WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
American Honda Motor Co., Inc. v. Javier Barro
Case No. D2013-2097
1. The Parties
Complainant is American Honda Motor Co., Inc. of Torrance, California, United States of America (“Complainant”), represented by Phillips Ryther & Winchester, United States of America.
Respondent is Javier Barro of Miami, Florida, United States of America (“Respondent”).
2. The Domain Name and Registrar
The disputed domain name <autonationhondamiami.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 December 3, 2013. On December 4, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 4, 2013, the Registrar transmitted by email to the Center its verification response confirming that 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”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 12, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 1, 2014. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2014.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on January 17, 2014. 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.
4. Factual Background
Complainant is the owner of numerous registrations for the word trademark HONDA in the United States.1 Representative of trademark registrations on the Principal Register of the United States Patent and Trademark Office (USPTO) are: registration number 0826779, registration dated April 4, 1967, in International Class (IC) 19, covering “land vehicles of all types”, as further specified, and; registration number 1,002,188, registration dated January 21, 1975, in IC 21, covering “electric generators and parts thereof”.
Complainant manufactures and sells motorcycles, engines, automobiles and a variety of other products. Complainant advertises and promotes the sale of its products worldwide, including in the United States. Complainant’s HONDA trademark was listed in Business Week’s annual survey of the “100 Most Valuable Global Brands” as the 20th most valuable brand in the world in 2013.
Complainant typically sells new and used automobiles displaying the HONDA trademark in the United States through authorized dealers. Such dealers are often referred to by names comprised of “Honda” and the city or geographic area in which the dealership is located or the name of the dealer operating the dealership, or both. “AutoNation Honda Miami Lakes” is the name of a relatively new authorized dealership located in Miami, Florida. That dealership uses the domain name <autonationhondamiamilakes.com>.
According to the Registrar’s verification, Respondent is the registrant of the disputed domain name. According to the Registrar’s verification, the disputed domain name was created on July 1, 2013, and Respondent registered the disputed domain name on June 30, 2013.
Respondent has used the disputed domain name to direct Internet users to a link-farm parking page containing various sponsored links. Those links predominantly relate to automobiles, including Honda, Ford and Nissan branded automobiles, as well as links offering automobile financing and repair by parties not affiliated with Complainant.
Complainant transmitted (through counsel) cease-and-desist and transfer demands to Respondent on several occasions. Complainant indicates that Respondent proposed by telephone to sell the disputed domain name to Complainant at some price in excess of his out-of-pocket expenses, though without confirming an offer price. Complainant has provided evidence of email correspondence from it to Respondent that supports there was some discussion between the parties on this subject, though Respondent does not appear to have committed an offer to sell to writing.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant alleges that it owns rights in the trademark HONDA as evidenced by registration at the USPTO, and that Complainant has long used the HONDA trademark in commerce in the United States and elsewhere. Complainant contends that its HONDA trademark is well-known worldwide.
Complainant argues that the disputed domain name is confusingly similar to its HONDA trademark. Complainant asserts that it is customary for its HONDA trademark to be used in conjunction with the name of an authorized dealers and/or in connection with a geographic identifier, and that prospective customers and Internet users would likely be confused by the disputed domain name that combines its trademark and the name of its authorized dealer, including a geographic identifier.
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent has not been authorized by Complainant to use its trademark and is not affiliated with Complainant; (2) Respondent is using the disputed domain name to host a commercial website advertising automobiles and financing services in direct and indirect competition with Complainant and its dealers, and; (3) Respondent conceded that he registered the disputed domain name in order to sell it.
Complainant argues that Respondent registered and is using the disputed domain name in bad faith because: (1) Complainant’s trademark is well-known and, particularly because Respondent registered the disputed domain name incorporating the name of Complainant’s authorized dealer, Respondent must have been aware of Complainant’s trademark rights, and must have intended to trade on the disputed domain name’s trademark value; (2) Respondent is using the disputed domain name to divert Internet users to a website offering competing goods and services, constituting classic cyberpiracy; (3) Respondent’s use of the disputed domain name in connection with offering competing goods and services constitutes business disruption, and (4) Respondent’s refusal to transfer the disputed domain name to Complainant for his out-of-pocket expenses is evidence of bad faith.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent at the e-mail and physical addresses provided in its record of registration. Respondent did not reply to e-mail notification. The express courier delivery service engaged by the Center reported that the Complaint was successfully delivered (including signed acknowledgment of delivery). The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements. The Panel is satisfied that Respondent was afforded a reasonable opportunity to respond to the Complaint in this proceeding.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(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 respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has provided evidence of ownership of the trademark HONDA in the United States, including registrations at the USPTO (see Factual Background, supra). Respondent has not challenged Complainant’s assertion of trademark ownership. The Panel determines that Complainant has rights in the trademark HONDA in the United States.
