WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
American Honda Motor Co., Inc. v. Peg Creonte
Case No. D2019-2245
1. The Parties
The Complainant is American Honda Motor Co., Inc., United States of America (“United States”), represented by Phillips & Wilkins Solicitors, United States.
The Respondent is Peg Creonte, United States.
2. The Domain Name and Registrar
The disputed domain name <ahmhonda.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2019. On September 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 17, 2019, 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 September 23, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 13, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 14, 2019.
The Center appointed Colin T. O’Brien as the sole panelist in this matter on October 22, 2019. 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 a wholly owned subsidiary of Honda Motor Company Limited (“Honda”), a Japanese corporation founded in 1948 and has exclusive authority to use and enforce Honda’s trademarks in the United States. In 1959, Honda began selling goods in the United States. Today, Honda is the world’s largest motorcycle manufacturer, the world’s largest engine maker and one of the world’s leading automakers.
Complainant has had federal trademark rights in the HONDA mark for over fifty years (United States trademark registration No. 826779 for HONDA, registered April 4, 1967). Honda has devoted considerable effort and expense to promoting its HONDA marks throughout the world, and the HONDA trademark is consistently ranked among the most valuable global brands by organizations such as Interbrand. Numerous UDRP panels have recognized that HONDA is a well-known mark. See, e.g., American Honda Motor Co., Inc. v. Domain Admin, Private Registrations Aktien Gesellschaft, WIPO Case No. D2012-2185 (HONDA mark in use in the United States for over 40 years); American Honda Motor Co., Inc. v. Honda Automobile Company, WIPO Case No. D2007-1558 (HONDA mark unquestionably famous); American Honda Motor Co. Inc. v. Henriquez, WIPO Case No. D2018-0787 (May 24, 2018) (transferring <usedhondaelpaso.com>) (“The Complainant has also submitted evidence that the HONDA mark is known globally in connection with its products, including products ranging from small, general purpose engines and scooters to specialty sports cars, personal watercraft, and jet airplanes”).
Complainant commonly uses the “AHM” abbreviation for “American Honda Motor,” and employees of American Honda Motor use email addresses formed by adding “ahm” as a subdomain preceding the second-level domain “honda” and the top-level domain “.com,” such as […]@ahm.honda.com.
Respondent registered the Disputed domain name <ahmhonda.com> on July 16, 2019 (Exhibit A)—long after Complainant had been using its famous HONDA mark in the United States. Currently the disputed domain name resolves to a website that displays pay-per-click (“PPC”) advertising links to Honda competitors such as Yamaha, Suzuki, and Toyota.
Respondent has set up an email account associated with <ahmhonda.com>and begun sending emails to auto dealers purporting to be from American Honda FinanceCorporation (“AHFC”), a wholly-owned subsidiary of American Honda that provides financing for consumers buying or leasing Honda vehicles, five directing such dealers to send payments to AHFC, such as payoff amounts due in connection with the purchase of leased vehicles, to bank accounts controlled by Respondent. The emails were spoofed by Respondent to appear to be coming from <ahm.honda.com> email addresses.
On August 16, 2019, Honda’s outside counsel delivered a demand letter to Respondent via email and United States mail, using the contact information in the WhoIs record, objecting to Respondent’s registration of the Disputed domain name <ahmhonda.com> and use of the Disputed domain name to spoof American Honda email addresses and demanding that Respondent stop using the domain name and transfer the registration to Honda.
Respondent did not reply to the demand letter nor was the address listed in the WhoIs report accurate.
5. Parties’ Contentions
Complainant contends that the Disputed domain name is confusingly similar because it wholly incorporates Honda’s registered HONDA trademark, combined with “ahm” in virtually the same manner that Honda combines “ahm” with “Honda” to create email addresses for American Honda employees.
Complainant contends that Respondent has no rights or legitimate interest in <ahmhonda.com>because Respondent is not known by the Disputed domain name, has not been authorized by Honda to use the Honda Marks in any way, has no connection or affiliation with Honda, and has never made any bona fide use of the domain name.
