Complainants are Hyundai Motor Company, Republic of Korea, and Hyundai Motor America, United States of America (“United States”), represented by Hogan Lovells LLP, Paris, France.
Respondent is Registration Private, Domains By Proxy, LLC, United States / Eric Steele, 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 March 26, 2020. On March 26, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On March 27, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 3, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 7, 2020. The Center verified that the Complaint together with the amended 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 April 8, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 28, 2020. The Center received four informal email communications from Respondent on April 16, 17, 21, and 23, 2020, and one informal email communication from Complainant on April 22, 2020. The Center notified the Parties on April 29, 2020, that it would proceed to panel appointment. The Center appointed Christopher S. Gibson as the sole panelist in this matter on May 8, 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. 4. Factual Background Complainant Hyundai Motor America is a wholly-owned subsidiary of Complainant Hyundai Motor Company. Complainants belong to the same corporate group, the Hyundai Motor Group (“Hyundai”), a multinational conglomerate headquartered in Seoul, Republic of Korea. Hyundai is the Republic of Korea’s largest car manufacturer. In 2016, the Organisation Internationale des Constructeurs d’Automobiles ranked Hyundai as the world’s third largest vehicle manufacturer by production volume. Hyundai maintains 432 production bases and offices in 49 countries, research and development centers in 12 countries, and sales offices in 65 countries. Its production and sales network spans some 200 countries and territories across the globe. Hyundai employs over 280,000 individuals. In 2018, Hyundai’s total revenues amounted to over USD 220 billion. As part of its product line, Complainants offer a luxury car line under the GENESIS trademark. In 2008, Hyundai introduced the Genesis model. The Genesis line is distributed in the United States by Genesis Motor America, LLC, a subsidiary of Complainant Hyundai Motor America. For use in connection with its Genesis product line, Complainants own, inter alia, the following trademarks: - European Union Trade Mark No. 017766668, GENESIS, registered on August 9, 2000; - International Registration No. 939229, GENESIS, registered on September 6, 2007; - Republic of Korea Trademark Registration No. 40-0743737, GENESIS, registered on April 15, 2008; - United States Trademark Registration No. 3531628, GENESIS, registered on November 11, 2008; and - European Union Trade Mark No. 006450639, GENESIS, registered on March 31, 2009. Complainants own numerous domain names comprising the GENESIS trademark, including: Complainants have been the recipient of several awards for the Genesis line of vehicles including, inter alia: - Ruedas ESPN Best Luxury Sedan at the 2016 Miami International Auto Show; - Consumer Guide Automotive’s Best Buy Award 2017; - 2018 iF Design Award for Automotive Product Design; and - Motorweek’s Best Luxury Car 2019. Complainants have made substantial investments to develop a strong presence online by being active on various social media platforms. For instance, Genesis Motor America, LLC’s official page on Facebook has over 100,000 “likes”. In addition, Genesis Motor America, LLC has over 13,000 followers on Twitter. For the purposes of sales and distribution, Complainants have accredited approximately 300 dealerships throughout the United States. The majority of these dealerships make use of the nomenclature “Genesis of [geographic location]”, e.g., “Genesis of Alexandria”, or “Genesis of Elmhurst”. Among Complainant’s list of authorized dealerships are “Genesis of Folsom” and “Genesis of Sacramento”. These dealerships are authorized to register domain names reflecting their business name and operate websites with content only after gaining prior approval from Complainants. Specifically, paragraph 16(D) of the Genesis Motor America Dealer Sales and Service Agreement states: “DEALER shall comply with any policies or procedures that GMA may establish from time to time with respect to internet web sites and/or domain names and/or trade names. Without limiting the foregoing, any domain name or trade name that is used or maintained by DEALER (or any third party on behalf of DEALER) in connection with or relating to DEALER’s Genesis dealership operations must first be proposed by DEALER to GMA in writing and approved by GMA in writing prior to DEALER (or any third party on behalf of DEALER) using or maintaining such domain name or trade name.” The Domain Names were both registered on the same date, March 27, 2019. They both resolve to GoDaddy parking pages, and both are offered for sale for USD 2,250 each, via the domain name sales platform, Afternic.com. On May 7, 2019, Complainants’ representatives in the United States sent a cease-and-desist letter to Respondent, using the contact information as displayed in the Registrar’s WhoIs database, requesting transfer of the Domain Names. On May 8, 2019, Complainants’ representatives received a reply from the WhoIs-listed email address for the Domain Names, from an individual named “[name]”. The reply stated: (i) Identical or confusingly similar Complainants submit that the Domain Names are confusingly similar to trademarks in which Complainants have rights. Complainants have submitted evidence to show that they own numerous trademark