The disputed domain name combines Complainant’s trademark with the name of its authorized dealer and a geographic identifier. Although it is not a party to this proceeding, the Panel takes administrative note that Complainant’s authorized dealer (AutoNation) is the largest automotive retailer in the United States,2 and is well-known as an automotive retailer. An Internet user viewing the combination in the disputed domain name of the name of a well-known automotive retailer (AutoNation) and Complainant’s well-known trademark (HONDA) would be likely to confuse the disputed domain name with Complainant’s trademark. The Internet user would likely assume that the disputed domain name refers to an authorized dealer in Complainant’s automotive products. The addition of the geographic identifier (here “Miami”), typical to automotive retailing, would not dispel such likelihood of confusion. The Panel determines that the disputed domain name is confusingly similar to Complainant’s trademark.
The Panel determines that Complainant has rights in the trademark HONDA, and that the disputed domain name is confusingly similar to that trademark.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that Respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you 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 (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 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.” (Policy, paragraph 4(c))
Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain name are outlined above in section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has not responded to the Complaint, and has not affirmatively provided any ground on which he might establish rights or legitimate interests in the disputed domain name. Respondent’s sole apparent use of the disputed domain name is in connection with a link farm parking page that displays links to competitors of Complainant. This use does not affirmatively establish rights or legitimate interests in the disputed domain name. The Panel does not find any grounds of rights or legitimate interests on the part of Respondent otherwise to be facially apparent. Respondent has not rebutted Complainant’s prima facie showing of lack of rights or legitimate interests.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
In order to prevail under the Policy, Complainant must demonstrate that the disputed domain name “has been registered and is being used in bad faith” (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states that “for the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.” Among those circumstances are: "(i) circumstances indicating that [the respondent has] registered or [the respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; … or (iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site 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] web site or location or of a product or service on [the respondent’s] web site or location.”
Respondent registered the disputed domain name incorporating Complainant’s well-known trademark, and has used that disputed domain name solely for the purpose of directing Internet users to a link farm parking page offering products competitive with those of Complainant. It is reasonable to infer that Respondent is earning pay-per-click revenues from its link farm parking page. It appears to the Panel that Respondent is using the disputed domain name to attract for commercial gain Internet users to Respondent’s website by creating a likelihood of confusion as to Complainant acting as source, sponsor, affiliate or endorser of Respondent’s website.
The Panel determines that Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
In light of the above determination, the Panel need not address alternative grounds for a finding of bad faith registration and use.
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 <autonationhondamiami.com> be transferred to Complainant. 3
Frederick M. Abbott
Date: January 24, 2014
1 Reference to Complainant includes affiliated Honda entities that are owners of record of the trademark registrations. Complainant is authorized by those entities to use the subject trademarks.
2 See “www.wikipedia.org/wiki/AutoNation”, Panel visit January 24, 2014.
3 The Panel recognizes that the disputed domain name also incorporates the name of Complainant’s authorized distributor, AutoNation, and that the distributor may have independent trademark rights in its name. Complainant has not expressly stated that it has been authorized by AutoNation to register (as transferee) the term AutoNation in the disputed domain name, which as a consequence of this decision will be transferred to Complainant. In accepting transfer of the disputed domain name, Complainant must represent and warrant under the terms of its registration agreement that "the registration of the domain name will not infringe upon or otherwise violate the rights of any third party" (Policy, paragraph 2(b)). The Panel assumes that in initiating this proceeding, Complainant was acting within the scope of its agreement with its authorized distributor regarding trademark usage and registration of domain names. But, nothing in this decision should be understood to determine the scope of rights and obligations as between Complainant and AutoNation.