The Complainant is Hyundai Motor Company, Republic of Korea and Hyundai Motor America, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Privacy Administrator, Anonymize Inc., United States, and Mike Dolce, United States. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2019. On December 4, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name, followed by reminders on December 12 and 17, 2019. Following an intervention from ICANN, two incomplete responses by the Registrar on January 7 and 10, 2020, and a further reminder by the Center on January 17, 2020, on January 21, 2020, the Registrar confirmed, on January 22, 2020, that the disputed domain names are registered by a privacy proxy and are under registrar lock, without providing a verification on the other elements of the Center’s request for registrar verification. On the same date, the Center informed the Registrar that it understands this confirmation as a confirmation that the registrant of the disputed domain names is the entity Privacy Administrator, Anonymize, Inc., and that it will proceed on the basis of this understanding. The Registrar did not object to this notice by the Center. 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 the Respondent of the Complaint, and the proceedings commenced on January 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 12, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 13, 2020. The Center appointed Assen Alexiev as the sole panelist in this matter on March 6, 2020. 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. The Registrar has not provided a verification of the language of the registration agreements for the disputed domain names but has communicated to the Center in English. The Complainant has submitted its Complaint in English together with a copy of the domain name registration agreement, available on the website of the Registrar in English, while the Respondent has made no language objections and has not requested the language of the proceeding to be a different language. In view of this, the Panel decides that the language of the proceeding will be English. 4. Factual Background The Complainants are parts of the multinational conglomerate Hyundai Motor Group, which is the Republic of Korea’s largest car manufacturer and the world’s third largest vehicle manufacturer by production volume. Hyundai Motor Group maintains a total of 432 production bases and offices in 49 countries, research and development centers in 12 countries, and sales offices in 65 countries. It has a production and sales network in 200 countries and territories and employs over 280,000 individuals. In 2018, the total revenues of Hyundai Motor Group amounted to over USD 220 billion. As part of its product line, the Hyundai Motor Group offers a luxury car line-make under the brand GENESIS, which was introduced in 2008. The Genesis line-make is distributed in the United States by Genesis Motor America, LLC, a subsidiary of the Complainant Hyundai Motor America. The Complainant Hyundai Motor Company is the owner of the following trademark registrations: - the European Union trademark GENESIS with registration No. 017766668, registered on August 9, 2000 for goods in International Class 11; - the International trademark GENESIS with registration No. 939229, registered on September 6, 2007 for goods in International Class 12; - the trademark GENESIS with registration No. 40-0743737, registered in the Republic of Korea on April 15, 2008 for goods in International Class 12; and - the European Union trademark GENESIS with registration No. 006450639, registered on March 31, 2009 for goods in International Class 12. The Complainant Hyundai Motor America is the owner of the United States trademark GENESIS with registration No. 3531628, registered on November 11, 2008 for goods in International Class 12. The above trademark registrations are jointly referred to in this decision as the “GENESIS trademark”. The Complainant Hyundai Motor Company is also the owner of the domain names The disputed domain name Each of the disputed domain names resolves to a simple webpage that contains a message that the respective disputed domain name is for sale followed by the contact details of the Respondent Mike Dolce, indicated as the owner of the respective disputed domain name. 5. Parties’ Contentions A. Complainant The Complainants state that their Genesis line-make is distributed in the United States through a network of 300 accredited dealerships across the country. The majority of these dealerships use the nomenclature “Genesis of [geographic location]”, e.g., “Genesis of Alexandria”, or “Genesis of Elmhurst”, and are authorized to register domain names reflecting their business name and operate websites with content only after gaining prior approval from the Complainants. The Complainants submit that the disputed domain names are confusingly similar to the GENESIS trademark in which the Complainants have rights, because they incorporate this trademark in combination with various geographic or dictionary terms, which does not prevent a finding of confusing similarity with the GENESIS trademark, because the latter remains clearly recognizable in each of the disputed domain names. According to the Complainants, the Respondent has no rights or legitimate interests in the disputed domain names. The Complainants point out that the Respondent is not a licensee of the Complainants and has not been authorized by them to use the GENESIS trademark in a domain name or otherwise. The Complainants submit that the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services and has connected them to parking webpages containing only offers for sale of the disputed domain names. According to the Complainants, the Respondent is not using the disputed domain names in connection with any dictionary meaning that can be ascribed to them. Rather, the Respondent has proceeded to register 18 domain names, each including the Complainants’ GENESIS trademark and using the “Genesis of [geographic location]” structure used by the Complainants’ authorized car dealers, which indicates that the Respondent has registered the disputed domain names in an effort to corner the market in terms of GENESIS-formative domain names that the Complainants would