The Complainant is American Honda Motor Co., Inc. of Torrance, California, United States of America, represented by Howard, Phillips & Anderson, United States of America.
The Respondent is Daniel Talas of Richmond Hill, Ontario, Canada.
The disputed domain name <hondapilot.org> and <acuramdx.org> are registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 22, 2009. On April 22, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On April 22, 2009, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the 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”). On April 28, 2009, the proceedings were suspended pending negotiations between the parties. The Complaint was initially filed in relation to five domain names. On June 1, 2009, the Complainant filed an amendment to its Complaint expressing its desire to proceed with the Complaint in relation to only the domain names now in dispute, following negotiations for the transfer of the others to the Complainant.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Policy, the Rules, and the Supplemental Rules.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 5, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 25, 2009. No Response was filed by that date, and the Center notified the Respondent's default on June 26, 2009.
The Center appointed James A. Barker as the sole panelist in this matter on July 6, 2009. 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.
The Complainant is a company incorporated in the State of California, United States of America, and is a wholly owned subsidiary of Honda Motor Co., Ltd (Honda), a Japanese corporation. The Complainant refers to itself as those two entities in combination.
Honda is the world's largest motorcycle manufacturer, the world's largest engine maker, and one of the world's leading automakers. Honda develops, manufactures and distributes a wide variety of products, ranging from small, general purpose engines and scooters to specialty sports cars, personal watercraft, and jet airplanes. Honda was incorporated in 1948. In 1958, American Honda Motor Co., Ltd was established as Honda's first subsidiary. Honda has extensive manufacturing operations in various countries.
Honda has manufactured some of the best-selling automobiles in the Unites States' history, including the Honda Pilot from 2002.
Since the 1980's, Honda has sold luxury automobiles in the United States and Canada through its “Acura” division. These include the Acura MDX luxury sport vehicle.
Honda obtained its first United States registration for HONDA in 1967 and has acquired many trademark registrations incorporating that term. Prior panels have found that Honda's trademark rights in HONDA are well-established world-wide.
Honda obtained its first United States registration for ACURA in 1986 and its first Canadian registration in 1987. Honda also holds trademark registrations for MDX and PILOT on the principal register of the USPTO and in Canada.
Honda operates websites at both “www.honda.com” and “www.acura.com”.
From the WhoIs details (the “created on” date) the disputed domain name <hondapilot.org> was registered by the Respondent in January 2002, and the disputed domain name <acuramdx.org> was first registered in November 2000.
At the date of this decision, the disputed domain name <hondapilot.org> reverts to a website (at “www.piloteers.org”) headed “HondaAcuraWorld” describing itself as “The most trusted name in Acura and Honda accessories”. A number of links to products and services are contained at the top of the page. A substantial section of the page also relates to the “Member Submitted News”, which includes some material unrelated to the Complainant. In much the same way, the disputed domain name <acuramdx.org> reverts to a website (at “www.mdxers.org”) similar to that at <hondapilot.org>. The Complainant provides screenshots of those websites as at March 9, 2009, which were generally similar to those sites at the date of this decision.
The Complainant provides evidence of communications between it and the Respondent as far back as 2004 regarding other domain names registered by the Respondent which included the Complainant's marks. After some initial exchanges of communications between the parties concerning the domain names now in dispute, the Complainant states that it decided to proceed with the Complaint because it “grew increasingly concerned about the many infringing aspects of the Respondent's websites…such as, for example, his unauthorized display of copyrighted video games.” The Complainant adds that it was motivated to pursue the Complaint because the Respondent had stated that he had someone interested in purchasing the sites, and considered that he was motivated to sell the disputed domain names.
The Complainant claims that the Respondent is a computer programmer and Internet entrepreneur who has registered many domain names consisting of the trademarked names of popular automobiles, which he uses to link to “pay-per-click” (or “PPC”) landing websites.
The Complainant states that the disputed domain names are identical or confusingly similar to its marks.
The Complainant states that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant refers to the Respondent's use of those domain names to display paid advertisements for Honda's direct and indirect competitors. The Respondent's registration of a large number of domain names consisting of trademarked and model names of popular automobiles, which contain PPC advertising, shows that the Respondent is motivated to do so for commercial gain.
The Complainant states that the Respondent has registered and used the disputed domain names in bad faith. The registration of domain names which include the Complainant's product names or trademarks is inherently misleading to consumers. The Respondent's bad faith is also demonstrated by his use of the disputed domain names to display PPC advertisements, his consciousness of the commercial possibilities of the domain names when registering them, and his attempts to conceal his identity through a proxy service.
