Complainant is Bob Stallings Hyundai, Inc. d/b/a Genesis of Dallas, United States (“United States”), represented by Jackson Walker, LLP, United States.
Respondent is Bernard “Chip” Alvey, United States. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2019. On July 2, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 3, 2019, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 5, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 25, 2019. The Center received a communication from Respondent on July 26, 2019. On August 2, 2019, the proceedings were suspended for 30 days for purposes of settlement negotiations between the Parties. The Center reinstituted the proceedings on September 3, 2019.
The Center appointed Robert A. Badgley as the sole panelist in this matter on September 3, 2019. 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
Complainant is an automobile dealership based in Dallas, Texas. Complainant was formed in September 2013, and in November 2013 Complainant acquired the assets of South Dallas Hyundai. Complainant is an authorized retailer of certain automobiles manufactured by Hyundai Motor Group (“HMG”), including the “Genesis” series of luxury sedans.
HMG holds various registered trademarks for the mark GENESIS, including Registration No. 3531628 on November 11, 2008, with the United States Patent and Trademark Office. Under a March 2016 participation agreement between Complainant and HMG, Complainant was granted the right to use the GENESIS mark and to incorporate that mark into a domain name.
Complainant does business as “Genesis of Dallas,” and advertises itself as such on social media pages hosted by Facebook and Twitter. HMG has similar licenses with approximately 300 other dealerships in the United States. According to Complainant, most of these dealerships have adopted the convention “Genesis of [city]” to identify themselves.
The Domain Name was registered on January 14, 2016. The Domain Name does not resolve to a website. 5. Parties’ Contentions A. Complainant
Complainant asserts that it has satisfied all three elements required under the Policy for a transfer of the Domain Name. According to Complainant, Respondent has registered and is using the Domain Name in bad faith under paragraph 4(b)(ii) of the Policy, discussed below, by virtue of Respondent having registered at least 12 other domain names comprised of the mark GENESIS, the word “of,” and then a particular city (such as , , etc.). B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the mark GENESIS. The owner of that registered trademark, HMG, has authorized Complainant to use that mark in connection with its automobile dealership. The Panel further concludes that the Domain Name is confusingly similar to the GENESIS mark, because the Domain Name incorporates that mark in its entirety and adds the geographically descriptive text “of Dallas”. These additional words do not prevent a finding of confusing similarity between the mark and the Domain Name.
Complainant has established paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name. Respondent has not come forward to explain why he registered the Domain Name and why he had a legitimate reason for doing so. Respondent also has not explained why he registered several other domain names comprised of the mark GENESIS followed by “of [city].” Given Respondent’s pattern of registering these GENESIS-formative domain names and the lack of any evidence that Respondent has any connection to HMC, Complainant, or any other automobile dealership, the most plausible explanation emerging from the undisputed record here is that Respondent registered the Domain Name for some illegitimate purpose.
Complainant has established paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent’s conduct constitutes bad faith within the meaning of the above-quoted paragraph 4(b)(ii). Respondent’s registration of the Domain Name deprives Complainant of the “dot-com” version of the trade name protocol of authorized GENESIS dealers in the United States. Respondent’s registration of several other domain names not only supports the finding that Respondent was aware of the GENESIS mark associated with the HMC automobile, but is also constitutes a pattern of conduct bringing Respondent within the scope of bad faith established in paragraph 4(b)(ii).
Complainant has established Policy paragraph 4(a)(iii). 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to Complainant.
Robert A. Badgley
Sole Panelist
Date: September 3, 2019
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