WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
American Honda Motor Co., Inc. v. Hulmiho Ukolen
Case No. D2018-0905
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 Hulmiho Ukolen of Helsinki, Finland.
2. The Domain Name and Registrar
The disputed domain name <hondaaircraft.com> is registered with Gransy, s.r.o. d/b/a subreg.cz (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2018. On April 24, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 25, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 25, 2018 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 April 30, 2018.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 1, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 21, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 23, 2018.
The Center appointed Charles Gielen as the sole panelist in this matter on June 1, 2018. 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 wholly-owned subsidiary of Honda Motor Company Limited, a Japanese corporation founded in 1948 and a leading manufacturer and seller of automobiles, motorcycles, and engines. The Complainant has exclusive authority to use and enforce the trademarks consisting of the word HONDA in the United States. The earliest United States registration for the HONDA mark was obtained in 1967 (see, e.g., United States trademark registration No. 826,779 for HONDA, registered on April 4, 1967). This registration was obtained for among others land vehicles in class 19. Subsequently, an application was filed for a United States registration of the trademark HONDAJET on a so called intent-to-use basis, among others for use in connection with aircraft and structural parts therefor. That application was granted on January 8, 2008 (United States registration No. 3,366,257), and was subsequently cancelled.
The disputed domain name <hondaaircraft.com> was created on August 6, 2006 and in the course of time the disputed domain name resolved to different websites, such as to a website advertising automobiles for sale manufactured by the Complainant’s competitors, and a number of other manufacturers, including some automobiles manufactured by Honda, to a website of a manufacturer selling automobiles in direct competition with Honda, to Honda’s own website at <honda.com>, and to a website displaying pay-per-click advertisements.
5. Parties’ Contentions
The Complainant argues that it 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 companies on the planet. The 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. In 1986, the Complainant began research on both small aircraft and jet engines, and, in October 2000, established a research facility at Piedmont Triad International Airport in North-Carolina for the purpose of researching, fabricating, and flight testing a compact business jet to be sold under the name HONDAJET. The first HONDAJET test flight took place on December 3, 2003, and this achievement was made public shortly thereafter. On August 8, 2006, it was publicly announced by the mother company of the Complainant (Honda Motor Company Limited) that it had established a wholly-owned subsidiary, Honda Aircraft Company, Inc., to be responsible for the further development, sales promotion, and production of the HONDAJET aircraft. On that day the Respondent created the disputed domain name.
The Complainant further argues that the trademark HONDA falls within a select class of internationally famous trademarks and is one of the most recognized trademarks in the entire world. In 2006, the year in which the disputed domain name was registered, the trademark HONDA was ranked as the 19th most valuable brand in the world on Interbrand’s annual survey of the “100 Most Valuable Global Brands,” with an estimated brand value of USD 15,244 million dollars, and HONDA has consistently ranked among the top 25 most valuable global brands.
The Complainant contends that the Respondent registered the disputed domain name long after the trademark HONDA had become famous. The Complainant discovered the Respondent’s registration in February 2018, after the Respondent contacted the Complainant and offered to sell the disputed domain name for USD 10,000 worldwide. The Complainant’s outside counsel then investigated the use of the disputed domain name and in doing so, found out that a warning about distribution of malware was given. On February 26, 2018, the Complainant’s outside counsel delivered a demand letter to the Respondent to which the Respondent answered on March 6, 2018 with an offer to sell the disputed domain name for USD 1,250. The Complainant offered to pay out-of-pocket expenses to an amount of USD 500, but the Respondent maintained his request for payment of USD 1,250.
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark, since the disputed domain name reproduces the trademark HONDA in its entirety followed by the generic term “aircraft.”
Furthermore, the Complainant contends that the Respondent does not have any rights or legitimate interests in the disputed domain name, because the Respondent is not known by the disputed domain name, has not been authorized by the Complainant to use the trademark HONDA in any way, has no connection or affiliation with the Complainant and has never made any bona fide use of the disputed domain name. On the contrary, the Complainant argues that the disputed domain name was used for illegitimate purposes, such as for the distribution of malware as well as for the redirection of Internet users to competitors of the Complainant. Also, the Respondent’s use of the disputed domain name to resolve to the Complainant’s own website is illegitimate 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.
