise permitted the Respondent or its principal to use the CADILLAC mark, two facts conceded by the Respondent.

As with the first Policy requirement, much of the Respondent’s argument about the claimed tolerance of similar domain names by the Complainant is beside the point here. Whom and when to sue or to commence an administrative proceeding against are usually the exclusive prerogative of the mark owner. A Policy proceeding focuses on the facts and circumstances of the particular case, and as noted its limited scope allows little room for an investigation of a complainant’s enforcement practices generally. See Julie & Jason, Inc. d/b/a The Mah Jongg Maven v. Faye Scher d/b/a Where the Winds Blow, WIPO Case No. D2005-0073 (“A panel in a limited administrative proceeding under the Policy lacks both the jurisdiction to make such a finding and the means of obtaining and evaluating evidence advanced to support such a claim.”) Except in the most extraordinary circumstances a panel may discount a registered trademark based upon abandonment, and this Panel is unaware of any case in which a defense in a Policy proceeding was sustained on the basis of a complainant’s selective enforcement or some other variant of the equitable doctrine of laches.

The Respondent’s attempted recourse to the safe harbor of paragraph 4(c)(i) is also misplaced. There is no question that the Respondent’s business is advanced well past the minimum of “demonstrable preparations;” but, as noted, the issue is whether it was entitled to appropriate the Complainant’s trademark to identify that business. And despite lengthy efforts to disprove similarity or confusion between the disputed domain name and the CADILLAC mark and illustrations of use of the term in non-automotive contexts, the Respondent undeniably uses the word in its trademark sense – to identify the products that it sells and services.

The Respondent thus falls into the category of an unauthorized reseller. The WIPO Overview 2.0, paragraph 2.3, indicates a Consensus view regarding resellers’ rights or legitimate interests vel non under paragraph 4(a)(ii): “Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder. The respondent must also not try to ‘corner the market’ in domain names that reflect the trademark.” Although the seminal case setting out this approach, Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, involved an authorized reseller, the Consensus view notes that “Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles.”

This Panel has some difficulty automatically extending the Oki Data Consensus approach to unauthorized resellers. That is so because one of the reasons (and in my mind the most important reason) for that approach is that a manufacturer may fairly easily prevent an authorized reseller’s objectionable use of its trademark in a disputed domain name simply be prohibiting such use in its distributorship or sales representative contract. If a prohibition can be negotiated or, as is more commonly the case with distributorship agreements, imposed by the manufacturer, when the prohibition does not exist the manufacturer bears some responsibility for a distributor’s incorporating the mark into a domain name without express permission. That rationale by definition does not apply to an unauthorized reseller, which has no contract with the mark owner.

Nevertheless, in the circumstances of this case the Panel determines that the Oki Data principles should be used to consider whether the Respondent has a right or legitimate interest, for two reasons. First, as the Respondent notes (and as any United States car owner well knows), parts and service on any brand of automobile are readily available from third parties that have and claim no affiliation with the applicable automobile maker. This is generally seen as precompetitive and an accepted practice, which lends some force to the Respondent’s contention that Internet users do not automatically associate a brand name with the automobile manufacturer. Second, and more importantly, UDRP panels have consistently followed the Oki Data approach when dealing with unauthorized resellers in the automotive field. See, for example, American Honda Motor Co., Inc. v. Michell Huddleston, WIPO Case No. D2011-0076 (hondaofgainsville.com; applies Oki Data factors but orders transfer because they are not met); Volvo Trademark Holding AB v. Volvospares / Keith White, WIPO Case No. D2008-1860 (<volvospares.com>); National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc., WIPO Case No. D2007-1524 (<nascartours.com>); Volvo Trademark Holding AB v. Auto Shivuk, WIPO Case No. D2005-0447 (<volvo-auto-body-parts-online.com>); Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent, WIPO Case No. D2004-0481 (<porschebuy.com>); DaimlerChrysler A.G. v. Donald Drummonds, WIPO Case No. D2001-0160 (<mercedesshop.com>); see also Karen Millen Fashions Limited v. Danny Cullen, WIPO Case No. D2011-1134 (<karenmillenoutletonline.com>), for application of this rule in similar circumstances in another industry with a thriving aftermarket. This Panel believes that these and other cases indicate an emerging consensus for such application in the automotive industry, a business in which an extensive secondary market for parts and service makes a consistently-applied precedent highly desirable.¹

The Respondent here meets the Oki Data criteria. It is offering and has since registering the disputed domain name offered the goods or services at issue. The record indicates that the Respondent deals only in Cadillac parts and service, and does not use the Complainant’s mark to bait and switch customers to other goods. The website, whether treated as a test page or operating website, discloses the Respondent’s non-affiliation with the Complainant in prominent and unmistakable terms, and nothing on the website suggests an affiliation. The record reveals no other domain names incorporating the CADILLAC mark owned or used by the Respondent. That the Respondent has actively sought to reduce any incidental confusion, and that the Respondent serves a market no longer supplied by the Complainant, add further legitimacy to the Respondent’s website and the disputed domain name.

The Complainant has failed to demonstrate that the Respondent lacks rights or a legitimate interest in the disputed domain name.

C. Registered and Used in Bad Faith.

As the Policy’s requirements are conjunctive, the Panel need not address this Policy head.

7. Decision

For the foregoing reasons, the Complaint is denied.

Richard G. Lyon
Sole Panelist
Dated: January 30, 2012

¹ The Panel notes that a different result might obtain in circumstances in which unauthorized resellers presented different issues, for example a case involving an industry that is heavily regulated, such as pharmaceutical products, or one involving a distributor whose contract has been terminated by its manufacturer prior to registration of the disputed domain name. Those and similar scenarios will present other panels with different lines of analysis in appropriate cases. This Panel wishes to caution against extension of the Oki Data principles to all cases of unauthorized resellers as a matter of course.