The Complainants are Kia Motors America, Inc. (“KMA”) of Irvine, California, United States of America and Anderson Automotive Group (“AAG”) of Raleigh, North Carolina, United States, represented by Dickstein Shapiro LLP, United States.
The Respondent is Private Registrations Aktien Gesellschaft 3 of Kingstown, Saint Vincent and the Grenadines. 2. The Domain Name and Registrar
The disputed domain name (“Disputed Domain Name”) is registered with Network Solutions, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 16, 2012. On February 17, 2012, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the Disputed Domain Name. On the same date, 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 February 29, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 20, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 21, 2012.
The Center appointed Mr. Tan Tee Jim, S.C. as the sole panelist in this matter on March 30, 2012. The Panel finds that it was properly constituted. 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. 4. Factual Background
KMA is a wholly-owned subsidiary of Kia Motors Corporation (“KMC”). KMC was founded in 1944 and currently produces over 1.5 million vehicles per year in 13 manufacturing and assembly operations in 8 countries. It sells and services its vehicles through a network of dealers and distributors covering 172 countries. 1.4 million vehicles were sold through this network in 2011. KMC has annual revenue in excess of USD 14.6 billion.
KMC changed its name to “KIA” in 1952, which is derived from the Sino-Korea word “ki” and “a”. When translated into English, it means “to come out” and “Asia”, conveying the idea of a company “rising out of Asia”. It is a term coined by KMC and has since been used as a trade mark, distinguishing its goods and services from its competitors.
KMC is the registered proprietor of a large number of trade marks consisting of the KIA name in many countries, including the United States, United Kingdom of Great Britain and Northern Ireland and China. The KIA trade marks are licensed exclusively to KMA in the United States.
Both KMA and KMC have conducted extensive marketing and advertising under the KIA trade mark. Specifically, the mark has been used in connection with various international sporting events, such as the Australian Open Tennis Championships, the FIFA World Cup, the European Football Championships and the South American Football Confederation Copa America tournament. It has also been used in relation to sponsorships with sports celebrities (such as Michelle Wie) and sports teams (such as the 16 National Basketball Association teams in the United States).
AAG is one of KMA’s authorised dealers. It is authorised to use the KIA trade marks in advertising and promotional materials. AAG operates several automotive dealerships in the United States under various trade names incorporating the surname “Anderson”, including FRED ANDERSON and FRED ANDERSON KIA (which are used as service marks by AAG in connection with its automotive dealerships).
AAG has been in the automotive dealerships business for at least 20 years. It has spent about USD 28 million in connection with advertising and promoting these dealerships since 2001. AAG has also received numerous awards, such as the “KIA Dealer Excellence Program” and the “Retail Sales Leader Award”.
The Disputed Domain Name is registered with Network Solutions, LLC. by the Respondent. 5. Parties’ Contentions A. Complainant
The Complainants contend as follows:
(1) The Disputed Domain Name is identical with or confusingly similar to the KIA trade mark as well as the FRED ANDERSON and FRED ANDERSON KIA trade names in which they have rights because
(a) it incorporates the two trade marks (namely, KIA and FRED ANDERSON) used by the Complainants;
(b) it incorporates the distinctive KIA trade mark in its entirety; and
(c) it is identical to the FRED ANDERSON KIA trade name used by AAG.
(2) The Respondent has no rights or legitimate interests in the Disputed Domain Name for the following reasons:
(a) There is no evidence of the Respondent conducting any business or trade under the KIA trade mark or under the trade name FRED ANDERSON or FRED ANDERSON KIA;
(b) The Respondent is not authorised to use or otherwise dispose of the KIA trade mark or the trade names FRED ANDERSON or FRED ANDERSON KIA;
(c) The Respondent is not related to the Complainants or KMC in any way whatsoever;
(d) The Respondent is not a licensee or a franchisee of the Complainants or KMC;
(e) The Respondent does not use the Disputed Domain Name in connection with a bona fide offering of goods or services;
(f) The Respondent is not known by the Disputed Domain Name; and
(g) The Respondent is not making any legitimate noncommercial or fair use of the Disputed Domain Name.
