Despite Attempted Sale For $57K, General Motors Loses UDRP Bid To Get MyCadillac.com
General Motors just lost a UDRP on the domain name mycadillac.com desipte the domain holder offering to sell the domain to GM for as much as almost $57,000
Here is what the domain holder contended:
-The Disputed Domain Name is not confusingly similar to the CADILLAC Trademark because “[t]he only similarity that I can find between my domain name and the Complainant’s is the last name of Antoine de la Mothe Cadillac, the founder of Detroit, and ultimately who the City of Cadillac, Michigan, was name in honor of.
Various places bear his name in North America, in particular Cadillac Mountain, found in Maine; any number of business establishments, including Cadillac Ranch, located here in my home state of Arizona, and, of course, the town of Cadillac, Michigan.”
“The Respondent has rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “I am clearly not profiting off their trademark in any way, shape, or form. The Complainant has not shown, nor is it any way obvious that my use of the website under the disputed domain name is targeting the Complainant. This could only be assumed, possibly, if my website would display pay-per-click links related to their, or their competitors’ sites, which is not the case here.”
“he Disputed Domain Name was not registered and is not being used in bad faith because, inter alia, “[t]here is no explanation in the Complaint as to why a business that was established countless years before I had registered the domain name mycadillac.com (nearly 12 years ago) delayed until 2012 to contact, me, the owner of a domain name, which was so manifestly adapted to suit its business, or why Administrative Proceedings were not brought before now – if the domain name was considered to be a justifiable case of abusive registration.”
Here is what the one member panel found:
“Although Complainant states that Respondent has a portfolio of 83 domain names, Complainant has not argued that any of them other than the Disputed Domain Name prevents a trademark owner from reflecting its mark in a corresponding domain name. ”
“Accordingly, the requisite “pattern” of conduct has not been established”.
“With respect to paragraph 4(a)(iii): Given that Complainant has failed to show how Respondent may be considered a “competitor,” and further, as discussed below, Respondent’s website using the Disputed Domain Name does not contain any links that Competitor alleges are competitive with Complainant’s own goods or services, the Panel is not persuaded that Respondent is a competitor of Complainant and, accordingly, this factor is unproven”.
“The Panel finds more challenging the bad faith factors described in paragraphs 4(a)(i) and 4(a)(iv)”.
“Given the long and far-reaching use of the CADILLAC Trademark, the Panel is not so naïve as to think that Respondent was unaware of the trademark when he registered the Disputed Domain Name or that the Disputed Domain Name, standing alone, could be considered by many to be anything other than associated with Complainant. However, there is nothing in the record to contradict Respondent’s assertions that he registered and is using the Disputed Domain Name solely because of its connection with the personal and geographic name “Cadillac” and not because of Complainant’s use of the word as a trademark”.
“It may be that by using the Disputed Domain Name in connection with a website that contains links to Michigan, home state of the city of Cadillac, Respondent has merely attempted to disguise his intention in registering the Disputed Domain Name – much as the early cybersquatter Dennis Toeppen displayed photographs of the city of Pana, Illinois, on a website using the domain name <panavision.com>. Panavision International, L.P. v. Toeppen, 141 F.3d 1316 (9th Cir. 1998). However, in the Panavision case, the defendant’s actions and convoluted explanation were clearly a pretext for his actual motive, given that the disputed domain name was not only identical to the plaintiff’s trademark but not actually the name of the city depicted on the website and, as the court said, the defendant’s “’business’ is to register trademarks as domain names and then sell them to the rightful trademark owners” – something that Complainant in this case has not proven”.
“In any event, it would appear as if Respondent has taken precautions to avoid using the Disputed Domain Name in any manner that might cause a likelihood of confusion with Complainant”.
“Such actions eliminate any finding of bad faith pursuant to paragraph 4(a)(iv)”.
“Further, although Respondent has offered to sell the Disputed Domain Name, for as much as $56,665.00 – a figure that presumably is “valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name” – the record does not indicate that Respondent’s “primary” purpose in registering the Disputed Domain Name was to sell it to Complainant or a competitor of Complainant”.
“Indeed, Respondent has provided an uncontradicted explanation related to his registration of the Disputed Domain Name, that is, that it is related to the personal and geographic names associated with the word “Cadillac,” not Complainant’s trademark:
“In light of these concerns, this Panel notes that “[i]t may be that Complainant could develop evidence of bad faith and lack of legitimate interest in a legal proceeding that would allow more evidentiary development. The Policy, however, was not designed to transfer domain names in every case that a trademark owner might ultimately win.” Trans Continental Records, Inc. v. Compana LLC, WIPO Case No. D2002-0105 (April 30, 2002)”.
“Finally, given Respondent’s arguments, actions and lack of actions, the Panel is also unconvinced that bad faith exists pursuant to the doctrine of “opportunistic bad faith.”