World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kia Motors America, Inc. v. Sergei Sergeiev

Case No. D2011-2267

1. The Parties

1.1 The Complainant is Kia Motors America, Inc. of Irvine, California, United States of America, represented by Dickstein Shapiro LLP, United States of America.

1.2 The Respondent is Sergei Sergeiev of Minsk, Belarus.

2. The Domain Name and Registrar

2.1 The disputed domain name <kiauniveristy.com> (the “disputed Domain Name”) is registered with Gransy, s.r.o. d/b/a subreg.cz (the “Registrar”).

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2011. On December 23, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed Domain Name. On January 9, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 10, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on January 18, 2012.

3.2 The Center verified that the Complaint together with the amendment to 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”).

3.3 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 20, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 9, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 10, 2012.

3.4 The Center appointed Ike Ehiribe as the sole panelist in this matter on February 24, 2012. 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

4.1 The Complainant in these administrative proceedings is Kia Motors America Inc., a corporation based in the state of California in the United States and a wholly owned subsidiary of Kia Motors Corporation (“KMC”), South Korea’s second largest automobile manufacturer. The corporation was founded in 1944 and changed its name from Kyungsung Precision Industry to “Kia” in 1952. The corporation currently produces over 1.5 million vehicles per year in 13 manufacturing and assembly operations in eight countries. The corporation currently has over 42,000 employees and annual revenues in excess of USD 14.6 billion. The “Kia” word is a term derived from the Sino-Korea word “ki” and “a” which when translated into English means “to come out” and “Asia” and has since been used as trademark by the corporation and the Complainant.

4.2 The KIA trademark is owned by the corporation in multiple jurisdictions for a wide range of goods and services with trademark registrations in the United States, United Kingdom of Great Britain and Northern Ireland, the Republic of Korea, China, Australia, the Russian Federation, Czech Republic etc., in classes 7, 9, 11, 12 and 35. The registrations cover vehicles and parts, components and accessories for vehicles, machinery, environmental control apparatus, building materials and other promotional items in other classes. The corporation has conducted extensive marketing and advertising under the KIA trademark which has benefited the Complainant as a subsidiary of the corporation. The corporation is said to be recognized as the official automotive partner of the International Federation of Association Football (“FIFA”) which organizes major football tournaments including the FIFA World Cup, an event which is broadcast in 214 countries and territories. The KIA trademark is said to be prominently featured in most advertisements and broadcast during such events, thus ensuring that the KIA trademark is well-recognized on a global scale.

4.3 The Respondent in these proceedings is based in Belarus and according to the WhoIs database registered the disputed Domain Name on August 29, 2009.

5. Parties’ Contentions

A. Complainant

5.1 The Complainant submits that the disputed Domain Name <kiauniveristy.com> is confusingly similar to the Complainant’s KIA trademark because it wholly incorporates the Complainant’s distinctive trademark. The Complainant submits further that the disputed Domain Name is also similar to the Complainant’s KIA UNIVERSITY service mark which is in use for the Complainant’s sales associate training programs. It is said that the Complainant has offered educational programs under the KIA UNIVERSITY service mark since the year 2000 and maintains a website to promote and disseminate information regarding training programmes at <kiauniversity.com>. It is stated that the Complainant registered the said domain name on June 9, 2004 nearly five years before the Respondent registered the disputed Domain Name in August 2009.

5.2 The Complainant asserts that the composition of the disputed Domain Name is evidence that the Respondent is engaged in the act of typosquatting as Internet visitors or individuals seeking educational services offered at the Complainant’s <kiauniversity.com> domain name could potentially arrive at the disputed Domain Name in error due to the deliberate misspelling in the disputed Domain Name address. The Complainant submits that typosquatting is evidence of confusing similarity as previously held in other UDRP decisions such as The Toronto-Dominion Bank v. Boris Karpachev, WIPO Case No. D2000-1571 and AT&T Corp.v. John Zucacarini d/b/a Music Wave and RaveClub Berlin, WIPO Case No. D2002-0440.

