WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
American Honda Motor Co., Inc. v. Mahmud-weli Ali, @Net,Inc[.]
Case No. D2017-1167
1. The Parties
The Complainant is American Honda Motor Co., Inc. of Torrance, California, United States of America (“United States” or “U.S.”), represented by Phillips Ryther & Winchester, United States.
The Respondent is Mahmud-weli Ali, @Net,Inc[.] of Herndon, Virginia, United States.
2. The Domain Name and Registrar
The disputed domain name <hondamotors.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 June 14, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 15, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s 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 June 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 10, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 11, 2017.
The Center appointed William F. Hamilton as the sole panelist in this matter on July 18, 2017. 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, American Honda Motor Co, Inc., is a wholly-owned subsidiary of Honda Motor Co., Ltd., a publically traded company on the New Stock Exchange and the Tokyo Stock Exchange (collectively, the “Complainant”). The Complainant has the exclusive right to use trademarks belonging to Honda in the United States and may enforce Honda’s trademark rights.
The Complainant is one of the world’s largest manufacturers of engines, scooters, motorcycles, automobiles, personal watercraft, and jet airplanes.
The Complainant obtained the first of many U.S. registrations of the mark HONDA (the “Mark’) in 1967. The Complainant has obtained numerous trademark registrations around the world and has used the Mark continuously since at least 1948, when the company was incorporated in Japan. The Mark is internationally renown.
The Respondent registered the disputed domain name on November 27, 1999.
5. Parties’ Contentions
The Complainant asserts the disputed domain name is confusingly similar to the Complainant’s Mark because the disputed domain name merely adds the generic term “motors” to the Mark. The Complainant also asserts that the Respondent does not conduct any bona fide business under the Mark or the disputed domain name and has no rights or legitimate interests in the Mark or the disputed domain name. Finally, the Complainant asserts that the disputed domain name was registered and used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds the disputed domain name is confusingly similar to the Complainant’s Mark. The disputed domain name merely adds a generic term as a suffix to the Mark. Rolls-Royce PLC v. Sergey Sevreev / Sigmal LP, WIPO Case No. D2014-1469 (transferring <rolls-royce.club>). As if that were not sufficient to create confusing similarity, the suffix “motors” describes, in part, the Complainant’s business.
The Panel finds the Complainant has met its burden of proof under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Respondent failed to respond to the Complaint and to proffer any evidence of bona fide rights or legitimate interests in the Mark or the disputed domain name. The Complainant has specifically disavowed conveying any authorization to the Respondent to use the Mark or the disputed domain name. The disputed domain name currently resolves to a website that is “coming soon” and evidences no bona fide business activity. The Internet Archive Wayback Machine shows that for a few months in 2007 the disputed domain resolved to a website offering click-through links to websites offering automotive products, including those in competition with the Complainant. Such use fails to establish any rights or legitimate interests in the Mark or the disputed domain name. Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267 (transferring <express-scrips.com>)
The Panel finds the Complainant has met its burden of proof under Paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant first became aware of the disputed domain name after discovering a fraudulent lottery and “giveaway” scheme of Honda motorcycles that utilized the disputed domain name. When contacted, the Respondent denied any involvement with the fraudulent scheme, but refused to transfer the disputed domain name or provide any legitimate rationale for the registration and use of the disputed domain name.
It is inconceivable that the Respondent was unaware of the Complainant’s famous Mark when registering the disputed domain name. American Honda Motor Co., Inc. v. Gabriel Salcedo (a/k/a Tuhonda), WIPO Case No. D2013-1846 (transferring <hondaofmanhattan.com>). Additionally, the Respondent’s addition of the suffix “motors” to the Mark to compose the disputed domain name clearly evidences the Respondent’s knowledge of the Complainant’s Mark and business activities. Lloyds Bank Plc v. Marc Wiese, WIPO Case No. D2015-0914 (transferring <lloydsbank.brussels>).
The use in 2007 of the disputed domain name to lure Internet users to click on links offering competitive products further evidences bad faith registration and use of the disputed domain name, Booking.com BV v. Chen Guo Long, WIPO Case No. D2017-0311 (transferring <bookingcom.xyz>).
Finally, the extended passive holding of the disputed domain name supports a finding of bad faith registration and use. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Tommy Bahama Group, Inc. v. Domains by Proxy, Inc. / Aware Marketing,WIPOCase No. D2011-2127 (transferring <tommybahamasuck.com>).
The Panel finds the Complainant has met its burden of proof under paragraph 4(a)(iii) of the Policy.
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 <hondamotors.com> be transferred to the Complainant.
William F. Hamilton
Date: July 25, 2017