WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
American Honda Motor Co., Inc. v. Domain Admin, Private Registrations Aktien Gesellschaft
Case No. D2012-2185
1. The Parties
The Complainant is American Honda Motor Co., Inc. of Torrance, California, United States of America.
The Respondent is Domain Admin, Private Registrations Aktien Gesellschaft of Kingstown, Saint Vincent and the Grenadines.
2. The Domain Name and Registrar
The disputed domain name <hondaofmarysville.com> (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on November 5, 2012. It named as respondent “PrivacyProtect.org”, being the entity which was then shown as registrant in the WhoIs particulars for the Domain Name. On November 5, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 6, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 16, 2012, 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 amendment to the Complaint on November 20, 2012.
The Center verified that the Complaint together with the amendment to 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”).
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 November 21, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 11, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 13, 2012.
The Center appointed Warwick Smith as the sole panelist in this matter on December 27, 2012. 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 Panel notes that the Center appears to have properly discharged its obligation to notify the Complaint to the Respondent, under paragraph 2 of the Rules.
4. Factual Background
The following (uncontested) information is taken from the Complaint.
3. The Complainant
The Complainant is a company incorporated in California. It is a wholly-owned subsidiary of Honda Motor Co Limited (“Honda”), the Japanese Corporation which is well known around the world for its Honda motor vehicles.
Honda is the owner of numerous registrations of the trademark HONDA around the world, including on the principal register maintained by the United States Patent and Trademark Office. Honda’s earliest registration for its HONDA mark in the United States appears to date from November 2, 1965. This registration covers land vehicles of all types, including motor cars and motor cycles, in International Class 19.
The Complainant was incorporated in the United States in 1959. It has the exclusive right to use Honda’s trademarks in the United States, and to sue for violations of Honda’s rights in that country.
2. Honda Marysville
Marysville is a city in Ohio, in the United States. An authorized Honda dealership was opened in that city in February 2005. The owner of that dealership registered the domain name <hondamarysville.com> on March 14, 2003. It has used that domain name to host its official, dealer website, since the opening in Marysville in February 2005.
The only entity authorized by Honda to use that domain name is Honda’s authorized dealer, Honda Marysville.
3. The Respondent and the Domain Name
The Domain Name was registered on October 22, 2005. It resolves to a website (“the Respondent’s website”) containing a number of click-through links to third party websites, all of which appear to be concerned with motor vehicles. Some of the links are to websites associated with Honda itself; others have been to websites offering products of Honda’s competitors – for example, one link to a third party website was headed:
“Compare Ford® Fusion
Get a side-by-side comparison of Ford Fusion & the Competition Now!”
In an amendment to the Complaint, filed after the Respondent’s identity was made known by the Registrar, the Complainant provided details of some 35 UDRP decisions in which the Respondent has been ordered to transfer disputed domain names to the complainants. The Complainant cited one case, Apple Computer, Inc. v. PrivacyProtect.org / Private Registrations Aktien Gesellschaft, WIPO Case No. D2012-0879, in which the panel noted that the Respondent was a “habitual cybersquatter engaged in a pattern and practice of registering and using in bad faith domain names corresponding to the well-known trade names and/or marks of third parties”.
4. Pre-Commencement Correspondence
The Complainant’s representatives sent a cease and desist letter to the Respondent care of PrivacyProtect.org, on October 9, 2012. The letter referred to Honda’s registered rights in its HONDA trademark, and it noted that the authorized Honda dealership in Marysville is commonly known by the name “Honda of Marysville”. The letter referred to the Respondent’s use of the Respondent’s website to advertise new and used autos for sale in competition with Honda (including Mazda, Toyota, and Ford vehicles), and alleged infringement of Honda’s rights, including by violation of the United States Anticybersquatting Consumer Protection Act. The letter referred to successful complaints made by the Complainant under the UDRP in other cases in which the word “honda” had been included with a geographical descriptor in the disputed domain names (e.g. <hondaofgainesville.com> and <hamiltonhonda.com>). The Complainant’s representatives sought the transfer of the Domain Name to the Complainant.
5. Parties’ Contentions
The Complainant contends:
1. The Domain Name is confusingly similar to the HONDA mark in which the Complainant has rights. The Complainant has used the mark HONDA in the United States continuously in commerce for over 40 years, and has extensively advertised and promoted goods and services by reference to the HONDA mark during that period.