5.3 The Complainant further submits that there is no evidence that the Respondent conducts business or trades lawfully under the KIA name or under the name KIA UNIVERSITY; or that the Complainant or the corporation KMC has granted the Respondent any authorization or licence to use the KIA trademark in any form. The Complainant states that the disputed Domain Name resolves to links which serve as advertisements and directs Internet users to third party websites. These third party websites offer goods and services directly related to those provided by the Complainant and many of the links direct Internet users to third party competitors of the Complainant. The Complainant therefore submits that the provision of links to third party websites is commercial use, as held in Shaw Industries Group, Inc. and Columbia Insurance Company v. Parth Shah, WIPO Case No. D2007-1368; and such conduct has the potential to lead consumers to believe that the disputed Domain Name is authorized by the Complainant or associated with, or affiliated with or otherwise related to the Complainant. The Complainant further relies on Alfa Laval AB and Alfa Laval Corporate AB v. Alfalava.com, WIPO Case No. D2007-1881 to submit that where as here, the disputed domain name incorporates a distinctive trademark and incorporates links to goods or services competitive with the trademark owner, panels have consistently held that the respondents had no rights or legitimate interests in the disputed domain name. The Complainant therefore concludes on the foregoing that the Respondent has no rights or legitimate interests with respect to the disputed Domain Name <kiauniveristy.com>.

5.4 With regards to registration and use in bad faith, the Complainant’s first submission is that it is difficult to imagine that the Respondent could not have been aware of the Complainant’s trademark rights in KIA when registering the disputed Domain Name as a search of publicly available trademark records and or a simple Internet search for the mark KIA would have revealed the Complainant’s well-established trademark rights. In this regard the Complainant refers to several previous UDRP decisions including Xerox Corporation v. Imaging Solution, WIPO Case No. D2001–0313 where the panel held that the registration of a domain name which incorporates a trademark in its entirety is evidence of bad faith registration. The Complainant’s second submission is that it is highly unlikely that the Respondent was unaware of the Complainant’s rights in KIA UNIVERSITY and the educational services offered under this mark when registering the disputed Domain Name. The Complainant reiterates that the misspelling of the word “univeristy” (i.e. “university”) in the disputed Domain Name only aggravates the possibility of Internet users arriving at the Respondent’s website in error and is a clear indication that bad faith was present when the disputed Domain Name was registered. Thirdly, the Respondent is using the disputed Domain Name in bad faith as the Respondent’s website features advertisements in the form of links to third party websites, some of which feature the Complainant’s KIA trademark, while some others feature the trademarks of the Complainant’s competitors. In this regard, the Complainant refers to a printout of the Respondent’s website obtained on December 16, 2011. The Complainant in this regard relies on the decision in Lancôme Parfums et Beaute & Compagnie v. D Nigam, Privacy Protection Services / Pluto Domains Services Private Limited, WIPO Case No. D2009-0728 to assert that the incorporation of third party links regarding services competitive to those provided under another party’s trademark supports a finding of bad faith use and registration.

B. Respondent

5.5 The Respondent did not reply to the Complainant’s contentions and is in default. Therefore in accordance with paragraphs 14(a) and (b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent’s default.

6. Discussion and Findings

6.1 Under paragraph 4(a) of the Policy, to succeed in these administrative proceedings, the Complainant must prove: (i) that the disputed Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;(ii) that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name, and; (iii) the disputed Domain Name has been registered and is being used in bad faith.

6.2 As is expressly stated in the Policy, the Complainant must establish the existence of each of these three elements in these proceedings.

A. Identical or Confusingly Similar

6.3 The Panel is completely satisfied that the disputed Domain Name, namely <kiauniveristy.com> is identical or confusingly similar to the trademark in which the Complainant has well-established world-wide trademark rights. The Complainant has demonstrated by substantial evidence of numerous trademark registrations that it has worldwide well-established trademark rights in the KIA trademark. It is overwhelmingly obvious that the disputed Domain Name wholly incorporates the Complainant’s distinctive trademark KIA, a term of Sino-Korean origin that the Complainant has used to manufacture and market automobiles and allied services since 1952. The Panel also finds that the disputed Domain Name is confusingly similar to the Complainant’s KIA UNIVERSITY service mark under which the Complainant has offered educational and training programs to the Complainant’s sales associates since the year 2000 and maintains a website <kiauniversity.com>, registered on June 9, 2004 to promote and disseminate its training programs. The Panel finds that since an average of 14,000 users have been registered annually through the Complainant’s website at <kiauniversity.com> since the inception of the Complainant’s university programs, the Complainant’s KIA UNIVERSITY is clearly recognized as a service mark by members of the public.

