General Motors LLC v Hylton Jorssen dba S2Solutions
June 15, 2016
This case is an example of a domain name that may well have been intended to be for good purposes but which was ultimately found to be registered in bad faith because of a lack of evidence of consent by the trademark holder to the registration and use of the domain name. A defence that only purports that the intention in creating the site was for good purposes will not be enough to prove registration in good faith.
The Complainant is General Motors LLC, one of the world's largest automakers, selling vehicles under the GM mark. The Respondent registered the domain name <gmconnects.com>. It was linked to a tracking service for GM vehicles. The website said:
“GMConnects was established by a group of car enthusiasts who decided to get together and help other car enthusiasts track their car through the order and delivery process” and implied that it was a GM site.
The Complainant claimed that the disputed domain name provided links to the Complainant's websites and contained content that implied an affiliation with the Complainant. A serious concern for the Complainant was that the links contained on the Respondent's website were broken and the vehicle tracking service on the website dysfunctional. The Complainant also claimed that the domain name and website were 'tarnishing, diluting, and infringing upon the Complainant's mark and associated goodwill'. The Complainant claimed that Internet users would think that the website was associated with GM motors and its lack of functionality would reflect badly on GM Motors.
The defence by the Respondent was that it used the disputed domain name with the consent of GM to 'enhance the buying experience of the General Motors customer'. It used the disputed domain name for a website that offered to provide order tracking information to the GM's customers. However, the Panel found that the Respondent failed to notify the Complainant of its use of the GM mark and there was no evidence strong enough to show that GM acquiesced in the Respondent's use of the GM mark in the domain name. The Panel therefore held that the 'Respondent failed to come forward with concrete evidence of rights or legitimate interests'.
So, again, it was a lack of evidence that led to the Respondent’s undoing. The registration of the domain name was held to be in bad faith under paragraph 4(b)(iv) of the Policy, because there was no evidence that the Complainant ever agreed to any business relationship with the Respondent or the use of its mark. Thus, the Panel held that the domain name created confusion for the Complainant's customers as to the 'source, sponsorship, affiliation or endorsements' of the Respondent's website and the domain name was registered for this purpose, i.e. in bad faith.
Another salutary case showing that evidence is needed to defeat a UDRP claim.
Another similar case you might like to note concerned the footballer Pele in Montag Divulgaçao Ltda. v. Robert Szegedy / 1 & 1 Internet, Inc., WIPO Case No. D2010-1533. The Panel gave the Respondent an opportunity to reply to the Complainant’s further evidence of its trademarks. The Respondent could then have tried to prove that Pele had given his permission to have his name used in the domain name, but the Respondent did not file a Response or further submission and hence there was no evidence of consent, just as there was none in the GM Case.
 See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).