WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
American Honda Motor Co., Inc. v. Gabriel Salcedo (a/k/a Tuhonda)
Case No. D2013-1846
1. The Parties
Complainant is American Honda Motor Co., Inc. of Torrance, California, United States of America (“U.S.”), represented by Phillips Ryther & Winchester, U.S.
Respondent is Gabriel Salcedo (a/k/a Tuhonda) of New York, New York, U.S.
2. The Domain Name and Registrar
The disputed domain name <hondaofmanhattan.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2013. On October 30, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response confirming Respondent as the registrant and provided 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”).
In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 12, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was December 2, 2013. Respondent did not submit a formal response. Accordingly, the Center notified Respondent’s default on December 3, 2013.
The Center appointed Gary J. Nelson as the sole panelist in this matter on December 11, 2013. 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 paragraph 7 of the Rules.
On December 19, 2013, the Panel issued a Procedural Order requesting Complainant to submit documentary evidence supporting its claim that it has the exclusive right to use and enforce the HONDA trademark in the United States by December 23, 2013. The Procedural Order gave Respondent until December 23, 2013 to affirmatively indicate whether Respondent intended to file a response to the anticipated submission by Complainant and further gave Respondent until December 28, 2013 to submit its comments regarding the anticipated evidentiary submission.
On December 19, 2013, Complainant submitted evidence supporting its claim that it has the exclusive right to use and enforce the HONDA trademark in the U.S. Respondent did not offer comments relevant to Complainant’s evidentiary submission by the December 28, 2013 due date.
4. Factual Background
Honda Motor Co., Ltd. (“Honda Motor Co.”) is the owner of numerous U.S. trademark registrations for HONDA. Specifically, Honda Motor Co. owns at least the following trademark registration in the U.S.:
Dates of Application and Registration
November 2, 1965
April 4, 1967
Complainant has secured the exclusive right to use and enforce the HONDA trademark in the U.S. from Honda Motor Co. Under the U.S. law, such an exclusive licensee qualifies as a “registrant” under the Lanham Act with standing to sue for trademark infringement under Section 32(1) of the Lanham Act..
The disputed domain name was registered on April 5, 2006. The operational website reached when accessing <hondaofmanhattan.com> features a webpage depicting information on Hyundai automobiles.
5. Parties’ Contentions
Honda Motor Co. is the world’s largest motorcycle manufacturer, the world’s largest engine maker, one of the world’s leading automakers, and one of the best-known and well-respected companies on the planet. Complainant 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 Motor Co. has manufactured some of the best-selling and most popular automobiles in U.S. history, starting with the Honda Civic in 1972, the Honda Accord in 1976, the Honda Prelude in 1987 and the Honda Pilot in 2002.
As of today, North America is Honda Motor Co.’s largest automobile market. Roughly 84 percent of its automobiles sold in the U.S. are made in North America.
Honda Motor Co.’s worldwide unit sales of automobiles equaled 2,909,017 units in 2011. Unit sales of its automobiles, motorcycles, and power products in 2011 totaled over 31.5 million units.
Honda Motor Co.’s manufacturing operations are principally conducted in 32 separate factories, located in Japan, the U.S., Canada, Mexico, the United Kingdom of Great Britain and Northern Ireland, France, Italy, Spain, China, India, Indonesia, Malaysia, Pakistan, Taiwan Province of China, Thailand, Viet Nam, Brazil and Turkey.
New and certified used HONDA branded automobiles are sold through a network of licensed Honda dealers, which are often referred to by names comprised of “Honda” and the city or geographic area in which the dealership is located, such as, for example, “Honda of Marysville,” located in Marysville, Washington, U.S. There are several Honda dealers located on Manhattan Island in New York, New York, U.S.
Respondent is the General Sales Manager of Teddy Nissan, a Nissan dealership located in the Bronx, a New York City borough north of the borough of Manhattan.
Complainant attempted to contact Respondent requesting a voluntary transfer of the contested domain name. Respondent replied with a claim of ownership of the contested domain name and an offer to sell the domain name to Complainant.
Complainant has rights to registered and common law trademark in the U.S. for the HONDA mark.
Complainant acquired its rights in the HONDA mark prior to the date Respondent registered the disputed domain name.
The disputed domain name is confusingly similar to the HONDA mark.
Respondent has no rights or legitimate interest in the disputed domain name.
Respondent registered and is using the disputed domain name in bad faith.
Respondent did not formally reply to Complainant’s contentions but did send two emails directly to the Center that appear to generally object to the filing of the Complaint by Complainant. These emails are detailed below.
Email of December 11, 2013:
“I need legal help pls.”
Email of December 12, 2013:
“Do you recommend and attorney.”
In response to receiving the Procedural Order, Respondent did not comment on the documentary evidence submitted by Complainant. However, Respondent did send an additional email to the Center containing the statement below.
Email of December 20, 2013:
“You are all driving me crazy with all this legal terminology. All I asked for was legal representation by go daddy.”
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs 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.”
The Panel has determined that the three emails received from Respondent do not qualify as a formal response and will proceed as if Respondent has defaulted.
In view of Respondent’s failure to submit a formal 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 shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant has established that it has prior rights in the HONDA mark and the disputed domain name is confusingly similar to Complainant’s HONDA mark.