Finally, the Complainant argues that the Respondent registered and is using the disputed domain name in bad faith. Among others, the following reasons are given. First of all, given the strength and fame of the trademark HONDA, the Respondent’s bad faith is established by the fact of the registration alone. The trademark HONDA falls within a select class of internationally strong marks that have become so famous that it is impossible for any person to claim that he was unaware of the prior rights or has a legitimate interest in domain names that incorporate the mark. Secondly, the intent to benefit from the value of the trademark HONDA is irrefutably demonstrated by the Respondent’s use of the domain name to direct traffic to websites offering automobiles for sale in competition with the Complainant and to display pay-per-click advertisements. Thirdly, the use by the Respondent of the disputed domain name to distribute malware is evidence of the Respondent’s bad faith. Fourthly, offering to sell the disputed domain name incorporating the trademark HONDA for a price in gross excess of the Respondent’s out-of-pocket registration costs
constitutes bad faith registration and cybersquatting. Finally, in its amendment to the Complaint, the Complainant argues that the Respondent is a known cybersquatter who has been involved in many UDRP cases and seems to have been engaged in a pattern of registering at least third party trademarks as domain names which is another proof of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel is of the opinion that the Complainant’s contentions are reasoned and that the disputed domain name should be transferred to the Complainant pursuant to the Policy.
A. Identical or Confusingly Similar
The Complainant proves that it has rights in the trademark HONDA based on United States trademark registrations. The term “honda” in the disputed domain name is identical to this trademark. The fact that the disputed domain name contains the term “aircraft” does not alter the conclusion that the disputed domain name is confusingly similar to the trademark HONDA. The main reason is that the term “aircraft” is generic. Furthermore, in the disputed domain name the emphasis therefore lies on the first word, which is “honda” and which is identical to the trademark of the Complainant. The added suffix “.com” does not change the finding that the disputed domain name is confusingly similar, since the suffix “.com” is understood to be a technical requirement. In making the comparison between the trademark and the disputed domain name, the generic Top-Level Domain (“gTLD”) “.com” is disregarded. The Panel is of the opinion that applying these principles to this case, the disputed domain name is confusingly similar to the trademark.
Therefore, the requirement under paragraph 4(a)(i) of the Policy is met.
B. Rights or Legitimate Interests
The Panel is of the opinion that the Complainant made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The first reason is that the Complainant’s trademark is not a term one would choose as a domain name without having specific reasons to choose such a term and this word certainly is not a descriptive term serving to indicate specific characteristics of any goods or services. Furthermore, the disputed domain name was registered long after the Complainant started to use the trademark HONDA. The Panel is convinced that the term “honda” in the disputed domain name has no other meaning except to refer to the Complainant and its businesses, which is proven by the fact that the disputed domain name also redirected to the website of the Complainant. Furthermore, the Respondent is not known by the disputed domain name, has not been authorized by the Complainant to use the trademark HONDA in any way, has no connection or affiliation with the Complainant and has never made any bona fide use of the disputed domain name. On the contrary, it has been convincingly established by the Complainant that the use made of the disputed domain name is illegitimateuse, which as such shows that the Respondent has no rights of legitimate interests. Finally, the Respondent has not come forward claiming any rights or legitimate interests and the Panel does not find so in the present record.
In view of the aforementioned, the Panel is of the opinion that the requirement of paragraph 4(a)(ii) of the Policy is met.
C. Registered and Used in Bad Faith
The Panel is of the opinion that the disputed domain name was registered and is being used in bad faith.
The main reasons for this conclusion are as follows. The trademark HONDA enjoys international fame and consists of a coined term. The intention of the Respondent is to mislead consumers in believing that the disputed domain name is in one way or the other connected to the Complainant and its business. The Respondent is undoubtedly trying to attract, for commercial gain, Internet users and consumers by creating a likelihood of confusion with the Complainant and its business. This intention follows from the fact that the Respondent is using the disputed domain name for a website which refers to the business and products of the Complainant without the Respondent being connected or affiliated in any way whatsoever with the Complainant. The Panel is of the opinion that registration and use of a domain name in connection with such activities constitutes bad faith under the Policy. The intention of the Respondent clearly is to capitalize on the reputation of the Complainant’s trademark. Moreover the Respondent offered to sell the disputed domain name incorporating the trademark HONDA for a price in gross excess of the Respondent’s
out-of-pocket registration costs, which clearly shows the bad faith intentions of the Respondent. This conduct fits in a pattern of conduct of cybersquatting that the Respondent has shown before which was confirmed in a number of previous Panel decisions.
The Panel therefore considers the requirement of paragraph 4(a)(iii) of the Policy to be met.
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 <hondaaircraft.com> be transferred to the Complainant.
Date: June 10, 2018