DECISION

 

The Luther Holding Company v. RYAN BROWN

Claim Number: FA2408002112710

 

PARTIES

Complainant is The Luther Holding Company ("Complainant"), represented by Hannah Lutz of Taft Stettinius & Hollister LLP, Minnesota, USA. Respondent is RYAN BROWN ("Respondent"), Minnesota, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <luthergenesis.com>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Eduardo Magalhães Machado as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on August 26, 2024; Forum received payment on August 26, 2024.

 

On August 27, 2024, GoDaddy.com, LLC confirmed by e-mail to Forum that the <luthergenesis.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 August 30, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 19, 2024 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@luthergenesis.com. Also on August 30, 2024, 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.

 

A timely Response was received and determined to be complete on September 19, 2024.

 

On September 23, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Eduardo Magalhães Machado as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

The Complainant argues that it is part of the Luther Automotive business, which sells new and pre-owned vehicles and offers maintenance and repair services at multiple LUTHER dealership locations.

 

It argues that it is the owner of the registered trademark/service mark and that it or its predecessors have been using that mark or the related LUTHER marks since at least 1952. It has held a federal trademark registration with the United States Patent and Trademark Office for the mark LUTHER since November 1, 2011.

 

Further, it claims that its affiliate Motors Management Corp owns the <lutherauto.com> domain name, registered on April 24, 1996, which resolves to the official LUTHER website, that allows customers to access information about the Complainant's dealership and repair services, the vehicles on offer at Complainant's dealerships, and how to contact Complainant.

 

It affirms it is an authorized dealer of HYUNDAI vehicles, which has offered GENESIS vehicles since 2007 and announced GENESIS as an independent luxury brand in 2015. It alleges that, in 2016, after already being a HYUNDAI dealer, two of Complainant's dealerships entered into a Participation Agreement with Hyundai which governed the sale of GENESIS vehicles, including Complainant's dealership in Bloomington, Minnesota on April 15, 2016. Further, it claims that, since 2016, it has advertised a range of GENESIS cars for sale on its website and at its "Genesis of Minneapolis" authorized dealership location in Bloomington, MN, being the only party authorized to use both the LUTHER and GENESIS marks together in connection with auto sales.

 

Moreover, it affirms that the Respondent, without the permission or authorization of the Complainant, registered the disputed domain name — that would combine Complainant's LUTHER trademark with the GENESIS brand for which Complainant is a dealer — on May 4, 2016, which would be less than a month after Complainant signed its agreement with Hyundai regarding the sale of GENESIS vehicles.

 

Further, it affirms that, on July 31, 2021, the disputed domain name would resolve to a GoDaddy page stating that it would be available for sale. In addition, a search of the disputed domain name with the registrar GoDaddy would result in a page offering the domain for $75,000.00. On August 26, 2024, the disputed domain would be resolved to another GoDaddy "for sale" page.

 

It claims that the disputed domain name fully reproduces its LUTHER mark, and the addition of the term GENESIS to Complainant's LUTHER mark in the disputed domain name would likely confuse consumers, as Complainant sells GENESIS automobiles and advertises these vehicles through Complainant's domain at <lutherauto.com>.

 

Further, it alleges that the Respondent would have no rights or legitimate interests in the disputed domain name. It affirms that it has never given Respondent the authority to use the LUTHER mark, or any confusingly similar mark, and that the Respondent would not be commonly known by the disputed domain name, nor affiliated with the Complainant in any way. It affirms that the Respondent would not be using the domain in connection with any bona fide goods or services, and it would not be making a legitimate noncommercial or fair use of the disputed domain without intent for commercial gain or to tarnish the LUTHER trademark.

 

In addition, it claims that the domain name does not currently resolve to a webpage with content other than a generic GoDaddy parking page, and claims that holding a domain name passively is neither a bona fide offering of goods or services under Policy 4(c)(i), nor a non-commercial or fair use pursuant to Policy 4(c)(iii). It also alleges that offering a domain name for sale to the generic public, and for an amount in excess of the typical cost to purchase a domain name would show that Respondent lacks rights or legitimate interests in the domain name.

 

Moreover, it claims that the Respondent would have registered and would be using the disputed domain in bad faith, given that the disputed domain would be confusingly similar to Complainant's well-known trademark together with the incorporation of the GENESIS brand, for which Complainant is an authorized dealer. It claims that the Respondent would have constructive knowledge of the existence of Complainant's federal trademarks, and it would be attempting to divert and mislead consumers, in addition to profiting on the reputation of Complainant's brand. Such bad faith would be compounded by the offer to sell the disputed domain via a GoDaddy brokerage site for an unreasonably high price.  

 

B. Respondent

The Respondent claims that the disputed domain name was not purchased with the intent of confusing consumers or acting in an illegitimate way. It claims that it was intended for the use of God.

 

It alleges that its intent with the disputed domain was to spread the word of the book of Genesis in the eyes of Martin Luther, offering theological insights and interpretations. In addition, it states that it no longer has an interest in the domain and waives any rights to it. It requests that the money and time spent since 2016 on this domain be donated to a charity.