registrations for GENESIS in jurisdictions throughout the world, including the United States. Complainants have therefore established trademark rights in GENESIS for the purposes of paragraph 4(a)(i) of the Policy. Complainants state the Domain Names both incorporate the GENESIS trademark in its entirety as their leading element, together with the addition of geographic terms: Domain Name Geographic term Complainants assert that the addition of the terms “of Folsom” and “of Sacramento” does not prevent a finding of confusing similarity with Complainants’ GENESIS trademark, which remains clearly recognizable in both of the Domain Names. It has long been recognized under the Policy that the formulation of a disputed domain name in this way, combining Complainants’ trademark with descriptive or geographical elements in this fashion, is confusingly similar to Complainants’ trademark for the purposes of the Policy. Moreover, the applicable generic Top-Level Domain, in this case “.com”, may be disregarded for the purposes of assessment under the first element, as it is viewed as a standard registration requirement. Therefore, the Domain Names are confusingly similar to Complainants’ GENESIS trademark in accordance with paragraph 4(a)(i) of the Policy. (ii) Rights or legitimate interests Complainants submit that Respondent has no rights or legitimate interests in the Domain Names. Complainants assert that Respondent is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy, in order to demonstrate rights or legitimate interests in the Domain Names. Complainants assert that Respondent is not using the Domain Names in connection with any bona fide offering of goods or services. Further, Complainants have not authorized the registration of the Domain Names. Respondent is not making any active use of the Domain Names, other than to list them for sale via the domain name sales platform Afternic.com. Complainants contend that the primary purpose for registration of the Domain Names was to profit from their sale to Complainants – owners of the GENESIS trademark. While Complainants acknowledge that the Domain Names are composed of combinations of dictionary and geographic terms, including the word “genesis”, Complainants submit that Respondent’s listing of the Domain Names for sale does not give rise to any rights or legitimate interests in the Domain Names on the part of Respondent. In the present case, there is no evidence of the Domain Names being used in connection with any dictionary meaning that can be ascribed to the Domain Names. Rather, the Domain Names both include Complainants’ trademark in full, and make use of the distinctive “Genesis of [geographic location]” naming pattern used by Complainants’ authorized car dealers. In fact, the Domain Names directly correspond to the names of two authorized Genesis dealerships. It can therefore be inferred that Respondent registered the Domain Names having assessed what domain names Complainants would presumably want to own, and has proceeded to list the Domain Names for sale. Moreover, Complainants argue that Respondent cannot legitimately claim to be commonly known by the Domain Names within the meaning of paragraph 4(c)(ii) of the Policy. The Domain Names are both registered behind a privacy service. The true registrant appears to be an individual named “[name]”, whose name bears no resemblance to the Domain Names whatsoever. The Domain Names do not resolve to any active websites (other than GoDaddy parking pages), and are not being used in the promotion of any business that might give rise to Respondent being commonly known by the Domain Names. Furthermore, to the best of the Complainants’ knowledge, Respondent has not secured or sought to secure any trademark rights in the term “genesis”, so as to confer any rights or legitimate interests in the Domain Names on Respondent. (iii) Registered and used in bad faith Complainants assert that the Domain Names were registered and are being used in bad faith pursuant to paragraphs 4(b)(i) and 4(b)(ii) of the Policy. Complainants have owned registered trademark rights in the GENESIS trademark dating from at least 2000, and since 2008 in the United States (where Respondent appears to be located). As such, Complainants’ trademark rights pre-date the registration of the Domain Names by several years. Complainants’ GENESIS trademark has been continuously and extensively used since the launch of its first model at the New York International Auto Show in 2008, and has become exclusively associated with Complainants in connection with its line of luxury vehicles. Complainants state that while they acknowledge that third parties have previously made and continue to make bona fide use of the term “genesis” for goods and services unrelated to Complainants’ automotive goods and services, it can be inferred from the construction of the Domain Names, i.e., “Genesis of [geographic location]”, which matches the names of two of Complainants’ authorized dealers, that Respondent had Complainants in mind when registering the Domain Names. As noted above, Respondent has not been authorized to register any domain names containing Complainants GENESIS trademark. In the circumstances, Complainants submit that Respondent, having knowledge of Complainants and their GENESIS trademark, and having no authorization to do so, registered the Domain Names in bad faith. Complainants further note that the Domain Names resolve to GoDaddy parking pages and do not otherwise appear to be used in connection with active websites. Respondent has listed the Domain Names at Afternic.com for sale for USD 