WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
American Honda Motor Co., Inc. v. Jeff Randall
Case No. D2015-1631
1. The Parties
The Complainant is American Honda Motor Co., Inc. of Torrance, California, United States of America (“United States”), represented by Phillips Ryther & Winchester, United States.
The Respondent is Jeff Randall of Panama, Panama.
2. The Domain Name and Registrar
The disputed domain name <richfieldbloomingtonhonda.com> (the “Domain Name”) is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 15, 2015. That day the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name and the Registrar 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”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 2, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 22, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 23, 2015.
The Center appointed Alan L. Limbury as the sole panelist in this matter on October 28, 2015. 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
The Complainant is a subsidiary of Honda Motor Co., Ltd. of Japan, one of the world’s leading automakers.
Honda Motor Co., Ltd. is the registered proprietor of United States trademark HONDA (Reg. No. 826,779) registered on April 4, 1967 for land vehicles of all types (class 19) and for internal combustion engines (class 23). It holds many other registrations for HONDA and marks that incorporate HONDA. The HONDA mark is internationally recognized as famous. The Complainant has the exclusive right to use trademarks belonging to Honda Motor Co., Ltd. in the United States. In the Complaint, as in this decision, “Complainant” and “Honda” are used to refer to the two entities in combination.
Honda automobiles are sold through a network of authorized Honda dealers, which are often referred to by names comprising “Honda” and the location of the dealership. Honda has authorized a dealer located in Richfield, Minnesota to use the business name Richfield Bloomington Honda.
The Respondent registered the Domain Name, <richfieldbloomingtonhonda.com>, on September 11, 2006.
According to the Complainant, Honda learned of the Respondent’s registration in 2015. On August 10, 2015, the Domain Name was being used both to advertise the Domain Name for sale on “www.sedo.com”and to display links to companies selling parts and automobiles in direct competition with Honda. Following two cease-and-desist emails from the Complainant’s counsel to which the Respondent did not reply, on September 13, 2015 the Domain Name resolved to the Complainant’s website at “www.honda.com”.
5. Parties’ Contentions
The Domain Name is confusingly similar to the HONDA registered mark in that it wholly incorporates that mark and is identical to the name of a Honda dealer located in the geographic area referenced in the Domain Name.
The Respondent has no rights or legitimate interests in respect of the Domain Name because the Respondent is not known by the Domain Name, has not been authorized by Honda to use the HONDA mark in any way, has no connection or affiliation with Honda and has never made any bona fide use of the Domain Name. The Respondent’s use of the Domain Name to display pay-per-click advertisements targeted toward the Domain Name’s trademark meaning and to advertise the Domain Name for sale is not legitimate. The use the Respondent made of the Domain Name to resolve to a webpage on Honda’s own website after being notified of the Complainant’s objections is also illegitimate. Use of a domain name to resolve to the trademark holder’s own website is per se infringing, as consumers cannot possibly be expected to realize that such a domain name is owned and controlled by a registrant who has no affiliation with the trademark holder.
Given the strength and fame of the Honda marks, the Respondent’s bad faith registration and use 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.
The fact that the Respondent was aware of Complainant and intended to benefit from the value of the HONDA mark is further demonstrated by the Respondent’s use of the Domain Name to display pay-per-click advertisements targeted toward the Domain Name’s trademark meaning.
The practice of using a domain name to display links advertising the availability of the domain name for sale on a website like “www.sedo.com” is a well-recognized form of cyberpiracy.
Use of the Domain Name to re-direct visitors to a webpage within “www.honda.com”also constitutes evidence of bad faith since this “allow[s] the Respondent to divert future users to competing web sites after having built up mistaken confidence in the source of that content”: Altavista Co. v. Brunosousa, WIPO Case No. D2002-0109 (emphasis in original) and because it “interferes with Complainant’s ability to control the use of its own trademarks on the Internet, including whether and how domain names incorporating those trademarks resolve to particular websites. It also raises the risk that the Respondent could use the disputed domain name to resolve to the Respondent’s own website or to a website of another competitor”: American Honda Motor Co., Inc. v. Ryan G. Foo, WIPO Case No. D2015-0829.
The Respondent’s bad faith is also evinced by the Respondent’s registration of numerous domain names consisting of misspellings of famous trademarks names, according to the database of Whoisology, in which the Respondent’s email address is the registrant’s email address as shown in the WhoIs record.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) the Policy, a complainant requesting the transfer of a domain name must prove the following three elements: (i) the respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) the respondent has no rights or legitimate interests in the domain name; and (iii) the respondent has registered the domain name and is using it in bad faith.
Under paragraph 15(a) of the Rules, “A Panel shall 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.”
A respondent is not obliged to participate in a proceeding under the Policy but if it fails to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the complainant. See Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441.
A. Identical or Confusingly Similar
The Complainant, as exclusive licensee in the United States of the HONDA trademark, has rights in that mark, first registered in that country by its parent company in 1967.