presumably want to own, and attempt to sell them to the Complainants or to their authorized dealers. The Complainants further submit that the Respondent is not commonly known by the disputed domain names and has no trademark rights in the term “genesis”, and that the Respondent has not made a legitimate noncommercial or fair use of the disputed domain names. They point out that the websites at the disputed domain names offer them for sale and have no other substantive content, which shows that they are intended to be for commercial gain. The Complainants contend that the disputed domain names were registered and are being used in bad faith. The Complainants have owned registered trademark rights in the GENESIS trademark dating from 2000 and from 2008 in the United States where the Respondent appears to be located, so the GENESIS trademark predates the registration of the disputed domain names by several years. The Complainants acknowledge that third parties have previously made and continue to make bona fide use of the name “Genesis” for goods and services unrelated to the Complainant’s automotive goods and services. At the same time, they point out, it can be inferred from the “Genesis of [geographic location]” construction of the disputed domain names, which matches that used by the Complainants’ authorized dealers, that the Respondent had the Complainants in mind when registering the disputed domain names. The Complainants refer to the fact that the disputed domain names resolve to websites that list them as being for sale. Based on this use of the disputed domain names, the Complainants submit that the Respondent has registered the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the disputed domain names to the Complainant (or one of the Complainant’s authorized dealers wishing to use such a domain name), for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain names. The Complainants also point out that the Respondent has registered 18 domain names, each containing the GENESIS trademark, and in view of the Complainants’ use of the “Genesis of [geographic location]” naming pattern for its authorized dealers, they submit that the Respondent has registered the disputed domain names in order to prevent the owner of the GENESIS trademark from reflecting its trademark in a corresponding domain name, and has engaged in a pattern of conduct under paragraph 4(b)(ii) of the Policy. The Complainants submit that on February 12, 2019, their representatives in the United States sent a cease-and-desist letter to the Respondent, requesting the transfer of the disputed domain names, which was followed by a reminder on February 21, 2019. However, no resolution was reached, and the Respondent continues to advertise the disputed domain names for sale. B. Respondent The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings 6.1. Procedural issue – Consolidation of the Complainants The Complainants submit a request for consolidation of their disputes with the Respondent. They point out that they belong to the same corporate group and each of them holds trademark rights in the GENESIS trademark on which this Complaint is based, so they have a common legal interest to file a joint Complaint. The Complainants submit that both of them have been the target of the conduct by the Respondent who has engaged in a bad faith pattern of registration and use of the disputed domain names comprising the GENESIS trademark, so that the substantive arguments under each of the three elements of the Policy are common to all of the disputed domain names, and a consolidation of a single Complaint against the Respondent would be appropriate in the present proceeding. The Respondent has not made any comments on the consolidation request. The Panel is satisfied that a consolidation of the two Complainants in a single proceeding against the Respondent in respect of all of the disputed domain names is justified and would be appropriate in the circumstances. As summarized in section 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), in assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether the complainants have a specific common grievance against the respondent or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and whether it would be equitable and procedurally efficient to permit the consolidation. Prior UDRP panels have held that a “specific common grievance” is shown where the complainants have a common legal interest in the trademark rights on which the complaint is based or have been the target of common conduct by the respondent which has clearly affected their individual legal interests in a similar fashion. These prerequisites for consolidation are present in the case at hand. The two Complainants have submitted evidence that each of them holds registered trademark rights in the GENESIS trademark, and the conduct they allege that the Respondent has engaged into may affect, if present, each of them in a similar fashion. Neither of the Parties has made the Panel aware of any reason why a consolidation of the proceeding would not be equitable or procedurally efficient. In view of the above, the Panel decides to allow the consolidation of the two Complainants in a single proceeding against the Respondent in respect of all of the disputed domain names. 6.2. Substantive issues Pursuant to the Policy, paragraph 4(a), the Complainants must prove each of the following to justify the transfer of the disputed domain names: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and, (iii) the Respondent has registered and is using the disputed domain names in bad faith. In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case. By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name […]” The Respondent has however not submitted a Response and has thus not disputed the Complainants’ statements and evidence in this proceeding. A. Identical or Confusingly Similar The Complainants have provided evidence of and have thus established their rights in the GENESIS trademark. The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” and “.net” gTLDs of the disputed domain names. As discussed in sections 1.7 and 1.8 of the WIPO Overview 3.0, the threshold test for confusing similarity involves a reasoned but relatively straightforward