The Complainant is Hyundai Motor Company (“First Complainant”) of Seoul, Republic of Korea, and Hyundai Motor America (“Second Complainant”) of Fountain Valley, California, United States of America (“United States”), both represented by Hogan Lovells (Paris) LLP, France (“Complainants”).
The Respondent is Registration Private, Domains By Proxy, LLC / Eric Steele, United States (“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 August 24, 2020. On August 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names other than 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 the Respondent of the Complaint, and the proceedings commenced on September 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 1, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 2, 2020. The Center appointed Nicholas Smith as the sole panelist in this matter on October 12, 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 Complainants are part of the Hyundai Motor Group, a multinational conglomerate headquartered in the Republic of Korea. The Hyundai Motor Group is the Republic of Korea’s largest car manufacturer and the world’s third largest vehicle manufacturer by production volume, with revenues of USD 220 billion annually. Since 2008 the Hyundai Motor Group has offered a luxury car under a trademark containing the word “genesis” (the “GENESIS Mark”). The Hyundai Genesis is distributed in the United States by a subsidiary of the Second Complainant. The Complainants are the owner of trademark registrations for the GENESIS Mark, with the First Complainant being the owner of (amongst other things) a European Union registration No. 017766668 for the GENESIS Mark registered on August 9, 2000 and the Second Complainant being the owner of a United States registration No. 3531628 for the GENESIS Mark registered on November 11, 2008. The Domain Names were all registered between February and April 2019. The Domain Names presently resolve to a parking page maintained by the Registrar however prior to the commencement of the proceeding each of the Domain Names resolved to websites (“Respondent’s Websites”) offering sponsored listings (often referred to as pay-per-click advertisements), some of which referred to the Complainants (i.e. “Genesis Dealership”, “Hyundai Genesis”) and also indicated that the Domain Names were for sale. The Domain Names were listed for sale on the website “www.afternic.com” with a “buy now” price of USD 2000 and a minimum offer of USD 910. 5. Parties’ Contentions A. Complainants The Complainants make the following contentions: (i) that the Domain Names are identical or confusingly similar to the GENESIS Mark; (ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Names; and (iii) that the Domain Names have been registered and are being used in bad faith. The Complainants are the owners of the GENESIS Mark, having registered the GENESIS Mark in various jurisdictions since 2000. Each of the Domain Names wholly incorporates the GENESIS Mark along with the addition of various descriptive or geographic terms. There are no rights or legitimate interests held by the Respondent in respect of the Domain Names. The Respondent is not commonly known as the Domain Names, nor does the Respondent have any authorization from the Complainants to register the Domain Names. The Respondent does not use any of the Domain Names for a bona fide purpose or legitimate noncommercial purpose. Rather the Domain Names resolve to pages with links to advertisements, including advertisements targeted at the Complainants’ consumers; which does not provide the Respondent with rights or legitimate interests. The Domain Names were registered and are being used in bad faith. The Respondent is using the Domain Names for pay-per-click sites (some of which contain advertisements referring to the Hyundai Motor Group) which shows awareness of the Complainants and amounts to bad faith use. The Respondent is also advertising the Domain Names for sale for a sum greater than any out-of-pocket fees for the Domain Names. Such conduct amounts to registration and use of the Domain Names in bad faith. B. Respondent The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings 6.1. Preliminary Matter: A. Consolidation of Multiple Complainants The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides at section 4.11.1, in respect of the issue “Multiple complainants filing against a single respondent” that: “Paragraph 10(e) of the UDRP Rules grants a panel the power to consolidate multiple domain name disputes. At the same time, paragraph 3(c) of the UDRP 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 assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) 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 (ii) it would be equitable and procedurally efficient to permit the consolidation.” The present proceeding involves two Complainants bringing a single complaint against a single respondent. The Complainants have made a request for consolidation and bear the onus of establishing that such a consolidation is justified. The Panel is satisfied, based on the material filed, that the Complainants have a specific common grievance against the Respondent, in that the Complainants are related entities that both hold and use the GENESIS Mark. In particular the Second Complainant is the registered owner of the GENESIS Mark in the Unites States and the First Complainant is the registered owner of the GENESIS Mark outside the United States. The Panel has considered whether it would be equitable and procedurally efficient to permit the consolidation. The Panel finds that it is equitable and procedurally efficient to grant the Complainants’ request for consolidation and grants the request. 6.2. Substantive Matters A. Identical or Confusingly Similar To prove this element the Complainants must have trade or service mark rights and each Domain Name must be identical or confusingly similar to the Complainants’ trade or service mark. The Complainants are the owner of the GENESIS Mark, having registrations for the GENESIS Mark in various European jurisdictions. Disregarding the respective Top-Level Domains as a necessary element of a domain name, each of the Domain Names wholly incorporate the GENESIS Mark along with one or more dictionary words or geographical terms. Other UDRP panels have repeatedly held that “the addition of a generic word to a recognized mark creates a confusing similarity between the domain name and the mark of the [c]omplainant”; see The Bank of Nova Scotia v. Whois Protection,WIPO Case No. D2007-0884. See also Valero Energy Corporation, Valero Marketing and Supply Company v. Domain Name Proxy, LLC, Navigation Catalyst Systems, Inc.,WIPO Case No. D2011-1227. The Panel finds that each of the Domain Names are confusingly similar to the Complainants’ GENESIS Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain names. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain names. Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name: “Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii): (i) before any notice to you 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 (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 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 Respondent is not affiliated with the Complainants in any way. The Respondent has not been authorized by the Complainants to register or use the Domain Names or to seek the registration of any domain name incorporating the GENESIS Mark or a mark similar to the GENESIS Mark. There is no evidence that the Respondent is commonly known by the Domain Names or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Names in connection with a legitimate noncommercial fair use or a bona fide offering of goods and services; the use of the Domain Names for what appears to be a parking page with pay-per-click links including advertisements related to the Complainants’ products and offers to sell the Domain Names does not amount to use for a bona fide offering of goods and services. The Complainants have established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names. The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interest in the Domain Names under the Policy. In the absence of such a Response, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainants who are the owner of the trade mark or service mark or to a competitor of the Complainants, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or (ii) the Respondent has registered the 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 (iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online 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. (Policy, paragraph 4(b)). The Panel finds that the Respondent must have been aware of the Complainants and their reputation in the GENESIS Mark at the time the Respondent registered the Domain Names. The Respondent has provided no explanation, and none is immediately obvious, why an entity would register 10 domain names incorporating the GENESIS Mark (and either a generic word or a geographical term) and redirect it to websites containing links referring to the Complainants and their goods unless there was an awareness of and an intention to create a likelihood of confusion with the Complainants and their GENESIS Mark. In these circumstances, the Respondent’s conduct in registering the Domain Names when it was aware of the Complainants’ rights and lacked rights or legitimate interests of its own amounts to registration in bad faith. The Respondent’s Websites contain what appear to be pay-per-click links purporting to offer goods in direct competition with the Complainants. In these circumstances where the Respondent has offered no plausible explanation for the registration of the Domain Names the Panel finds that that the Respondent is using the Domain Names to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the GENESIS Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Websites. As such the Panel finds that the Domain Names are being used in bad faith. Accordingly, the Panel finds that the Respondent has registered and is using the Domain Names in bad faith under paragraph 4(a)(iii) 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, Nicholas Smith
Sole Panelist
Date: October 14, 2020
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