The Domain Name consists of that mark, preceded by the geographic names “Richfield” and “Bloomington” and followed by the generic Top-Level Domain (“.com”), generally regarded as irrelevant for the purpose of determining whether a disputed domain name is identical or confusingly similar: Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Many cases have established that the test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the other marketing and use factors, such as the “Sleekcraft factors” – AMF Inc. v. Sleekcraft Boats, 599 F.2d 341,346 (9th Cir. 1979), usually considered in trademark infringement or unfair competition cases. See BWT Brands, Inc and British American Tobacco (Brands), Inc v. NABR, WIPO Case No. D2001-1480; Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505; Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662; Koninklijke Philips Electronics N.V. v. In Seo Kim, WIPO Case No. D2001-1195; Vivendi Universal v. Mr. Jay David Sallen and GO247.COM,Inc., WIPO Case No. D2001-1121, and the cases there cited. See also the similar approach adopted by the U.S. Federal court in Northern Light Tech., Inc. v. N. Lights Club 2000 U.S. Dist. LEXIS 4732 (D. Mass. March 31, 2000).
The Panel accepts the Complainant’s submission that the addition of the geographic names “Richfield” and “Bloomington” to the famous HONDA mark does not serve to distinguish the Domain Name from the Complainant’s trademark but rather strengthens the impression that the Domain Name refers to the website of a Complainant’s dealer located in Richfield, Minnesota. See American Honda Motor Co., Inc. v. Domain Administrator - WhoIs Watchdog / Honda Automobile Customer Service - American Honda Motor Co., Inc., WIPO Case No. D2015-0559 (transferring <sanjosehonda.com>) and Bayerische Motoren Werke AG, Rolls-Royce Motor Cars Limited v. Ed Slingsby, SC Net, WIPO Case No. D2015-0268 (transferring domain names including <chicagorollsroyce.com>).
Accordingly the Panel finds the Domain Name to be confusingly similar to the HONDA mark, in which the Complainant has rights.
B. Rights or Legitimate Interests
The HONDA mark is distinctive and famous. The Complainant’s assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the Domain Name on the part of the Respondent. The evidentiary burden therefore shifts to the Respondent to show by concrete evidence that it does have rights or legitimate interests in that name: Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited, WIPO Case No. D2004-0753.
The Respondent has made no attempt to do so.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, a conjunctive requirement of proof of both registration in bad faith and use in bad faith. Those circumstances are:
(i) circumstances indicating that the respondent has registered or 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
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; 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 its 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 its website or location.
The Domain Name conveys the misleading representation that it belongs to or is associated with a genuine dealer in Honda automobiles located in the Richfield/Bloomington area of Minnesota. The Panel finds that the Respondent registered the Domain Name in order to prevent the owner of the HONDA trademark from reflecting the mark in a corresponding domain name. The Complainant has shown that the Respondent has engaged in a pattern of such conduct by registering numerous domain names, many of which are misspelled, including <toyotofinance.com>, <hyandui.com>, <nessanusa.com>, <jpmargan.com>, <lancastertoyotamazda.com>, <usairwas.com>, <usairwaya.com>, <usairwasys.com>, <wellsfeargo.com>, <unitedstatesparcelservice.com>, <wwwguardianlife.com>, <delltechsupport.com> and <yuotubi.com>. The circumstances described in paragraph 4(b)(ii) of the Policy are present: Wikimedia Foundation Inc. v. Kevo Ouz a/k/a Online Marketing Realty, WIPO Case No. D2009-0798.
The only evidence before the Panel of use by the Respondent of the Domain Name prior to receiving cease-and-desist emails from the Complainant’s counsel is use in 2015 to advertise the Domain Name for sale and simultaneously to generate pay-per-click traffic to products of competitors of the Complainant. Given the passage of eight years since the Domain Name was registered in 2006, the Panel is unable to draw the conclusion that the Domain Name was registered primarily for the purpose identified in paragraph 4(b)(i) of the Policy. The Panel is satisfied, however, that the Respondent’s use in 2015 to generate such pay-per-click traffic falls within the circumstances set out in paragraph 4(b)(iv) of the Policy. See e.g., ACCOR v. Steve Kerry / North West Enterprise, Inc., WIPO Case No. D2006-0649.
The Respondent’s more recent use of the Domain Name to resolve to the “www.honda.com” website also demonstrates bad faith for the reasons set out above in Altavista Co. v. Brunosousa , aka Bruno Sousa, WIPO Case No. D2002-0109 and American Honda Motor Co., Inc. v. Ryan G. Foo, supra.
Bad faith use of the kind identified in paragraph 4(b)(iv) of the Policy is evidence of both bad faith registration and bad faith use but such evidence is not necessarily conclusive, since it may be weighed against any evidence of good faith registration. See Viz Communications, Inc., v. Redsun dba www.animerica.com and David Penava, WIPO Case No. D2000-0905.
Here there is no evidence of good faith registration. Indeed, since the HONDA mark is (and was in 2006) famous, there is no conceivable basis on which a finding of good faith registration could possibly be made.
Accordingly the Panel finds that the Respondent registered and is using the Domain Name in bad faith.
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, <richfieldbloomingtonhonda.com>, be transferred to the Complainant.
Alan L. Limbury
Date: November 10, 2015