6.4 Just as the Complainant correctly asserts, the Panel is satisfied that the Respondent is engaging in typosquatting by a deliberate misspelling of the word “university” as “univeristy” thereby rendering it possible for those seeking the Complainant’s goods or services to potentially arrive at the disputed Domain Name in error and mistake the content for promotion and advertising of or authorized by the Complainant. Undoubtedly, the Panel finds that typosquatting is indeed evidence of confusing similarity as held in The Toronto–Dominion Bank v. Boris Karpachev, supra where the disputed domain name <dwaterhouse.com> was found to be confusingly similar to the complainant’s TD WATERHOUSE service mark and <tdwaterhouse.com> domain name as the panel observed that the respondent was clearly intending to confuse customers and divert them to his websites when they either misspell or err in typing the complainant’s domain name <tdwaterhouse.com>. See also AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin, supra where the panel held that the minor misspelling of the word “wireless” did not obviate the confusion arising therein in finding the disputed domain names <attwirelesss.com>, <attwieless.com> and <attwierless.com> confusingly similar to the complainant’s AT&T WIRELESS mark.

6.5 Accordingly, the Panel is satisfied that the Complainant has established the disputed Domain Name to be confusingly similar to the Complainant’s KIA trademark and KIA UNIVERSITY service mark in accordance with paragraph 4(a) of the UDRP Policy.

B. Rights or Legitimate Interests

6.6 The Panel also finds that the Respondent has failed to provide any concrete evidence to suggest that the Respondent conducts business or trades under the KIA name or under the name KIA UNIVERISTY. Equally, the Respondent has failed to demonstrate that he has been granted any authorization to use the KIA trademark in any form. The Panel also finds that as the disputed Domain Name resolves to links which serve as advertisements and third party websites including websites of the Complainant’s competitors such usage cannot be described as a noncommercial and fair use of the disputed Domain Name as held in the case of Shaw Industries Group, Inc. and Columbia Insurance Company v. Parth Shaw, supra. See also in this regard the case of Alfa Laval AB and Alfa Laval Corporate AB v. Alfalava.com, supra where the panel found that the only evident purpose for using the complainant’s distinctive trademark was to divert Internet users to the respondent’s website and that such conduct did not constitute a bona fide offering of goods or services within the ambit of paragraph 4(c)(i) of the Policy.

6.7 Accordingly, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed Domain Name in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

6.8 With regards to bad faith registration and use, the Panel finds that the Respondent undoubtedly registered the disputed Domain Name in bad faith and continued to engage in bad faith use. The Panel in arriving at this finding has taken into account a number of factors left unanswered by the Respondent. Firstly, the Panel finds that the Respondent before registering the disputed Domain Name must have known or ought to have known of the existence of the Complainant’s well-established rights in both the trademark KIA and the service mark KIA UNIVERSITY which would have been revealed by a trademark registry search or a simple Internet search. See in this regard Xerox Corporation v. Imaging Solution, supra where the panel held that the registration of a domain name which incorporates a trademark in its entirety may be evidence of bad faith registration. Secondly, the Panel finds the misspelling of the word “university” as “univeristy”) designed to divert Internet users to the Respondent’s website is further evidence of the existence of bad faith as at the time the disputed Domain Name was registered. Thirdly, the Panel finds that the disputed Domain Name is being used in bad faith since the disputed Domain Name as shown in a printout from the Respondent’s website resolves to third party websites advertising goods with the Complainant’s KIA trademark and products, such as “Kia Sorento SUV”, and to other websites advertising goods of the Complainant’s competitors such as goods of Honda Motors Company and General Motors Corporation (as shown in Annex 8 of the Complaint). In support the Panel finds the case of Lancôme Parfums et Beaute & Compagnie v. D. Nigam, Privacy Protection Services/Pluto Domains Services Private Limited, supra most relevant. The panel in this case held that the incorporation of third party links regarding goods and service competing with those provided under another party’s trademark is indicative of bad faith use and registration. Fourthly, as earlier indicated in paragraph 5.5 above, the Panel has drawn adverse inferences from the Respondent’s failure or refusal to respond to the evidence and submissions provided by the Complainant in these proceedings.

7. Decision

7.1 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 Name <kiauniveristy.com> be transferred to the Complainant forthwith.

Ike Ehiribe
Sole Panelist
Dated: March 14, 2012

 

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