 

C. Additional Submission

The Complainant filed an additional submission, affirming that, despite having registered the domain name in 2016, the Respondent never put the domain name into use for the purpose of spreading the word of God.

 

In addition, it claims that the Respondent would be a "New Vehicle Sales Manager" at Complainant's competitor business as a Hyundai dealer, having worked there since at least as early as March 2016. Thus, at the time of registering the domain name, the Respondent would have had full knowledge of the Complainant's LUTHER dealerships, as well as of the Hyundai GENESIS brand.

 

Further, it alleges that Respondent's purported charitable and theological intentions would be called into question by the fact that the disputed domain was resolving to a page offering the domain for sale for $75,000.00, indicating a desire solely to profit on the disputed domain by leveraging the reputation of Complainant's trademark and its dealership with Hyundai GENESIS brand.

 

FINDINGS

The Complainant is the owner of two trademark registrations, with the United States Trademark Office, for the LUTHER word and composite marks, with the first use in 2001, both in classes 35 and 37, to identify "Dealerships in the field of automobiles" and "Automobile repair and maintenance".

 

The disputed domain name was registered on May 4th, 2016, and it currently redirects to a GoDaddy "for sale" page.

 

The Complainant has dealerships selling vehicles of different brands, including Hyundai and the GENESIS brand.

 

This Panel performed an independent research (See Société des Produits Nestlé SA v. Telmex Management Services WIPO D2002-0070), in which it confirmed that, in the end of 2015, Hyundai announced that GENESIS would become an independent luxury brand.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a 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."

 

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.

 

Identical and/or Confusingly Similar

The domain name <luthergenesis.com> fully reproduces the Complainant's prior LUTHER trademark.

 

In addition, the domain name also contains the term GENESIS, which has a proved connection with the Complainant's LUTHER trademark.

 

Therefore, the Panel concludes that the Domain Name in dispute is identical and confusingly similar to the Complainant's trademark, under Paragraph 4(a)(1).

 

Rights or Legitimate Interests

According to Paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the disputed domain name by showing any of the following elements:

 

"(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

 

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or

 

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."

 

The Respondent failed to show any use of or demonstrable preparations to use the disputed Domain Name in connection with any bona fide offering of goods or services. In fact, the Respondent himself affirmed he no longer has any interest in the domain name in dispute.

 

Moreover, the Respondent also failed to submit any proof that he has been commonly known by the Domain Name. The fact that the Respondent has obtained the disputed domain name is not enough to give him a legitimate interest (See MADRID 2012, S.A. v. Scott Martin-MadridMan Websites, D2003-0598 (WIPO October 8, 2003) finding that "The mere presence in the WhoIs-database is not sufficient in this regard as otherwise every registrant of a domain name could establish a legitimate interest under the Policy, paragraph 4(c)(ii) by using this argument").

 

Likewise, although the Respondent claims that it has been using the domain name to "spread the word of the book of Genesis in the eyes of Martin Luther", the Respondent is not making a legitimate noncommercial or fair use of the Domain Name, nor has it proven that it ever has, given that the disputed Domain Name redirects to a GoDaddy "for sale" page.

 

The Panel finds that Respondent has no rights or legitimate interests in the domain name.

 

Registration and Use in Bad Faith

The Complainant presented very compelling evidence that the Respondent is in fact a "New Car Sales Manager" at a company that also deals with Hyundai vehicles in Minnesota, the same place where the Complainant owns a dealership to sell GENESIS brand cars.

 

In addition, the fact that the domain name was registered almost a month after the agreement between the Complainant and Hyundai for the sale of GENESIS brand cars raises very strong suspicions that the Respondent registered the domain name with the intention of damaging the Complainant's business in some way, either to divert its clientele or to prevent it from registering the domain name.

 

Further, Complainant affirms that it has never granted anyone else any permission or authorization to register any domain name containing its LUTHER trademark.

 

Regarding the use of the domain name, as stated before, it redirects to a GoDaddy "for sale" page. Moreover, the Respondent himself stated that it has no interest in keeping the domain name. In this sense, Respondent does not actively use the disputed Domain Name and has not presented the Panel with demonstrable preparations to use the Domain name.

 

In addition, Respondent, as a car sales manager, likely had prior knowledge of the Complainant and its business, which supports a passive holding bad faith use (see Schottenstein Stores Corporation d/b/a American Signature Home v. Golden, FA 0212000137031 (Forum January 24, 2003) finding that "Respondent's lack of use of the […] domain names along with Respondent's failure to establish demonstrable plans to use the domain names warrants a finding of bad faith use. In addition, Respondent's constructive knowledge of Complainant's interests in the AMERICAN SIGNATURE family of marks further supports a passive holding bad faith use determination").

 

Therefore, the Panel concludes that the requirements of paragraph 4(a)(iii) of the Policy have been sufficiently made out by the Complainant and that the Respondent's bad faith registration and use of the Domain Name has been proven.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <luthergenesis.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Eduardo Magalhães Machado, Panelist

Dated: October 7th, 2024