WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hyundai Motor Company and Hyundai Motor America v. Ryan McCulloch

Case No. D2021-1308

1. The Parties

The Complainant is Hyundai Motor Company, Republic of Korea, and Hyundai Motor America, United States of America (“United States” or “U.S.”), represented by Hogan Lovells (Paris) LLP, France.

The Respondent is Ryan McCulloch, United States.

2. The Domain Names and Registrar

The disputed domain names <genesisofcarlsbad.net>, <genesisofhuntingtonbeach.net>, <genesisofirvine.com>, <genesisofirvine.net>, <genesisoflagunahills.com>, <genesisoflagunahills.net>, <genesisofmurrieta.com>, and <genesisofmurrieta.net> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 28, 2021. On April 28, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 28, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 30, 2021, 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 amended Complaint on May 3, 2021.

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 May 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 24, 2021. The Center received an email communication from the Respondent on May 4, 2021. Pursuant to paragraph 6 of the Rules, on May 25, 2021, the Center informed the Parties that it would proceed with the panel appointment process. The Center received an additional email communication from the Respondent on May 25, 2021.

The Center appointed John Swinson as the sole panelist in this matter on May 28, 2021. 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 Hyundai Motor Company and Hyundai Motor America, which form part of the Hyundai Motor Group, and will be referred to below as “the Complainant”.

The Complainant is Korea’s largest car manufacturer and sells cars worldwide. The Complainant offers a luxury car line under the GENESIS trademark. The GENESIS model was introduced in 2008.

The Complainant owns numerous trademark registrations for trademarks for GENESIS including a United States trademark registration for GENESIS (U.S. Reg. No. 3,531,628) registered on November 11, 2008.

The Respondent did not file a formal Response, so little is known about the Respondent. The Respondent sent an email to the Center on May 4, 2021, that states: “I have offered to transfer immediately. What you would like to do?”

The disputed domain names were all registered on October 22, 2016.

Currently, the disputed domain names do not resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant made the following submissions:

Identical or Confusingly Similar

The disputed domain names are confusingly similar to trademarks in which the Complainant has rights.

Where a complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.

The Complainant owns numerous trademark registrations for GENESIS in jurisdictions throughout the world, details of which were set out in the Complaint.

Each of the disputed domain names incorporates the Complainant’s GENESIS trademark it its entirety, together with the addition of various geographic terms. The addition of such geographic terms does not prevent a finding of confusing similarity with the Complainant’s GENESIS trademark, which remains clearly recognizable as the leading element of each of the disputed domain names.

The Complainant relies on Hyundai Motor Company and Hyundai Motor America v. Privacy Administrator, Anonymize Inc. and Mike Dolce, WIPO Case No. D2019-2987 and similar prior cases.

Rights or Legitimate Interests

The 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 disputed domain names.

The Complainant has not granted the Respondent any authorization to register any domain names containing its trademark.

The disputed domain names do not resolve to active websites.

There is no evidence of the Respondent having made prior use or demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services.

While the Complainant acknowledges that the disputed domain names are composed of combinations of dictionary and geographic terms, including the word “genesis”, the Complainant submits that the Respondent’s passive holding of the disputed domain names does not give rise to any rights or legitimate interests in the disputed domain names on the part of the Respondent. In the present case, there is no evidence of the disputed domain names being used in connection with any dictionary meaning that can be ascribed to the disputed domain names. Rather, all of the disputed domain names include the Complainant’s trademark in its entirety, and make use of the distinctive “Genesis of [geographic location]” naming pattern used by the Complainant’s authorized car dealers. In fact, four of the disputed domain names (<genesisofcarlsbad.net>, <genesisofhuntingtonbeach.net>, <genesisofirvine.com>, and <genesisofirvine.net>) directly correspond to the names of three authorized Genesis dealerships.

The Respondent cannot legitimately claim to be commonly known by the disputed domain names within the meaning of paragraph 4(c)(ii) of the Policy.

The disputed domain names are not being used in the promotion of any business that might give rise to the Respondent being commonly known by the disputed domain names.

Registered and Used in Bad Faith

The disputed domain names were registered and are being used in bad faith pursuant to paragraph 4(b)(ii) of the Policy, and that there are additional factors present that go beyond the scope of the examples of bad faith behavior provided at paragraph 4(b) of the Policy.

The Complainant’s 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 as such has become exclusively associated with the Complainant in connection with its line of luxury vehicles.

Noting the Complainant’s use of the “Genesis of [geographic location]” naming pattern for its authorized dealers, the Complainant further submits that by registering eight domain names, each making use of the same naming pattern used by the Complainant’s authorized dealers, the Respondent has registered the disputed domain names in order to prevent the owner of the GENESIS trademark from reflecting its trademark in corresponding domain names, and has engaged in such a pattern of conduct, in bad faith as contemplated by paragraph 4(b)(ii) of the Policy.

The disputed domain names do not resolve to active websites. Prior UDRP panels have consistently found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding.

