WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hyundai Motor Company and Hyundai Motor America v. Jorge De Los Rios
Case No. D2021-2307
1. The Parties
The Complainant is 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 Jorge De Los Rios, United States.
2. The Domain Name and Registrar
The disputed domain name <genesissantamonica.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2021. On July 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 19, 2021, 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 July 22, 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 July 27, 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 July 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 17, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 31, 2021.
The Center appointed Martin Schwimmer as the sole panelist in this matter on September 3, 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 parts of the multinational conglomerate Hyundai Motor Group, which is one of the Republic of Korea’s largest car manufacturer and the world’s third largest vehicle manufacturer by production volume. Hyundai Motor Group maintains sales offices in 65 countries. It has a sales network in over 200 countries and territories and employs over 280,000 individuals. In 2018, the total revenues of Hyundai Motor Group amounted to over USD 220 billion.
As part of its product line, the Hyundai Motor Group offers a luxury car line under the brand GENESIS, which was introduced in 2008. The Genesis line is distributed in the United States by Genesis Motor America, LLC, a subsidiary of the Complainant Hyundai Motor America.
The Complainant Hyundai Motor Company is the owner of numerous trademark registrations for the mark GENESIS in various jurisdictions, including the European Union Registration No. 17766668 from August 9, 2000, the United States Registration No. 3531628 from November 11, 2008, and an International Registration No. 939229 from September 6, 2007. It owns various domain names reflecting the GENESIS mark. Its authorized dealerships often use domain names consisting of the GENESIS mark and a geographic location (for example, <genesisofelmhurst.com>).
The Respondent registered the disputed domain name in September 9, 2018 and utilized it in connection with a registrar’s parking page displaying pay-per-click advertisements.
5. Parties’ Contentions
Hyundai Motor Company and Hyundai Motor America (collectively, the “Complainant”) belong to the same corporate group, the Hyundai Motor Group. Hyundai Motor America is a wholly-owned subsidiary of Hyundai Motor Company. Both Hyundai Motor Company and Hyundai Motor America hold registered rights in the GENESIS trademark on which this Complaint is based. As such, the two entities have a sufficient common legal interest in the GENESIS trademark included in the Domain Name to file a joint Complaint.
The Complainant is the world’s third largest vehicle manufacturer by production volume. Its sales network spans some 200 countries. Hyundai Motor Group’s total revenues for 2018 amounted to over USD 220 billion.
The Complainant introduced the GENESIS model car line in 2008. Hyundai promotes the GENESIS line on, inter alia, social media platforms such as Facebook, Twitter, YouTube, and LinkedIn, utilizing handles that reflect the GENESIS trademark.
The Complainant owns trademark registrations consisting of the GENESIS word mark, including European Union Trade Mark No. 017766668, registered August 9, 2008; International Registration No. 939229, registered September 6, 2007; Republic of Korea Trademark Registration No. 40-0743737, registered April 15, 2008; and United States Trademark Registration No. 3531638, registered November 11, 2008.
The Complainant owns numerous domain names reflecting the GENESIS name including <genesis.auto>, <genesis.car>, <genesis.com>, and <genesiscars.com.au>. The Complainant promotes its GENESIS line of autos utilizing a website at “www.genesis.com”.
The Complainant distributes its cars through a network of approximately 300 dealerships in the United States, which dealers often utilize business names in the form “Genesis of [geographic location]”. Those dealers utilize domain names reflecting those names, such <genesisofalexandria.com> and <genesisofelmurst.com>. The Complainant authorizes a GENESIS dealer in Santa Monica, California, which utilizes a website at “www.genesissm.com”.
The disputed domain name resolved to a GoDaddy parking page comprising Pay-Per-Click (“PPC”) links.
The Respondent is not commonly known by the disputed domain name. It has no known connection to the Complaint nor to the owner of the Complainant’s authorized dealership in Santa Monica. It is making no legitimate noncommercial or fair use of the disputed domain name.
The Complainant’s GENESIS trademark is well known. When combined with the geographic term Santa Monica, Internet users will be confused and assume that the disputed domain name is that of the Complainant’s authorized dealership in Santa Monica. There is no bona fide use of the disputed domain name that the Respondent could make that would not result in creating a misleading impression of association with the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established ownership of registrations for the trademark GENESIS in the United States as well as a number of other countries. It has demonstrated use of the trademark at its website “www.genesis.com”.
The disputed domain name includes the Complainant’s trademark GENESIS in its entirety, along with the geographic location “Santa Monica”. The GENESIS trademark is clearly recognizable within the disputed domain name, and the addition of other term does not prevent a finding of confusing similarity under the Policy. .
The Panel accordingly concludes that the disputed domain name is confusingly similar to the Complainant’s GENESIS trademark.
The Complainant succeeds on the first element of the Policy in relation to the disputed domain name.
B. Rights or Legitimate Interests
The Complainant has provided evidence that the Respondent is not authorized by the Complainant to use the GENESIS trademark in any manner, nor is the Respondent using or is ready to use the disputed domain name in connection with a bona fide offering of goods or services. There is no evidence that the Respondent is commonly known by the disputed domain name, nor that it is making a legitimate noncommercial or fair use of the disputed domain name.
The Respondent did not answer the Complaint and thus none of the Complainant’s allegations have been rebutted. The Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name as described under paragraph 4(a)(i) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
As discussed above, the Respondent has registered the disputed domain name that combine the GENESIS trademark with the name of a geographic location, one where the Complainant’s authorized agent utilizes a trading name reflecting the GENESIS trademark and the location name. It is also not disputed that the disputed domain name resolves to a parking page.
Taking the above into account, and in the absence of any evidence to the contrary, the Panel is satisfied that it is more likely than not that the Respondent is aware of the Complainant’s GENESIS trademark and of the naming pattern used by auto dealers. The Respondent has attempted to targeting the same trademark in an attempt to either prevent the Complainants and their dealers from reflecting the GENESIS trademark in a corresponding domain name that also reflects a geographic location where they are active, or are attempting to attract for commercial gain Internet users to its website.
Therefore, the Panel finds that the disputed domain name has been registered and used 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 <genesissantamonica.com> be transferred to the Complainant.
Date: September 27, 2021