2,250 each, and has offered the Domain Names to Complainants for USD 5,000 per domain name. Based on Respondent’s use of the Domain Names, Complainants submit that Respondent registered them primarily for the purpose of selling, renting, or otherwise transferring them to Complainants (or one of Complainants’ authorized dealers wishing to make use of such a domain name), for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the Domain Names, in bad faith pursuant to paragraph 4(b)(i) of the Policy. In view of the above, Complainants assert that the Domain Names were registered and are being used in bad faith, in accordance with paragraph 4(a)(ii) of the Policy. B. Respondent Respondent did not submit a formal Response to reply to Complainants’ contentions. However, on April 16, 2020, the following email was received by the Center from the Respondent: “Hello, I received a packet today regarding some domain names that I have and they had your info as my point of contact. Hope you are staying safe due to this whole corona virus thing, anyways, I am not sure what I am supposed to do from here? It is my understanding that in order to initiate this whole process the complainant has to pay something like $1500 or more? They should have just bought the domains from me for that much $. Let me know what I need to do, or if the other party wants to just stop the whole process and we can come to an agreement on $2000 for both domains? Thank you, I look forward to hearing back from you.” On April 21, 2020, the Respondent sent an email to the Center indicating that: “I am open to settling this dispute. Just let me know. Thank you.” In response to this communication, Complainants’ counsel in an email on April 22, 2020 indicated that: “the Respondent was provided ample opportunity to settle this matter prior to the filing of the Complaint. The Respondent’s recent attempts to again sell the Domain Names to the Complainant only serve as further evidence of the Respondent’s bad faith. Finally, on April 23, 2020, the Respondent sent a slightly longer note, indicating, among other things: “Hope all is well. So basically, I am trying to figure this out. I am trying to settle this dispute. But the other party does not want to settle? So a quick question. What’s the outcome that the other party wants? If they want the domains, all anyone has to do, or had to do all along was call me and talk to me. I didn’t realize I was doing anything In bad faith, let alone illegal. I had invested some money, in what I thought, was a solid source of income for my future. (I also own Facebookofamerica.com, yeastupid.com, and democratsforagreenamerica.com). Had I known that it would be a problem, I would not have spent my hard earned money buying domains.” 6. Discussion and Findings In order to succeed on its Complaint, Complainants must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that: (i) the Domain Names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainants have rights; (ii) Respondent has no rights to or legitimate interests in respect of the Domain Names; and (iii) Respondent has registered and is using the Domain Names in bad faith. A. Identical or Confusingly Similar The Panel finds that Complainants have established rights in their GENESIS trademarks, based on ownership of the marks’ registrations and continuous use of the marks in commerce. Further, the Panel determines that the Domain Names are confusingly similar to the GENESIS marks. Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), states that the test of confusing similarity “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name”. Further, WIPO Overview 3.0, section 1.8 provides in relevant part that: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.” Here, the Panel determines that Domain Names are confusingly similar to Complainants’ GENESIS trademarks. See Moncler S.p.A. v. Ndiaye Therese and Ndiaye Therese, Newbeta,WIPO Case No. D2017-0346 (“There are 148 disputed domain names. Disregarding the gTLD or the ccTLD, each of the disputed domain names consists of the Complainant’s trademark, MONCLER. In most cases, the disputed domain name consists of the trademark MONCLER followed by a descriptive element or a geographical element or, in some cases, both.”); Hyundai Motor Company and Hyundai Motor America v. Privacy Administrator, Anonymize Inc. and Mike Dolce,WIPO Case No. D2019-2987 (“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’ […]. 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.”). Accordingly, the Panel finds that that the Domain Names are confusingly similar to a trademark in which Complainants have rights, in accordance with paragraph 4(a)(i) of the Policy. Complainants have satisfied the first element of the Policy. B. Rights or Legitimate Interests Regarding the second element of the Policy, WIPO Overview 3.0, section 2.1, states that “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.” Here, the Panel determines that Complainants have made out a prima facie case, while Respondent has failed to rebut Complainants’ contentions. The Panel finds that Complainants have not authorized Respondent to use their GENESIS trademark in the Domain Names or otherwise; that Respondent is not commonly known by the Domain Names; that Respondent has not used the Domain Names for a legitimate noncommercial or fair use, nor used them in connection with a bona fide offering of goods or services. Instead, the Domain Names have been linked to a GoDaddy parking page and offered for sale, including to Complainants for USD 5,000 per Domain Name, an amount significantly exceeding Respondent’s