WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hyundai Card Co., Ltd v. Above.com Domain Privacy / Shu Lin
Case No. D2012-0859
1. The Parties
The Complainant is Hyundai Card Co., Ltd of Seoul, Republic of Korea (“Korea”), represented by Kim & Chang, Korea.
The Respondent is Above.com Domain Privacy of Beaumaris, Victoria, Australia / Shu Lin of Dalian, China.
2. The Domain Name and Registrar
The disputed domain name <huyndaicard.com> is registered with Above.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2012. On April 23, 2012, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain name. On April 24, 2012, Above.com, Inc. 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 April 24, 2012 providing the registrant and contact information disclosed by Above.com, Inc, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 26, 2012.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 1, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 21, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 22, 2012.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on June 11, 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
The Complainant is a corporation headquartered in Seoul, Korea, and has provided credit card issuance services since 1995. On January 17, 2003, the Complainant obtained a trademark registration for HYUNDAI CARD (the “Mark”). Since the change of the company name to the current trade name “Hyundai Card Co. Ltd.” in October 2001, the Complainant has owned and owns over 50 trademark and service mark registrations in Korea that utilizes various capitalizations of “hyundai card” or “hyundaicard” in relation to credit card issuance services. The credit cards are presented on the Complainant’s official website <hyundaicard.com>, shown to have been created on May 7, 2000 on the publicly-available WhoIs database.
Between 2002 and 2010, the Complainant earned a total operating revenue of approximately KRW 10,092 billion. Through numerous TV commercials, print advertisements and awards, the Complainant established itself in Korea as a top-ranked company in the credit card sector with high customer satisfaction.
5. Parties’ Contentions
The disputed domain name <huyndaicard.com> is identical or at least confusingly similar to the Mark, HYUNDAI CARD in terms of appearance and sound.
In a recent decision issued by the Internet address Dispute Resolution Committee (“IDRC”), the administrative panel held that the Complainant is the legitimate right-holder of HYUNDAI CARD and other marks containing the term, “hyundai card”. Hyundai Card Co., Ltd. v. Domain Manager, IDRC Case No. D2011-0048 (<hyundaecard.co.kr>). Looking at the essential portion of the disputed domain name “huyndaicard,” as “.com” is a generic Top-Level Domain (gTLD) suffix, other than the two interchanged alphabet letters “y” and “u,” the disputed domain name is identical to the trademark. The disputed domain name falls into a form of cybersquatting commonly referred to as “typo-squatting.”
The Respondent has no rights or legitimate interests in respect to the disputed domain name or any trademark or service mark containing “huyndaicard.”
To the best of the Complainant’s knowledge, the Respondent is not commonly known by or legitimately uses the disputed domain name as its company name or trade name. The Respondent also does not offer any advertising, goods, or services under the disputed domain name. The Complainant has no relationship with the Respondent and has never granted to the Respondent any license or permission to use “hyundaicard” and any variants thereof. Furthermore, none of the methods of demonstrating rights to and legitimate interests in the domain name outlined under paragraph 4(c) of the Policy are applicable to the Respondent.
The Respondent has registered and is using the disputed domain name in bad faith.
The Respondent registered the disputed domain name in February 2008, by which time the Complainant already obtained the relevant trademarks and invested a substantial amount of resources over a long period of time to build goodwill. The trademark is widely known to consumers and easily identifiable with the Complainant’s credit card products and services. The Respondent’s registration of the identical or at least confusingly similar domain name <huyndaicard.com> cannot be deemed coincidental. The disputed domain name was thus registered and is being used in bad faith by the Respondent to freeride on the Complainant’s fame and goodwill.
Additionally by using a spelling variation of “hyundaicard” through “typo-squatting,” the Respondent takes advantage of Internet users’ mistyping of “hyundaicard” when trying to access the Complainant’s official website “www.hyundaicard.com” for the purpose of attracting users to the website associated with the disputed domain name.
The Respondent (Above.com Domain Privacy) has been involved in over 60 UDRP proceedings since 2009, where it was ordered to transfer the domain names in dispute to respective trademark owners.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Language of the Proceedings
According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the panel decides otherwise. The spirit of paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors.
In the present case, the Complaint was filed in the English language and the language of the Registration Agreement for the disputed domain is also in English. Therefore, the Panel decides that English shall be the language of the proceeding in this case.