Complainant has rights to numerous HONDA trademark registrations in the U.S. One of these registrations is for U.S. trademark registration no. 0826779. The registration date for this trademark (i.e., April 4, 1967) precedes the date upon which the disputed domain name was registered (i.e., April 5, 2006).
Accordingly, Complainant has established rights in the HONDA mark pursuant to Policy, paragraph 4(a)(i). See Janus International Holding Co. v. Scott Rademacher, WIPO Case No. D2002-0201 (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. The respondent has the burden of refuting this assumption).
The disputed domain name, <hondaofmanhattan.com>, is confusingly similar to the HONDA trademark because the disputed domain name incorporates the entirety of the HONDA trademark and merely adds a generic geographically descriptive term (i.e., “Manhattan” is commonly known as New York City) and a top-level “.com” domain suffix. Neither the addition of a purely descriptive term to a well-known mark or the addition of a generic top-level domain suffix is sufficient to create a distinct domain name capable of overcoming a proper claim of confusing similarity. See Arthur Guinness Son & Co. (Dublin) Limited v. Tim Healy/BOSTH, WIPO Case No. D2001-0026 (finding confusing similarity where the domain name contains the identical mark of the complainant combined with a generic word or term); see also, Net2phone Inc. v. Netcall Sagl, WIPO Case No. D2000-0666 (finding that the combination of a geographic term with an established trademark does not prevent a domain name from being found confusingly similar); Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028 (finding that the addition of the geographic country descriptor “china” to form <cellularonechina.com> was confusingly similar to the CELLULAR ONE trademark); CMGI, Inc. v. Reyes, WIPO Case No. D2000-0628 (finding <wal-mart-europe.com> confusingly similar to the WAL-MART trademark). Accordingly, in regard to the disputed domain name, Respondent has merely added a well-known geographic location phrase to the HONDA mark.
The addition of the words “of Manhattan” directly behind the HONDA mark is insufficient to avoid a finding of confusing similarity.
Complainant has proven the requirement of Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent has failed to file a formal Response, which can suggest, in appropriate circumstances, that Respondent lacks rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse, WIPO Case No. D2000-1221 (finding that the respondent’s failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission that it has no rights or legitimate interests in a domain name).
By not filing a formal Response, Respondent has not provided any evidence that it is commonly known by the disputed domain name, or that it is commonly known by any name consisting of, or incorporating the words “honda,” “of,” “Manhattan” or any combination of these words. In Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403, the panel held that a lack of rights or legitimate interests could be found where (1) the respondent is not a licensee of the complainant; (2) the complainant’s rights in its related trademarks precede the respondent’s registration of the domain name; and (3) the respondent is not commonly known by the domain name in question. The Panel notes that by not submitting a formal Response, Respondent also failed to provide any evidence that it is a licensee of Complainant or that its registration of the disputed domain name predates the establishment of Complainant’s rights in its HONDA mark.
Complainant has provided unrebutted evidence showing that Respondent is operating a website at the disputed domain name featuring products/services that are related to the automobile industry and products covered by its trademark registrations. Respondent’s decision to add a common geographic descriptive locator (i.e., “of Manhattan”) to a well-known trademark does not instill Respondent with legitimate rights in the composite name or mark. See CHANEL, INC. v. ESTCO TECHNOLOGY GROUP, WIPO Case No. D2000-0413 (finding that use of a famous trademark to attract the public to a website is not a fair or legitimate use of the domain name and ordering the transfer of <chanelstor.com> and <chanelfashion.com> to complainant).
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The Panel finds that Respondent registered and is using the disputed domain name in bad faith.
The Panel finds that Respondent likely chose the disputed domain name with full knowledge of Complainant’s rights in the HONDA mark. Complainant has alleged, and Respondent has not rebutted, that Respondent is the General Sales Manager of Teddy Nissan, a Nissan dealership located in Bronx, a New York City borough. Complainant has also presented uncontested documentary evidence of this allegation. The Panel finds this unrebutted allegation, supported by documentary evidence, to be convincing and sufficient to establish the bad faith registration and use of the disputed domain name.
Respondent’s awareness of the HONDA trademark may also be inferred because the mark was registered with the U.S. Patent and Trademark Office prior to Respondent’s registration of the disputed domain name and since the HONDA trademark is well-known and famous. See Trip.com, Inc. v. Daniel Deamone, WIPO Case No. D2001-1066 (finding bad faith where the respondent had actual and constructive notice of the complainant’s trademarks registered in the United States); see also Kraft Foods (Norway) v. Fredrik Wide and Japp Fredrik Wide, WIPO Case No. D2000-0911 (“the fact that Respondent [chose] to register a well-known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue”).
Complainant has also alleged that Respondent attempted to sell the disputed domain name for USD 3,188. Respondent, by not submitting a formal response, has not challenged this allegation. This offer to sell the disputed domain name is evidence Respondent registered and is using the disputed domain name in bad faith. See Justin Kent Luhrs v. Steve Regan, WIPO Case No. D2002-0671 (finding bad faith in offering domain names for sale for USD 400).
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <hondaofmanhattan.com> be transferred to Complainant.
Gary J. Nelson
Date: December 31, 2013