Hyundai Protection Plan, Inc., Hyundai Protection Plan Florida, Inc. v. Andrew Hillin
Claim Number: FA1304001494014
Complainant is Hyundai Protection Plan, Inc., Hyundai Protection Plan Florida, Inc. (“Complainant”), represented by Susan L. Mizer of Tucker Ellis LLP, California, USA. Respondent is Andrew Hillin (“Respondent”), Missouri, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <myhyundaiextendedwarranty.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 10, 2013; the National Arbitration Forum received payment on April 10, 2013.
On April 10, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <myhyundaiextendedwarranty.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 16, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 6, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@myhyundaiextendedwarranty.com. Also on April 16, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 15, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
As noted, there are two Complainants in this matter: Hyundai Protection Plan, Inc., and Hyundai Protection Plan Florida, Inc. Complainant states that both entities are subsidiaries in the United States of the South Korea-based Hyundai motor Company, which sells Hyundai-brand vehicles in the United States through its wholly-owned subsidiary Hyundai motor America, which is the major parent owner of Complainant’s parent company Hyundai Capital America d/b/a Hyundai Motor Finance.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Organizing Committee for the 2010 Olympic and Paralymic Games and International Olympic Committee v. Hardeep Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated: “It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.”
In Tasty Baking, Co. & Tastykake Investments, Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in American Family Health Services Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.
This Panel accepts that the evidence in the Complaint is sufficient to establish a nexus or link between the Complainants. Accordingly, the Panel will treat them all as a single entity in this proceeding.
A. Complainant makes the following assertions:
1. Respondent’s < myhyundaiextendedwarranty.com > domain name, the domain name at issue, is confusingly similar to Complainant’s HUNDAI mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has used the HYUNDAI mark since October of 1978. The HYUNDAI mark represents a well-known, popular brand with a respected reputation. Complainant uses the HYUNDAI mark in connection with the manufacture, distribution, and sale of motor vehicles, as well as advertising, financing, and vehicle services. Complainant has engaged in the business of issuing vehicle service contracts and other finance and insurance products ancillary to its services, which provide vehicle protection plan coverage to supplement the vehicles existing factory warranty, and provides protection for mechanical repairs, parts, labor, and roadside assistance, among other services. Complainant owns trademark registrations for the HYUNDAI mark through the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,104,727 registered Oct. 24, 1978). The <myhyundaiextendedwarranty.com> domain name is confusingly similar to Complainant’s HYUNDAI mark, and the addition of the terms in the domain name merely refers to services offered by Complainant.
Respondent registered the <myhyundaiextendedwarranty.com> domain name, which resolves to a website that sells vehicle service plans under the name “Compass Auto Warranty,” and displays vehicles bearing Complainant’s mark as well as other automobile manufacturer’s trademarks. Respondent is not related to Complainant or its affiliates, and has no permission to use the HYUNDAI mark.
Complainant’s rights in the mark predate the registration date of the <myhyundaiextendedwarranty.com> domain name by more than thirty years. Respondent does not have rights or legitimate interests in the disputed domain name, as it attempts to misappropriate Internet traffic to its own website in order to make a commercial profit. Respondent registered and uses the <myhyundaiextendedwarranty.com> domain name in bad faith by profiting from the goodwill associated with complainant’s mark and intentionally disrupting Complainant’s business. Respondent registered the <myhyundaiextendedwarranty.com> domain name on November 9, 2010.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant owns rights in the HYUNDAI mark through its USPTO trademark registration (Reg. No. 1,104,727 registered Oct. 24, 1978). A trademark registration with the USPTO serves as evidence of a complainant’s rights in the claimed mark under the Policy. Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Complainant’s rights in the HYUNDAI mark are established via its USPTO trademark registration, in satisfaction of Policy ¶ 4(a)(i).
The <myhyundaiextendedwarranty.com> domain name is confusingly similar to Complainant’s HYUNDAI mark, as the domain name uses the mark in its entirety in order to advertise services using descriptive terms that relate to Complainant’s business. The term “extended warranty” in the domain name is a term of art in the industry, and it, combined with Complainant’s mark and the generic term “my,” does not remove the confusing similarity between Complainant’s mark and the domain name. The Panel notes the inclusion of the generic top-level domain (“gTLD”) “.com” in the domain name. Despite adding a generic term, a descriptive phrase, and the gTLD “.com,” the <myhyundaiextendedwarranty.com> domain name remains confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Respondent has no permission or license to use the HYUNDAI mark in any way, and Respondent is not related to Complainant’s business. Respondent is not known by the HYUNDAI mark, nor does it do business under the mark. The Panel notes that the WHOIS information associated with the <myhyundaiextendedwarranty.com> domain name indicates that “Andrew Hillin” is the registrant of the domain name. The WHOIS information, and Complainant’s claim that Respondent is unaffiliated with its business, do not reflect that Respondent is commonly known by the <myhyundaiextendedwarranty.com> domain name, and thus the Panel determines that Respondent lacks rights and legitimate interests in the domain under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent fails to use the <myhyundaiextendedwarranty.com> domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name, as Respondent sells vehicle service plans under the trade name “Compass Auto Warranty” for vehicles bearing the HYUNDAI mark, as well as other automobile manufacturer’s trademarks. It can be inferred that Respondent seeks to profit from its use of the website by misappropriating Internet traffic that intends to reach Complainant’s website and instead comes across Respondent’s website, resulting in commercial gain to Respondent. The panel in Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006), stated that the respondents use of the disputed domain name to sell flowers in competition with the complainant’s business demonstrated the respondent’s lack of rights or legitimate interests in the disputed domain name. Selling services substantially similar to Complainant’s services, in competition with Complainant, demonstrates that Respondent fails to make a bona fide offering of goods or services under the <myhyundaiextendedwarranty.com> domain name, and does not make a legitimate noncommercial or fair use of the domain, pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent uses the disputed domain name to sell directly competing products and improperly creates an illusion of direct affiliation with Complainant’s business. Such use amounts to disruption of Complainant’s business, and the Panel finds that under Policy ¶ 4(b)(iii), Respondent demonstrates bad faith registration and use. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Respondent takes commercial advantage of the confusing similarity between the <myhyundaiextendedwarranty.com> domain name and the HYUNDAI mark, in order to bolster Respondent’s image. Respondent’s use of Complainant’s mark in the disputed domain name serves to confuse consumers and attract Internet traffic to its website, resulting in commercial gain to Respondent, which provides evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <myhyundaiextendedwarranty.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: May 19, 2013
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