Decisión del Panel Administrativo nº D2020-0726 of WIPO Arbitration and Mediation Center, May 23, 2020 (case Hyundai Motor Company, Hyundai Motor America v. Registration Private, Domains By Proxy, LLC / Eric Steele)

• Resolution Date: May 23, 2020
• Issuing Organization: WIPO Arbitration and Mediation Center
• Decision: Transfer
• Dominio: Generic Domains

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hyundai Motor Company, Hyundai Motor America v. Registration Private, Domains By Proxy, LLC / Eric Steele

Case No. D2020-0726

1. The Parties

Complainants are Hyundai Motor Company, Republic of Korea, and Hyundai Motor America, United States of America (“United States”), represented by Hogan Lovells LLP, Paris, France.

Respondent is Registration Private, Domains By Proxy, LLC, United States / Eric Steele, United States.

2. The Domain Names and Registrar

The disputed domain names [genesisoffolsom.com] and [genesisofsacramento.com] (the “Domain Names”) 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 March 26, 2020. On March 26, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On March 27, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 3, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 7, 2020.

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 Respondent of the Complaint, and the proceedings commenced on April 8, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 28, 2020. The Center received four informal email communications from Respondent on April 16, 17, 21, and 23, 2020, and one informal email communication from Complainant on April 22, 2020. The Center notified the Parties on April 29, 2020, that it would proceed to panel appointment.

The Center appointed Christopher S. Gibson as the sole panelist in this matter on May 8, 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

Complainant Hyundai Motor America is a wholly-owned subsidiary of Complainant Hyundai Motor Company. Complainants belong to the same corporate group, the Hyundai Motor Group (“Hyundai”), a multinational conglomerate headquartered in Seoul, Republic of Korea. Hyundai is the Republic of Korea’s largest car manufacturer. In 2016, the Organisation Internationale des Constructeurs d’Automobiles ranked Hyundai as the world’s third largest vehicle manufacturer by production volume. Hyundai maintains 432 production bases and offices in 49 countries, research and development centers in 12 countries, and sales offices in 65 countries. Its production and sales network spans some 200 countries and territories across the globe. Hyundai employs over 280,000 individuals. In 2018, Hyundai’s total revenues amounted to over USD 220 billion.

As part of its product line, Complainants offer a luxury car line under the GENESIS trademark. In 2008, Hyundai introduced the Genesis model. The Genesis line is distributed in the United States by Genesis Motor America, LLC, a subsidiary of Complainant Hyundai Motor America. For use in connection with its Genesis product line, Complainants own, inter alia, the following trademarks:

- European Union Trade Mark No. 017766668, GENESIS, registered on August 9, 2000;

- International Registration No. 939229, GENESIS, registered on September 6, 2007;

- Republic of Korea Trademark Registration No. 40-0743737, GENESIS, registered on April 15, 2008;

- United States Trademark Registration No. 3531628, GENESIS, registered on November 11, 2008; and

- European Union Trade Mark No. 006450639, GENESIS, registered on March 31, 2009.

Complainants own numerous domain names comprising the GENESIS trademark, including:

[genesis.auto]

[genesis.car]

[genesis.com]

[genesiscars.com.au]

[genesismotor.com]

[hyundai-genesis.co.kr]

Complainants have been the recipient of several awards for the Genesis line of vehicles including, inter alia:

- Ruedas ESPN Best Luxury Sedan at the 2016 Miami International Auto Show;

- Consumer Guide Automotive’s Best Buy Award 2017;

- 2018 iF Design Award for Automotive Product Design; and

- Motorweek’s Best Luxury Car 2019.

Complainants have made substantial investments to develop a strong presence online by being active on various social media platforms. For instance, Genesis Motor America, LLC’s official page on Facebook has over 100,000 “likes”. In addition, Genesis Motor America, LLC has over 13,000 followers on Twitter.

For the purposes of sales and distribution, Complainants have accredited approximately 300 dealerships throughout the United States. The majority of these dealerships make use of the nomenclature “Genesis of [geographic location]”, e.g., “Genesis of Alexandria”, or “Genesis of Elmhurst”. Among Complainant’s list of authorized dealerships are “Genesis of Folsom” and “Genesis of Sacramento”. These dealerships are authorized to register domain names reflecting their business name and operate websites with content only after...