Complainant contends the only use of the Disputed domain name has been illegitimate namely Respondent has used the Disputed domain name in connection with both a phishing scheme and in connection with a website that displays advertising links for motorcycle and automobile dealers of Honda’s competitors Yamaha, Suzuki, and Toyota.
Complainant contends there is no possibility that Respondent has engaged in demonstrable preparations to use <ahmhonda.com>in connection with a bona fide offering of goods and services pursuant to Policy paragraph 4(c)(i). Other than Respondent’s registration and use of the Disputed domain name, Honda has found no evidence of any person or entity using the name “AHM Honda,” and any such use would infringe and dilute the Honda Marks, as American Honda has the exclusive right to use that business name or variants of that name.
Complainant contends that the Respondent has registered and used the Disputed domain name in bad faith. Complainant states Respondent’s bad faith is established by the fact 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 HONDA trademark was registered with the United States Patent and Trademark Office long prior to Respondent’s registration of the Disputed domain name and since the HONDA trademark is well-known and famous; the unique combination of “ahm” and “honda” is otherwise inexplicable; the Disputed domain name is used to resolve to a website advertising competing automobiles and motorcycles for sale via PPC advertising links; using the Disputed domain name to use of the domain name to send spoofed emails for phishing activities; and, using an invalid mailing address in the WhoIs information.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant has demonstrated it owns registered trademark rights in the famous HONDA in the United States and worldwide. The addition of the abbreviation “ahm” is insufficient to avoid confusion particularly given the fact “ahm” is a known abbreviation of American Honda Motors and is used by American employees of Honda for email addresses.
The Panel finds that the Disputed domain Name is confusingly similar to the Complainant’s HONDA Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Complainant has presented a prima facie case that Respondent has no rights or legitimate interests in respect of the Disputed domain name; has not at any time been generally known by the Disputed domain name; has not used or made demonstrable preparations to use the Disputed domain name and is not making a legitimate noncommercial of fair use of the Disputed domain name. Complainant has also presented prima facie evidence Respondent has attempted to illegitimately deceive Honda dealers that it is associated with Honda to phish funds from unsuspecting parties.
After a complainant has made a prima facie case, the burden of production shifts to the respondent to present evidence demonstrating rights or legitimate interests in the domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
Here, Respondent has provided no evidence of any right or legitimate interest in the Disputed domain name.
In the absence of any evidence indicating a legitimate reason for registering the Disputed domain name, the Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Pursuant to Policy, paragraph 4(a)(iii), in order to be granted relief, Complainant must show that the Disputed domain name was registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets forth the following non-exhaustive grounds of bad faith registration and use:
(i) circumstances indicating that you [the respondent] have 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 your [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) you [the respondent] have 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 you [the respondent] have engaged in a pattern of such conduct; or
(iii) you [the respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you [the respondent] have intentionally attempted to attract, for commercial gain, Internet users to your [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your [the respondent’s] website or location or of a product or service on your [the respondent’s] website or location.
The Panel finds that Complainant has satisfied its burden of proof in establishing Respondent’s bad faith registration and use. Paragraph 4(b)(iv) states that evidence of bad faith may include a respondent’s use of a domain name to intentionally attempt to attract, for commercial gain.
Due to the worldwide renown of the HONDA mark, it is inconceivable that Respondent registered the Disputed domain name without knowledge of Complainant.
Currently, the Disputed domain name resolves to the Registrar’s landing page with PPC links offering goods competing with Complainant. See section 3.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Complainant has also submitted evidence that Respondent has used the Disputed domain name to send emails to Honda dealers in an effort to phish. This is clearly indicative of bad faith on the part of Respondent.
In the absence of any evidence or explanation from Respondent, the Panel finds that the only plausible basis for registering the Disputed domain name has been for illegitimate purposes.
Accordingly, the Panel concludes that Complainant has satisfied 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 <ahmhonda.com> be transferred to Complainant.
Colin T. O’Brien
Date: November 3, 2019