(3) The Respondent registered and is using the Disputed Domain Name in bad faith for the following reasons:
(a) Registration of a domain name incorporating the well known mark KIA and in its entirety constitutes bad faith;
(b) The Respondent was aware, or must have been aware, of the trade mark KIA as well as the trade names FRED ANDERSON and FRED ANDERSON KIA when it registered the Disputed Domain Name;
(c) The Respondent intentionally attempted to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the trade mark KIA as well as the trade names FRED ANDERSON and FRED ANDERSON KIA;
(d) The Disputed Domain Name provides active links to third party websites that advertise automobiles produced by competitors of the Complainants; and
(e) The Respondent’s website contains numerous links to third party websites which advertise automobiles that are sold in the same channels of trade as those sold or produced by the Complainants; B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainants must prove each of the following three elements in order to succeed:
(1) The Disputed Domain Name is identical with or confusingly similar to a trade mark in which the Complainants have rights; and
(2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(3) The Disputed Domain Name has been registered and is being used in bad faith.
In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, the Panel shall, in the absence of exceptional circumstances, decide the dispute based on the Complaint. A. Identical or Confusingly Similar
There is ample evidence provided by KMA in these proceedings as regards the registrations and extensive use of the KIA trade marks in several countries (particularly in the United States, the Republic of South Korea and China) by KMC and KMA. The Panel is satisfied that the KIA trade mark is well known in these three countries.
AAG has also provided evidence of its use of the trade names FRED ANDERSON and FRED ANDERSON KIA in relation to its automotive dealerships.
Accordingly, it is the Panel’s view that the Complainants have sufficiently demonstrated their rights over the trade mark KIA as well as the trade names FRED ANDERSON and FRED ANDERSON KIA.
The trade mark KIA is an invented word. It is inherently distinctive and capable of distinguishing the goods and services of KMC and its wholly-owned subsidiary, KMA, from those of others. The trade names FRED ANDERSON and FRED ANDERSON KIA are also distinctive in relation to automotive dealerships. In this Panel’s view, the inherent distinctiveness of the trade mark KIA as well as the trade names FRED ANDERSON and FRED ANDERSON KIA is enhanced by the evidence of the registrations and extensive use of the trade mark and trade names.
It is evident to the Panel that the Disputed Domain Name is visually, orally and conceptually similar to the trade names FRED ANDERSON and FRED ANDERSON KIA. In particular, the use of the distinctive and well known mark KIA in the Disputed Domain Name would give rise to a confusion that it is in some way associated with the proprietor of the mark. Further, not only does the Disputed Domain Name incorporate the trade mark KIA and the trade name FRED ANDERSON in their entirety but it also combines the two to form the Disputed Domain Name which is itself similar to AAG’s trade name FRED ANDERSON KIA. The result is confusing similarity between the Disputed Domain Name and the trade mark KIA as well as the trade names FRED ANDERSON and FRED ANDERSON KIA.
The Panel accordingly finds that the Complainants have met the requisite of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out, without limitation, circumstances which, if proved, establish a registrant’s rights or legitimate interests to a disputed domain name. Accordingly, the Respondent may demonstrate any of the following:
(1) the Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services before any notice to the Respondent of the dispute; or
(2) the Respondent has been commonly known by the Disputed Domain Name, even if the Respondent has acquired no trade mark or service mark rights; or
(3) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
As the Respondent has not filed a Response, the Panel does not have before it any evidence of the circumstances specified in paragraph 4(c) of the Policy, or of any other circumstances which might reasonably be said to give the Respondent a right to or a legitimate interest in the Disputed Domain Name.
Numerous cases under the Policy have adopted the approach that if a respondent fails to respond and dispute the complainant’s claims, it may be inferred that the claims are true and that the respondent knows its website bearing the offending domain name is misleading: see, e.g., Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441. In Pomellato S.p.A. v. Richard Tonetti,WIPO Case No. D2000-0493, the panel inferred the lack of response as “indicative of a lack of interest inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights.”
In the present case, the Panel would make the same inferences.