The addition of a geographical indicator in the Domain Name cannot suffice to prevent the Domain Name from being “functionally” identical to the HONDA trademark. That is because most potential users of the Internet are familiar with the practice of well-known businesses using geographical indicators in domain names to direct certain of their goods or services to consumers in particular locations around the world (citing Playboy Enterprises International Inc. v. Joao Melancia, WIPO Case No. D2006-1106 – relating to the domain name <playboyportugal.com>). See also American Honda Motor Co., Inc. v. Maguire Automotive Group, WIPO Case No. D2011-1822 (transferring <hamiltonhonda.com> to the Complainant), American Honda Motor Co., Inc. v. Michell Huddleston, WIPO Case No. D2011-0076 (transferring <hondaofgainesville.com> and <hondaofgainesville.net> to the Complainant), and American Honda Motor Co. Inc. v. Auto of St. Louis, JIM FEENEY, WIPO Case No. D2010-0541 (transferring inter alia <hondaoffrontenac.com> and <frontenachonda.com>, Volkswagen Aktiengesellschaft v. MapleOne Solutions, WIPO Case No. D2003-0326 (transferring <guelphvw.com> to Volkswagen AG), and Audi AG, Volkswagen Group of America, Inc. v. Sandlot LLC, Jim Gossett, WIPO Case No. D2008-1053 (transferring <auditulsa.com> and <tulsaaudi.com> to Audi AG).
2. The Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant relies on the following:
(i) The Respondent is not known by the Domain Name, and has not been authorized by Honda to use the mark HONDA in any way. The Respondent has no connection or affiliation with Honda.
(ii) The Respondent has never made any bona fide use of the Domain Name.
(iii) The only use the Respondent has made of the Domain Name is to host a commercial website advertising automobiles and auto financing in direct and indirect competition with Honda and its dealers. Such use cannot form the basis for any right or legitimate interest in the Domain Name under the Policy (citing Audi AG, Volkswagen Group of America, Inc. v. Sandlot LLC, Jim Gossett, and American Honda Motor Co., Inc. v. Michell Huddleston, supra).
3. The Domain Name was registered and is being used in bad faith. The Complainant relies on the following matters:
(i) The Respondent’s bad faith is established by the fact of registration alone. Honda falls within a select class of internationally strong marks that have become so famous that it is impossible for any respondent to claim that he was unaware of Honda’s prior rights or has a legitimate interest in domain names that incorporate the mark (see Playboy Enterprises International, Inc. v. Tamara Pitts, WIPO Case No. D2006-0675), and Ford Motor Co. v. Knuhtsen, WIPO Case No. DBIZ2002-0183).
(ii) The likelihood that the Respondent was conscious of the trademark significance of the Domain Name when the Domain Name was registered, is increased by the fact that the Domain Name is virtually identical to the domain name used by Honda’s authorized dealer in Marysville.
(iii) Registration of the mark HONDA with the United States Patent & Trademark Office confers constructive knowledge of the Complainant’s rights upon the Respondent.
(iv) The Respondent has used the Respondent’s website to advertise automobiles and related goods and services for sale in competition with Honda. That demonstrates the Respondent’s awareness of Honda’s trademarks rights, as neither “Marysville” nor “Honda” has any inherent association with such competing goods or services.
(v) The Respondent’s use of the Domain Name to host a website offering automobiles and related goods and services for sale in direct competition with Honda and its dealers by itself conclusively demonstrates the Respondent’s bad faith. Use of a domain name that is confusingly similar to the complainant’s mark to host a website offering competing goods and services for sale is classic cyber piracy and constitutes “compelling evidence of bad faith in the registration and use of the disputed domain name” (citing The Chase Manhattan Corporation et al. v. John Whiteley, WIPO Case No. D2000-0346).
(vi) That use of the Domain Name also constitutes evidence of business disruption under paragraph 4(b)(iii) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. What the Complainant must prove under the Policy - General
Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the 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”.
Where a respondent has not submitted a response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the Panel may draw such inferences from a respondent’s failure to comply with the Rules (e.g. by failing to file a response), as the Panel considers appropriate.
