WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION American Honda Motor Co. Inc. v. Auto of St. Louis, JIM FEENEY Case No. D2010-0541 1. The Parties
Complainant is American Honda Motor Co. Inc. of California, United States of America, represented by the law firm Howard, Phillips & Andersen, United States of America.
Respondent is Auto of St. Louis, JIM FEENEY, of Missouri, United States of America, internally represented. 2. The Domain Names and Registrar
The disputed domain names, listed below, are registered with GoD, Inc.:
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The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2010. On April 14, 2010, an amendment to the Complaint was received by the Center, adding five of the disputed domain names. On April 12 and 15, 2010, the Center transmitted to GoD, Inc. email requests for registrar verification in connection with the disputed domain names. On April 13 and 16, 2010, GoD, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant for each of the disputed domain names and providing the contact details
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 21, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 11, 2010, and the Response was filed with the Center on that date.
The Center appointed Richard G. Lyon as the sole panelist in this matter on May 20, 2010. The Panel finds that it was properly constituted and has jurisdiction over this administrative proceeding. The Panel has submitted his 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 one of the world's leading automobile manufacturers, with worldwide revenues of more than USD 100 billion in fiscal year 2009. Honda holds many registrations for trademarks that incorporate the word “Honda”, in the United States of America and many other countries around the world.
Respondent has been in the business of buying and selling used automobiles since 1985 and opened an entity in that business in the St. Louis, Missouri area in 2002. Among other places, Respondent works in the Frontenac area of St. Louis, a wealthy suburb. According to the Response, Respondent registered the disputed domain names in April, June, and July 2009 “to attract used car Honda buyers and sellers”, adding “the geographical indicator Frontenanc … because of its wealthy geographical status in the St. Louis, Missouri area”.
The parties corresponded by electronic mail and telephone in November and December 2009. Complainant initiated this correspondence, pointing out that Respondent was not authorized to use Honda's trademarks and requesting transfer of some or all of the disputed domain names. In this correspondence Respondent offered to sell some of the disputed domain names to Complainant.
The disputed domain names initially resolved to a website at which Respondent solicited owners of used Honda automobiles who were interested in selling those vehicles. After receiving Complainant's cease-and-desist letter Respondent changed the content of the website, now focusing upon “Honda's intent to take [Respondent] to court!” The screen shot submitted with the Complaint includes a photograph of a Honda automobile followed by Respondent's description of the dispute that is now before the panel. 5. Parties' Contentions A. Complainant
1. Complainant has enforceable rights in its Honda marks by reason of their registration with the United States Patent and Trademark Office. These marks are famous in the trademark sense and each of the disputed domain names has as its dominant feature the word Honda.
2. Complainant has never authorized Respondent to use its marks and Respondent has never been known by any business name that incorporates the word Honda. While Respondent filed fictitious business name registrations with state authorities in Missouri, these do not confer upon Respondent any right to use Complainant's name and are in fact pretextual.
3. Respondent registered and used the disputed domain names in order to attract customers in the used car business. In so doing Respondent has used that mark to attract customers seeking Complainant to Respondent's website for commercial gain. Respondent's offers to sell some of the disputed domain names constitute additional evidence of bad faith. B. Respondent
Respondent contends as follows:
1. Respondent acknowledges the renown of Complainant and its marks but denies confusing similarity. Respondent's website has clearly identified Respondent, not Complainant, and the site's contents make clear that Respondent has no affiliation with Complainant.
2. Respondent's 2009 business plan of using the disputed domain names to allow consumers seeking to buy or sell used Honda cars is entirely legitimate. Respondent, which is active in the automotive business, has often bought and sold Honda automobiles and has a right to make use of the disputed domain names for this reason. The names were available under the “first come, first served” premise of the Policy. Respondent also claims his criticism of Complainant is a legitimate exercise of its “freedom of speech rights” under the First Amendment to the Constitution of the United States.
3. For similar reasons, Respondent's registration and use of the disputed domain names have not been in bad faith. Respondent has been active in the business community in St. Louis, including the Frontenac area, for twenty-five years, and its use of the geographical indicator similarly is not in bad faith; rather it describes one of the areas of particular interest to Respondent in which Respondent's business has been promoted. 6. Discussion and Findings A. Identical or Confusingly Similar
Complainant has plainly met the requirements of paragraph 4(a)(i) of the Policy. Complainant's marks have been registered and used in the United States long before the registration of the disputed domain names, and each of the disputed domain names includes the word Honda as its dominant feature. Furthermore, Respondent, itself active in the automobile business, was admittedly well aware of Complainant, Complainant's marks, and the commercial appeal of those marks. B. Rights or Legitimate Interests
Respondent has every right, like any other consumer or business, to buy and sell Honda automobiles. That right however is not relevant to this administrative proceeding; what is at issue here is whether Respondent has the right to use Complainant's marks as a dominant feature of the disputed domain names. As to that, the answer is clear. Complainant has never authorized any such use, and Respondent provided no evidence that it was commonly known by any business name that included the word Honda. Respondent's use of the disputed domain names is not legitimate under the Policy. Until notice of this dispute Respondent's use was undeniably commercial, and undeniably made use of Complainant's marks to attract consumers to Respondent's business.
Changing the content of the website of the disputed domain names to criticism of Complainant and a forum to air online Respondent's complaints about Complainant's treatment of Respondent does not legitimate Respondent's use of the disputed domain names. First, as Complainant notes, such content appeared only after Complainant wrote to Respondent demanding transfer of the disputed domain names. The Panel looks to pre-notification content, with notice occurring with the cease-and-desist letter, not the filing of the Complaint. See Corinthians Licenciamentos LTDA v. David Sallen, Sallen Enterprises, and J. D. Sallen Enterprises,WIPO Case No. D2000-0461.
Even if relevant, the website's post-notification content would not create a legitimate interest. This Panel subscribes to View 1 of paragraph 2.4 of the WIPO Overview that “The right to criticize does not extend to registering a domain name that is identical or confusingly similar to the owner's registered trademark or conveys an association with the mark,” unless the disputed domain name itself is a clear exercise of free speech by including a well-recognized derogatory or similarly descriptive term. Paul McMann v. J McEachern,WIPO Case No. D2007-1597; Joseph Dello Russo M.D. v. Michelle Guillaumin,WIPO Case No. D2006-1627. Here there is no such issue.
Accordingly, the Panel finds that in the circumstances of the present case, the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For similar reasons, the Panel finds Respondent's registration and use of disputed domain names have been undertaken in bad faith. Respondent admits as much in the message from the Response quoted above. Again the Panel distinguishes between the legitimacy of Respondent's business, which no one contests, and the legitimacy of Respondent's right to make use of Complainant's famous trademark without permission in its business name and in the disputed domain names. By its own statement, Respondent “has by using the domain name, . . . intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [its] web site or location or of a product or service on [its] web site or location.” Policy, paragraph 4(b)(iv). 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, listed below be transferred to the Complainant:
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Richard G. Lyon
Sole Panelist
Dated: June 3, 2010
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