There is also no evidence that the Respondent was commonly known by the Disputed Domain Name prior to its registration or that it has been dealing in goods or services under or by reference to the trade mark KIA as well as the trade names FRED ANDERSON and FRED ANDERSON KIA. Indeed, the Respondent’s website neither identifies the Respondent nor indicates that the Respondent is in some way associated with the Complainants’ KIA trade mark or the FRED ANDERSON and FRED ANDERSON KIA trade names. It is apparent to the Panel that the purpose of the Respondent’s website is to misleadingly divert consumers by capturing and diverting Internet users who wish to look for and/or purchase the Complainants’ goods and/or services to third party websites which advertise automobiles that compete with those of the Complainants.
The Panel also notes that the Respondent’s website is a typical pay-per-click landing site which generates revenue for the Respondent. It is of the view of this Panel that the website was deliberately created to exploit the goodwill associated with the Complainants’ KIA trade mark as well as the FRED ANDERSON and FRED ANDERSON KIA trade names. In particular, it was created in order to offer goods and services of third parties, including competitors of the Complainants, by creating the erroneous impression that the Respondent’s website belongs to the Complainants or is in some way associated with the Complainants.
The Panel accordingly finds that the Complainants have met the requisite of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
In accordance with Paragraph 4(a)(iii) of the Policy, the Complainants must prove that the Disputed Domain Name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the Disputed Domain Name in bad faith, namely:
(1) circumstances indicating that the Respondent has registered or has acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to the Complainants who are the owners of the trade mark or service mark or to a competitor of the Complainants, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Disputed Domain Name; or
(2) circumstances showing that the Respondent has registered the Disputed Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(3) circumstances showing that the Respondent has registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or
(4) the Respondent has, by using the Disputed Domain Name, intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
By failing to file a Response, the Respondent has failed to invoke any circumstances that could demonstrate that it did not register and use the Disputed Domain Name in bad faith and to assist the Panel in this regard.
On the other hand, the Complainants have provided ample evidence that the KIA trade mark as well as the FRED ANDERSON and FRED ANDERSON KIA trade names have been registered and extensively used before the registration of the Disputed Domain Name was registered on August 30, 2003. The Panel is satisfied that the Complainants’ KIA trade mark as well as the FRED ANDERSON and FRED ANDERSON KIA trade names have strong reputation and goodwill, and are well-known at least in respect of automobiles and related services. It is reasonable to infer that the Respondent adopted the Disputed Domain Name with the specific intention of taking advantage of the goodwill established by the Complainants in the trade mark and trade names. The Panel further finds it implausible that the Respondent was unaware of the Complainants’ KIA trade mark as well as the FRED ANDERSON and FRED ANDERSON KIA trade names.
In this Panel’s view, the Respondent’s choice of the Disputed Domain Name was calculated to mislead Internet users who seek the Complainants’ goods or services under the trade mark KIA or the trade name FRED ANDERSON or FRED ANDERSON KIA. The header of the Respondent’s website reads “Kia Dealership Resources and Information”, and the landing page has links which incorporate the Complainants’ KIA trade mark as well as the FRED ANDERSON and FRED ANDERSON KIA trade names. These features of the website are likely to cause confusion as to the origin of the goods and services advertised therein. The Panel notes that neither the Complainants nor their respective trade mark and trade names have any conceivable connection with the Respondent’s activities.
It is also apparent that the Disputed Domain Name is intended to be used to attract Internet users to the Respondent’s website to generate pay-per-click revenue. The Disputed Domain Name resolved to the Respondent’s website, which is essentially a landing page, and displays links to third party websites that advertise automobiles provided by the Complainants’ competitors. Such acts are likely to cause confusion as to the source, sponsorship, affiliation or endorsement by the Complainants of the Respondent’s website and the goods and services advertised therein. The Panel agrees with the decisions of other UDRP panels that such acts are indicative of the registration and use of the Disputed Domain Name in bad faith: see, e.g., Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415 and The Jennifer Lopez Foundation v. Jeremiah Tieman, JenniferLopez Net, Jennifer Lopez, Vaca Systems LLC,WIPO Case No. D2009-0057.
For the above reasons, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith. Therefore, the Panel finds that the Complainants have met the requisite of paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, and in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name be transferred to the Complainants1.
Tan Tee Jim, S.C.
Sole Panelist
Dated: April 12, 2012
1 To the extent necessary for any implementation purposes, the choice of which Complainant should be submitted directly by the Complainants to the concerned registrar.
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