The Respondent did not respond to the Complaint. The Complainant however provided copies of email communications between it and the Respondent. In those communications, the Respondent refers to the websites at the disputed domain names as “community sites, with a combined membership of over 80,000 members, most of which are Honda's customers!”
In further communications, the Complainant's counsel suggested that the Respondent might be allowed to continue to use the disputed domain names for a period of time, to allow him to transfer his content to non-infringing domain names. In response, the Respondent stated that “this would be the least favorable solution (for both parties). Loosing [sic] the domain names implies practically loosing [sic] the communities. We've built a valuable and well-known resource for MDX and Pilot owners which have been around for 9 years! I'm sure Honda can suggest an alternative as there are countless enthusiast sites out there with Honda or Acura trademarks in site name (some with permission from Honda). I can't imagine a new domain name without having Honda or Pilot in the name.”
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(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 were registered and are being used in bad faith.
These elements are discussed as follows.
It is clear beyond reasonable doubt that the Complainant “has rights” in relevant trademarks. Copies of the relevant trademark registrations were attached to the Complaint. The Complainant's trademarks for HONDA have also been recognized by prior panels as famous. American Honda Motor Co., Inc. v. Honda Automobile Company, WIPO Case No. D2007-1558.
The disputed domain names are self-evidently not identical to the Complainant's trademarks. But the Panel considers them to be confusingly similar to the Complainant's trademarks for HONDA, PILOT, ACURA and MDX respectively.
The Respondent identifies his websites at the disputed domain names as “enthusiast sites” relating to the Complainant. The Complainant's marks are wholly incorporated in the disputed domain names. That each of the domain names respectively combine two of the Complainant's marks serves to emphasize their connection with the Complainant. The fame of the Complainant's marks are such that consumers are likely to mistakenly believe that the disputed domain names have some connection with the Complainant's trademarks.
For these reasons, the Panel finds that the Complainant has established this first element.
It is evident that the Respondent chose the disputed domain names because of their connection with the Complainant. This conclusion is reinforced by evidence in the Complaint of the Respondent's prior conduct in registering other domain names incorporating the trademarks of the Complainant.
The Respondent filed no submission to dispute the Complainant's contention that he lacks any rights or legitimate interests in the disputed domain names. It would be open to the Panel to draw a negative inference from such a failure. The best that could be said for the Respondent lies in his suggestion, noted above, that his websites are “enthusiast websites”. If so, there might be an argument that the Respondent has rights or legitimate interests connected with that purpose. But the Respondent has chosen to provide no evidence to support such an argument. There is little in the case file to support it either. Copies of the Respondent's webpages do not self-evidently demonstrate that the Respondent was genuinely motivated to provide a forum for enthusiasts of the Complainant or its products.
Even if the Respondent's websites were established as enthusiast sites, in order to qualify for the safe harbor available under paragraph 4(c)(iii) of the Policy such use would need to be non-commercial. The evidence in this case does not support a finding of the Respondent's rights or legitimate interests on this basis. Section 2.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions makes it clear that paragraph 4(c)(iii) only deals with fan sites that are clearly non-commercial. In this case, the Complainant provides evidence that the Respondent used his websites to include advertisements, offer competing products and apparel infringing its trademarks which are offerings that can only have been for a commercial purpose.
For these reasons, the Panel finds that the Complainant has established this second element.
Bad faith can be found if the Respondent deliberately registered and used the domain names to take a commercial or other unfair advantage of the domain names' trade mark associations. The Complainant argues that this is what the Respondent has done. In addition to the evidence outlined above, the Complainant provides evidence that the websites' content is “nearly static”, have minimal original content, and that the Respondent demonstrated an unwillingness to operate the websites at domain names that do not include the Complainant's trademarks. The Complainant also provides evidence that the Respondent is considering the sale of the domain names. This evidence, says the Complainant, demonstrates that the Respondent intended to commercially exploit the domain names because of their association with the Complainant's marks.
The Respondent has made no effort to rebut these allegations. Added to those allegations is the fact that the disputed domain names revert to other sites: <hondapilot.org> reverts to a website at “www.piloteers.org”; and <acuramdx.org> reverts to a website at “www.mdxers.org”.
From all this, it is hard to avoid the impression that the Respondent, as the Complainant contends, registered and uses the disputed domain names to misleadingly divert Internet traffic looking for the Complainant. Accordingly, the Panel finds that the Complainant has established this third element.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <hondapilot.org> and <acuramdx.org> be transferred to the Complainant.
James A. Barker
Dated: August 4, 2009