The WhoIs records for the disputed domain names list a creation date of October 22, 2016. Despite the Respondent having registered the disputed domain names several years ago, there is no evidence of any actual or contemplated good faith use of the disputed domain names on the part of the Respondent.

In light of the composition of the disputed domain names themselves, the disputed domain names carry with them a high risk of implied affiliation with the Complainant. Internet users viewing the disputed domain names as a hyperlink or as part of an email address may easily be misled into believing that the disputed domain names are operated by the Complainant or by an authorized dealer of the Complainant, or are otherwise endorsed by the Complainant.

In view of the inherently confusing nature of the disputed domain names, the Complainant submits that the presence of the disputed domain names in the hands of the Respondent represents an abusive threat hanging over the head of the Complainant (i.e., an abuse capable of being triggered by the Respondent at any time) and therefore a continuing abusive use.

B. Respondent

The Respondent did not file a formal response. The Respondent sent two emails to the Center apparently offering to transfer the disputes domain names to the Complainant.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names has been registered and are being used in bad faith.

The onus of proving these elements is on the Complainant even though the Respondent failed to submit a substantive response.

Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.

As a preliminary procedural matter, the Complainant requests for consolidation of multiple complainants. Here, Hyundai Motor Company and Hyundai Motor America belong to the same corporate group and hold registered rights in the GENESIS trademark. Furthermore, the Complainant requests for consolidation in respect of the disputed domain names. Here, the Respondent registered a number of domain names on the same day that all include the GENESIS trademark. The arguments made by the Complainant are relevant to all of the disputed domain names. The Panel finds that it is equitable and efficient to consolidate in this case.

A. Identical or Confusingly Similar

The Complainant has clearly proven ownership of a long-standing registered trademark for GENESIS in the United States as well as a number of other countries.

The disputed domain names include the Complainant’s trademark GENESIS in its entirety, along with the words “of” and then a geographic location. Here, the GENESIS trademark is clearly recognizable within the disputed domain names, and the addition of other terms does not prevent a finding of confusing similarity under the Policy.

The Panel accordingly concludes that the disputed domain names are confusingly similar to the Complainant’s GENESIS trademark.

The Complainant succeeds on the first element of the Policy in relation to the disputed domain names.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain names.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:

(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or

(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

The onus of proving this requirement, like each element, falls on the Complainant.

Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent.

Accordingly, it is sufficient for a complainant to raise a prima facie case against the respondent under this heading and an evidential burden will shift to the respondent to rebut that prima facie case.

The Complainant states that the Respondent did not register the disputed domain names with the Complainant’s authorization. The disputed domain names do not resolve to an active website.

There is no evidence that the Respondent is commonly known by any of the disputed domain names.

There is also no evidence that the Respondent has made or is currently making a legitimate noncommercial or fair use of the disputed domain names.

In these circumstances, the Complainant has established a clear prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. The Respondent has not sought to rebut that prima facie case. Accordingly, the Panel finds that the Complainant succeeds on the second element of the Policy in relation to the disputed domain names.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the disputed domain names in bad faith.

The Complainant is a well-known car manufacturer and GENESIS is a well-known car brand. The GENESIS brand was well-known at the time the Respondent registered the disputed domain names. The Respondent registered the disputed domain names in a form or naming pattern that mirror how the Complainant referred to its various dealers (i.e., The structure of the disputed domain names reflect how the Complainant refers to and promotes its car dealerships in the United States. For example, a dealership from Carlsbad is referred to as “Genesis of Carlsbad”). In these circumstances, the Panel can reasonably infer that the Respondent knew of the Complainant’s GENESIS trademark and registered the disputed domain names to take unfair advantage of the Complainant’s reputation in that trademark.

There is no obvious reason for the Respondent to register the disputed domain names other than for the purpose of attempting to trade off the Complainant’s goodwill in the GENESIS trademark. Furthermore, the fact that the disputed domain names do not resolve to active websites does not prevent a finding of bad faith, noting, inter alia, the reputation of the GENESIS trademark and the lack of substantive response or any evidence of actual or contemplated good faith use.

The Complainant relies on paragraph 4(b)(ii) of the Policy.

The Complainant asserts that the Respondent registered the disputed domain names in order to prevent the Complainant from reflecting its GENESIS trademark in corresponding domain names, and by registering eight disputed domain names, has engaged in a pattern of conduct. See, e.g., Moncler S.p.A. v Yao Tom, Lee Fei, Geryi Wang, WIPO Case No. D2015-2244.

The Respondent does not dispute this.

Accordingly, for the reasons set forth above, the Complainant succeeds on the third element of the Policy in relation to the disputed domain names.

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 <genesisofcarlsbad.net>, <genesisofhuntingtonbeach.net>, <genesisofirvine.com>, <genesisofirvine.net>, <genesisoflagunahills.com>, <genesisoflagunahills.net>, <genesisofmurrieta.com>, and <genesisofmurrieta.net> be transferred to the Complainant.

John Swinson
Sole Panelist
Date: June 4, 2021