out-of-pocket costs. Accordingly, the Panel finds that Complainants have made a prima facie showing of Respondent’s lack of rights or legitimate interests in respect of the Domain Names, which has not been rebutted by Respondent. These matters, bearing in mind the registration of Complainants’ GENESIS marks long before the Domain Names were registered, are sufficient to raise a prima facie case that Respondent does not have rights or legitimate interests in the Domain Names. The Panel therefore determines that Complainants have established the second element of the Policy in accordance with paragraph 4(a)(ii). C. Registered and Used in Bad Faith The third element of paragraph 4(a) of the Policy requires that Complainants demonstrate that Respondent registered and is using the Domain Names in bad faith. WIPO Overview 3.0, section 3.1, states that “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”. Here, the Panel determines that the Domain Names were registered and are being used in bad faith. Complainants’ GENESIS trademarks have been in use for approximately 20 years, and Complainants’ earliest trademark registration in the United States, where it appears Respondent is located, predates the Domain Names’ registrations by approximately 11 years. The Panel observes that Respondent has registered not just the two Domain Names in dispute in this case, but also at least seven other domain names that use the same “Genesis of [geographic location]” naming pattern, which Complainants use for their authorized dealers. From all of these registrations, the Panel finds, on the balance of the probabilities, that Respondent was likely aware of Complainants and their GENESIS trademarks, and targeted these marks, when registering the Domain Names. Moreover, pursuant to section 3.1.2 of WIPO Overview 3.0, UDRP panels have held that a “pattern of abuse has also been found where the respondent registers, simultaneously or otherwise, multiple trademark‑abusive domain names corresponding to the distinct marks of individual brand owners.” Here, as noted above, Respondent has registered multiple domain names comprised of Complainants’ GENESIS marks. See, e.g., Moncler S.p.A. v Yao Tom, Lee Fei, Geryi Wang,WIPO Case No. D2015-2244 (“by its registration of the 50 Disputed Domain Names, Respondent has engaged in a ‘pattern’ of conduct that also constitutes bad faith, pursuant to paragraph 4(b)(ii) of the Policy”). Further, Respondent’s bad faith can be inferred from Respondent’s reply to Complainants’ cease and desist letter prior to filing the Complaint, where Respondent requested payment of USD 5,000 for the sale of each of the Domain Names. In conclusion, the Panel determines that, for all of the above reasons, the Domain Names were registered and are being used in bad faith. Accordingly, Complainants have satisfied the third element of the Policy. 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 Names Christopher S. Gibson
“Thank you for your interest in the domains (Genesisoffolsom) (Genesisofsacramento). These domains are currently being offered for sale at a BUY IT NOW, price of $5000 each. However, feel free to make a reasonable offer.” 5. Parties’ Contentions A. Complainant
Complainants contend that Respondent’s intent has been further confirmed in the reply to Complainants’ cease-and-desist letter, in which Respondent offered to sell the Domain Names to Complainant for USD 5,000 each. Such behavior indicates that the Domain Names were registered for the bad-faith purpose of selling them to the trademark owner (or an authorized dealer). In the circumstances, Complainants submit that Respondent’s use of the Domain Names does not amount to a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy.
Finally, Complainants contend that Respondent is not making any legitimate noncommercial or fair use of the Domain Names. Nor can Respondent assert that Respondent has made or is currently making a legitimate noncommercial or fair use of the Domain Names within the meaning of paragraph 4(c)(iii) of the Policy. The Domain Names do not resolve to active websites, and are currently listed for sale via Afternic.com for USD 2,250 per domain name. Moreover, Respondent has actively offered the Domain Names for sale to Complainants for USD 5,000 each. Thus, Complainants argue that Respondent wishes to profit from the sale of the Domain Names, and such use of the Domain Names is intended to be for commercial gain.
Complainants therefore assert that Respondent has no rights or legitimate interests in respect of the Domain Names, in accordance with paragraph 4(a)(ii) of the Policy.
In addition, Complainants have submitted evidence that Respondent previously registered a total of eight other domain names, each containing Complainants’ GENESIS trademark in its entirety, namely:
Noting Complainants’ use of the “Genesis of [geographic location]” naming pattern for its authorized dealers, Complainants further submit that Respondent has registered the Domain Names in order to prevent the owner of the GENESIS trademark from reflecting the mark in a corresponding domain name, and has engaged in such a pattern of conduct, in bad faith as envisaged by paragraph 4(b)(ii) of the Policy.
Having already incurred the time and costs associated with the filing the Complaint, the Complainant confirms that it does not wish to suspend the present proceedings. Accordingly, the Complainant respectfully requests for the Center to proceed to Panel appointment so that a decision may be issued on the merits.”
Sole Panelist
Date: May 23, 2020
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