Substantive Elements of the Policy
Paragraph 4(a) of the Policy requires the Complainant to prove each and all of the following three elements in order to prevail in these proceedings:
(i) the disputed domain name is 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 the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The fact that the Respondent has not provided a Response to the Complaint does not relieve the Complainant of the burden of proving its case. In the absence of a Response, paragraph 5(e) of the Rules expressly requires the Panel to “decide the dispute based upon the complaint.” Under paragraph 14(a) of the Rules, in the event of such a “default” the Panel is still required “to proceed to a decision on the complaint,” and under paragraph 14(b), the Panel shall “draw such inferences therefrom as it considers appropriate.” Consequently, the Panel must proceed with an assessment of the Complaint on its merits.
A. Identical or Confusingly Similar
The disputed domain name <huyndaicard.com> consists of the misspelled word “huyndai”, and “card” plus the descriptive gTLD suffix “.com”. “Hyundai” is part of the registered trademark HYUNDAI CARD and is a principal component of the Mark. “Huyndai,” disregarding the gTLD suffix “.com”, is a principal component of the disputed domain name. A domain name containing a common or obvious misspelling of a trademark as its principal component is normally found to be confusingly similar to the trademark. See Fuji Photo Film U.S.A., Inc. v. LaPorte Holdings, WIPO Case No.D2004-0971, (<fuijifilm.com>); Wachovia Corporation v. Peter Carrington, WIPO Case No.D2002-0775, (<wochovia.com>).
It is also well established that the specific gTLD suffixes such as “.com”, “.org”, or “.net” do not affect a domain name for the purpose of determining whether it is identical or confusingly similar to a trademark under the Policy. See Missoni S.p.A. v. Ahmed Salman, WIPO Case No. D2007-1485; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
The disputed domain name wholly incorporates the Complainant’s distinctive trademark utilizing typo-squatting, and in the Panel’s view creates sufficient similarity to be deemed confusingly similar to the Complainant’s trademark pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
According to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name. In connection with this element, several decisions of UDRP panels have held that “[o]nce a Complainant establishes prima facie showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent to rebut the showing.” Ets Leobert, SARL v. Jeonggon Seo, WIPO Case No. D2009-0004. See also Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; International Hospitality Management – IHM S.p.A v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683.
The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its mark. The Panel further notes that nothing in the record seems to suggest that the Respondent is, or has ever been, commonly known by the disputed domain name. The Panel’s view is that these facts must be taken as proven in the circumstances of this case provided that they have not been denied by the Respondent.
The Respondent has not submitted a Response to the Complainant’s contentions. Therefore, it has failed to invoke any circumstances that could have demonstrated any rights or legitimate interests in the disputed domain name under paragraph 4(c) of the Policy.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Both under past UDRP decisions (see for instance Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806 and Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397) and under the Policy (see Paragraph 2), a well-established principle is that when someone registers a domain name, he or she represents and warrants to the registrar that, to his or her knowledge, the registration of the domain name will not infringe the rights of any third party. In the case at issue, the Panel reasonably finds that since the Mark is widely known, it is unlikely that the Respondent, at the time of registration of the disputed domain name or thereafter, was not aware of the Mark. Bad faith can be inferred based on the fame of the Complainant’s marks in Korea and elsewhere, such that the Respondent was aware or should have been aware of the Complainant’s mark and claims of rights thereto.
Additionally, the Complainant provided evidence showing that the Respondent’s website has provided advertisements for various products and services and also links to websites relating to automobile products and brands. The Respondent thus appears to have registered the confusingly similar domain name, utilizing typo-squatting, with the intention of taking advantage of the goodwill and fame established by the Complainant in the Mark. The Panel finds that such use of the disputed domain name constitutes bad faith within the meaning of paragraph 4(b)(iv) of the Policy. See AMPO, S. COOP v. Contactprivacy.com, Taeho Kim, Philippine, WIPO Case No. D2009-0177.
The conduct described above falls squarely within paragraph 4(b)(iv) of the Policy and accordingly, the Panel concludes on the record before it that the Respondent registered and is using the disputed domain name in bad faith.
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 <huyndaicard.com> be transferred to the Complainant.
Thomas P. Pinansky
Dated: June 28, 2012