B. Identical or Confusingly Similar
The Complainant has sufficiently proved this part of the Complaint. It is a wholly-owned subsidiary of Honda, and has been using the HONDA mark in the United States for over 40 years. Those circumstances sufficiently establish that the Complainant has “rights” in Honda’s HONDA mark for the purposes of paragraph 4(a)(i) of the Policy.
The Domain Name is confusingly similar to that mark. The Panel accepts the Complainant’s submission based on Playboy Enterprises International Inc. v. Joao Melancia, supra, and further notes that that decision appears to be fully consistent with the consensus view of UDRP panels in cases where a disputed domain name consists of the complainant’s trademark combined with a dictionary word or descriptive or geographical expression, at least where the complainant’s trademark is recognizable as such within the disputed domain name.1
In this case, the HONDA mark is clearly recognizable as such within the Domain Name, and all that has been added is the (geographical) descriptive expression “of Marysville”. The test for confusing similarity under paragraph 4(a)(i) of the Policy is therefore met.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The consensus view of WIPO panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized at paragraph 2.1 of the WIPO Overview 2.0, as follows:
“… a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. … If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
In this case, neither the Complainant nor Honda has authorized the Respondent to use the HONDA mark, and there is nothing in the evidence to suggest that the Respondent, or any business or other organization operated by it, is commonly known by the Domain Name. There is therefore no basis in the evidence for any defense under paragraph 4(c)(ii) of the Policy.
The Respondent’s website being clearly commercial in nature, there is also no apparent basis for a defense of “legitimate noncommercial … use [of the Domain Name], without intent for commercial gain …” under paragraph 4(c)(iii) of the Policy.
The foregoing combination of circumstances is sufficient to establish a prima facie case of “no rights or legitimate interests”. The burden of production therefore shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Domain Name. The Respondent having failed to submit any Response, that burden has not been discharged. The Complainant’s prima facie proof therefore prevails, and it has made out its case on this part of the Complaint.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances include:
“(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.”
The Complainant has also made out its case under this heading.
There can be no serious suggestion that the Respondent was not well aware of Honda and the HONDA mark when the Domain Name was registered. The HONDA mark is well known around the world, and the sponsored links on the Respondent’s website include a number of references to Honda or to vehicles manufactured by Honda.
The Panel is satisfied that the Respondent’s knowledge of the HONDA mark at the time of registration of the Domain Name is, in and of itself, sufficient in this case to establish “opportunistic bad faith” (see for example Playboy Enterprises International, Inc. v. Tamara Pitts, supra. See also Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 – the use of a disputed domain name which is obviously connected with a well-known name and products by someone with no connection with that name or those products, suggests opportunistic bad faith).
The Panel also accepts the Complainant’s submission that use of a domain name that is confusingly similar to a complainant’s mark to host a website offering competing goods and services for sale, is classic cyber-piracy, and constitutes compelling evidence of bad faith in the registration and use of the domain name. That is the position here, where the Respondent has used the Domain Name to attract Internet users to the Respondent’s website and to refer them to third party websites, at least some of which are operated by the Complainant’s competitors.
The Respondent registered the Domain Name only a matter of eight months or so after the Honda dealer in Marysville launched its website at “www.hondamarysville.com”. The possibility of the Respondent choosing to connect the expressions “Honda” and “Marysville” in a domain name without any knowledge of that website is remote enough that it may be discounted completely, and the similarity between the Domain Name and <hondamarysville.com> leaves little room for doubt that the Respondent expected and intended to attract to the Respondent’s website Internet users who were looking for the website of the authorized Honda dealer in Marysville.
The third party websites to which links are provided on the Respondent’s website are commercial in nature and, at least in the absence of any Response, the Panel can only sensibly infer that the Respondent would not have been providing those links if it were not deriving some commercial gain from doing so.
The circumstances described in the preceding three paragraphs of this Decision fall squarely within paragraph 4(b)(iv) of the Policy: by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the HONDA mark (in which the Complainant has rights), as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
The Complainant having proved each element of the Complaint under paragraph 4(a) of the Policy, there will be a transfer of the Domain Name to the Complainant.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <hondaofmarysville.com> be transferred to the Complainant.
Date: January 10, 2013
1 WIPO Overview of WIPO Panel View on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) at para 1.2: “The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms ... typically being regarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name. ...”