The Complainants are 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 Bernard Alvey, 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 July 24, 2020. On July 27, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 28, 2020, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 29, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 18, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 19, 2020. The Center appointed Manuel Moreno-Torres as the sole panelist in this matter on August 31, 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 The Complainant Hyundai Motor Company is a multinational conglomerate headquartered in Seoul, Republic of Korea. The Complainant is one of the largest car manufacturers in the world. The Complainants are the owners of a number of trademarks worldwide. For example, - United States Trademark Registration No. 1104727, HYUNDAI, registered on October 24, 1978; Both HYUNDAI and GENESIS are to be considered well-known trademarks for the purposes of the UDRP. Besides, the Complainants have also made substantial investments to develop strong presence online by being active on various social media platforms. Likewise, the Complainants are the owners of a large portfolio of domain names comprising its HYUNDAI and GENESIS trademarks. The disputed domain names were registered on the following dates: All of the disputed domain names do not resolve to active web pages, with the exception of the disputed domain names The Complainants send up to two cease and desist letters to the Respondent who never answered. The Respondent did not answer the Complaint. 5. Parties’ Contentions A. Complainant The Complainants allege that each of the disputed domain names incorporates the Complainants’ GENESIS or HYUNDAI trademarks in its entirety. Accordingly, their trademarks are clearly recognizable in the disputed domain names. The mere addition of a geographical or descriptive term does not prevent a finding of confusingly similarity with the Complainants’ GENESIS or HYUNDAI trademarks. Besides, the generic Top-Level Domain (“gTLD”) “.com” must be disregarded for the purposes of the first element. With regard to the second element, the Complainants submit that the Respondent has no rights or legitimates interest in the disputed domain names. For such the Complainants support their claim as follows: the Respondent is not using the disputed domain names with a bona fide offering of goods or services since they do no resolve to websites displaying any active content. Besides, the Respondent is not commonly known by the disputed domain names. Quite the opposite, the Respondent is listed in the public available WhoIs records as “Bernard Alvey”. Moreover, to the Complainants’ knowledge the Respondent has no trademarks rights on the terms that make up the disputed domain names. Finally, the Respondent is not making any legitimate noncommercial or fair use of the disputed domain names since the Respondent is not making any use of the disputed domain names in such a manner that would give rise to rights or legitimate interests. The Complainants assert that the disputed domain names were registered and are being used in bad faith. The Complainants’ trademarks predate the disputed domain names’ registration, HYUNDAI trademark is internationally well known and GENESIS has been extensively used since the launch of its first model at New York International Auto Show in 2008. The Complainants note that third parties have previously made and continuously make bona fide use of the term “genesis” for goods or services unrelated to the Complainants’ automotive goods and services. However the composition of the majority of the disputed domain names corresponds with naming convention used by the Complainants’ authorized dealers. Therefore, the Respondent had the Complainants in mind when registering the disputed domain names. Lastly, the Complainants highlight that the Respondent has registered no fewer than 14 domain names, each containing the Complainants’ trademarks. Thus, the Respondent has registered the disputed domain names in order to prevent the owner of the GENESIS and HYUNDAI trademark from reflecting their trademarks in corresponding domain names and has engaged in such a pattern of conduct which is deemed to be considered as in bad faith. The Complainants also refer to the passive holding doctrine regarding domain names as set up in the Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.3 which depicts several factors to match with this doctrine. The Complainants’ HYUNDAI and GENESIS trademarks are well known and highly distinctive in the context of the automotive industry. The Respondent has failed to engage with the Complainants, or to produce any evidence of actual or contemplated good-faith use of the disputed domain names. And the nature of the disputed domain names themselves carry with them a high risk of implied affiliation with the Complainants. B. Respondent The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; There are no exceptional circumstances within paragraph 5(f) of the Rules to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a response. Under paragraph 14(a) of the Rules in the event of such a “default” the Panel is still required “to proceed with a decision on the complaint”, whilst under paragraph 14(b) it “shall draw such inferences therefrom as it considers appropriate”. This dispute resolution procedure is accepted by the domain name registrant as a condition of registration. The Panel will also take into consideration the WIPO Overview 3.0. A. Consolidation Paragraph 10(e) of the Rules grants a panel the power to consolidate multiple domain name disputes. Likewise, paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder. In the Panel’s view the Complainants have a specific common grievance against the Respondent and thus, the consolidation is agreed. B. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy provides that the complainant must establish that the disputed domain name is identical or confusingly similar to the trademark. The disputed domain names incorporate HYUNDAI and GENESIS trademarks in its entirety, with the addition of a geographical or descriptive term. Where a domain name incorporates the entirety of a trademark, it will normally be considered confusingly similar to the mark (see section 1.7 of WIPO Overview 3.0). Such an inference is not altered in case an descriptive or geographical term is added to the disputed domain name (see section 1.8 of WIPO Overview 3.0). It is well established that gTLDs are typically irrelevant to the consideration of identity or confusing similarity between a trademark and a domain name. Therefore, having the Complainants show trademarks rights on HYUNDAI and GENESIS and upon the above mentioned, the test for the first requirement under paragraph 4(a)(i) of the Policy is met. C. Rights or Legitimate Interests The Complainants support their claim on the basis of paragraph 4(c) of the Policy. Indeed, the Complainants have provided evidences that the Respondent is not using or is ready to use the disputed domain names in connection with a bona fide offering of goods or services. Neither the Respondent is commonly known by the disputed domain names. Nor the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Panel finds that the Complainants have made a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain names. In addition, the Panel notes that the composition of the disputed domain names are such that it effectively impersonates or suggests sponsorship or endorsement by the Complainants. Such a finding is strengthen by the reproduction of the composition of the brand naming pattern used by authorized Complainants’ dealers except for one of the disputed domain names where the geographical term is in advance to the trademark. See WIPO Overview 3.0, section 2.5.1: “Fundamentally, a respondent’s use of a domain name will not be considered ‘fair’ if it falsely suggests affiliation with the trademark owner.” See The Procter & Gamble Company v. Whoisguard, Inc. / Enzo Gucci, Xtremcare, Tony Mancini, USDIET, USDIET Ltd,WIPO Case No. D2016-1881 following the criteria set out in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 that describes possible scenarios in which a reseller can act legitimately when using the mark. Further, no disclaimer appears to clarify the terms of the apparent relation between the Parties which arises from the composition of the disputed domain names. Further the See OSRAM GmbH. v. Mohammed Rafi/Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org,WIPO Case No. D2015-1149: “[…] once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name.” However, the Respondent did not answer the Complaint although it had been duly notified. The Complainants have therefore demonstrated that the Respondent lacks rights or legitimate interests in the disputed domain names as described under Policy, paragraph 4(a)(ii). D. Registered and Used in Bad Faith For the purposes of the Policy, a complainant must establish that the domain name was registered and used in bad faith by the respondent. The Panel notes the recognition and knowledge of the HYUNDAI and GENESIS trademarks. The Panel also accepts that the Respondent has registered fourteen disputed domain names in this case, following in every case except in one of them, the same Complainants’ naming pattern (trademark and geographic location), which the Complainants use for their authorized dealers. Further, the spelling of the disputed domain names support a finding that the Respondent registered the disputed domain names with the Complainants’ trademarks in mind. Upon the above, the Panel finds that, on the balance of the probabilities, the Respondent was likely aware of the Complainants and their HYUNDAI and GENESIS trademarks, and targeted these marks, when registering the disputed domain names. With regard to the use in bad faith of the disputed domain names, the Panel finds appropriate to look at 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, the Respondent has been involved in previous UDRP cases. See for example, Bob Stallings Hyundai, Inc. d/b/a Genesis of Dallas v. Bernard “Chip” Alvey,WIPO Case No. D2019-1514 and Carvana, LLC v. Bernard Alvey,WIPO Case No. D2019-2163. The Panel also applies the passive holding doctrine in connection to those disputed domain names currently inactive. See Telstra Corporation Limited v. Nuclear Marshmallows, supra. While the registration of the disputed domain names took place years ago, no evidence has been provided to demonstrate a legitimate use in any manner. While the To sum up, the Panel concludes based on the circumstances, that the Respondent registered the disputed domain names for its trademark value. Accordingly and on the balance of probabilities, it is more likely than not that the Respondent registered and used the disputed domain names in bad faith. Consequently, the third element of the Policy set up in paragraph 4(a)(iii) is met. 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 Manuel Moreno-Torres
- United States Trademark Registration No. 3531628, GENESIS, registered on November 11, 2008;
- Korean Trademark Registration No. 4001783910000, HYUNDAI, registered on September 25, 2000;
- Korean Trademark Registration No. 40-0743737, GENESIS, registered on April 15, 2008;
- International Registration No. 1046531, HYUNDAI, registered on February 23, 2010;
- International Registration No. 939229, GENESIS, registered on September 6, 2007.
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names were registered and are being used in bad faith.
Sole Panelist
Date: September 14, 2020
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