comparison between the textual components of the complainant’s trademark and the disputed domain name to assess whether the trademark is recognizable within the disputed domain name. Where the relevant trademark is recognizable within the disputed domain name, the addition of other descriptive terms would not prevent a finding of confusing similarity under the first element. Each of the disputed domain names incorporates the GENESIS trademark in its entirety in combination with a geographic term such as “Atlantic”, “Bay Ridge”, “Brooklyn”, “Staten Island” or “Long Island”, with dictionary words for geographic objects such as “island”, “mid island”, “millennium”, “my island”, “nemet”, “plaza” or “south shore”, or with the two-letter fragment “br”, which appears as an abbreviation. These differences between the disputed domain names and the GENESIS trademark are not significant, and the latter is easily recognizable in each of the disputed domain names. In view of the above, the Panel finds that the disputed domain names are confusingly similar to the GENESIS trademark in which the Complainants have rights. B. Rights or Legitimate Interests While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0. The Complainants contend that the Respondent has no rights or legitimate interests in the disputed domain names, stating that the Respondent has no trademark corresponding to the disputed domain names, and the Complainants have not authorized the Respondent to use the GENESIS trademark or to register domain names that incorporate it. The Complainants further submit that the Respondent is not commonly known by the disputed domain names and has no trademark rights in the term “genesis”, and that the Respondent has not made a legitimate noncommercial or fair use of the disputed domain names. The Complainants point out that the Respondent has not chosen the disputed domain names in connection with their dictionary meaning, as they follow the “Genesis of [geographic location]” structure used by the Complainants’ authorized car dealers, which indicates that the Respondent has registered the disputed domain names in an effort to corner the market in terms of GENESIS-formative domain names that the Complainants would presumably want to own, and attempt to sell them to the Complainants or to their authorized dealers. They point out that the websites at the disputed domain names offer them for sale and have no other substantive content, which shows that they are intended to be for commercial gain. Thus, the Complainants have established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has not disputed the statements of the Complainants. It has not alleged that it has rights or legitimate interests in the disputed domain names and has not submitted any evidence for such rights or legitimate interests. The eighteen disputed domain names incorporate the GENESIS trademark, and follow the pattern “genesis of [geographic location]”, “[geographic location] genesis” or “[dictionary word] genesis”. According to the Complainants, this resembles the patterns usually followed by the dealers of the Complainants’ Genesis automobiles for the formation of the domain names that they use for their business. The evidence in the case file shows that each of the disputed domain names resolves to a parking webpage that contains only an offer for sale of the respective disputed domain name and the contact details of the Respondent. In view of the above, and in the absence of any denial by the Respondent or evidence to the contrary, the Panel is satisfied that it is more likely than not that the Respondent, being aware of the goodwill of the GENESIS trademark and of the naming patterns used by the dealers of the Complainants, has registered the eighteen disputed domain names in order to prevent the Complainants’ dealers from reflecting the GENESIS trademark in domain names that correspond to the established naming patterns and thus put the Complainants and their dealers in a situation where they may wish to buy the disputed domain names or some of them. In the Panel’s view, such conduct does not give rise to rights or legitimate interests of the Respondent in the disputed domain names. Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely: “(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have 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 you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.” As discussed above, the Respondent has registered eighteen domain names, all of which are confusingly similar to the GENESIS trademark and follow the same pattern to combine the GENESIS trademark with the name of a geographic location or of a dictionary word for a geographic object. The Respondent does not deny that this resembles the patterns usually followed by the dealers of the Complainants’ Genesis automobiles for the formation of the domain names that they use for their business. It is also not disputed that each of the disputed domain names resolves to a parking webpage that contains only an offer for sale of the respective disputed domain name and the contact details of the Respondent. Taking the above into account, and in the absence of any evidence to the contrary, the Panel is satisfied that it is more likely than not that the Respondent is aware of the Complainants’ GENESIS trademark and of the naming patterns used in their distribution network, and that the Respondent has engaged in a pattern of conduct to register eighteen domain names all targeting the same trademark in an attempt to prevent the Complainants and their dealers from reflecting the GENESIS trademark in a corresponding domain name that also reflects a geographic location where they are active and thus create an improper stimulus for them to wish to acquire one or more of the disputed domain names from the Respondent, likely for a valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the respective disputed domain name. Therefore, the Panel finds that the disputed domain names have been registered and used in bad faith. 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 disputed domain names, Assen Alexiev
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Sole Panelist
Date: March 19, 2020
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