Complainant is American Honda Motor Co., Inc. of Torrance, California, United States of America, represented internally.
Respondent is Michell Huddleston of High Springs, Florida, United States of America. 2. The Domain Names and Registrars
The disputed domain names and are registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2011. On January 14, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain names. On January 17, 2011, GoD, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the disputed domain names. 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 19, 2011. In accordance with the Rules, paragraph 5(a), the due date for the Response was February 8, 2011. The Response was filed with the Center on February 6, 2011.
The Center appointed Bradley A. Slutsky as the sole panelist in this matter on February 17, 2011. 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.
The appointed Panel subsequently found it necessary to extend the date of his decision to the date indicated (under the Sole Panelists name) in section 7 of the decision. 4. Factual Background
Complainant is a well known auto manufacturer that has used the trademark HONDA for many years. Complainant attached to the Complaint materials indicating that Complainant's United States (“U.S.”) trademark for HONDA dates back to at least 1967 and that Complainant has more than a dozen U.S. trademark registrations for HONDA in various classes.
Respondent is the spouse of a former employee of an authorized Honda dealership, namely, Wade Raulerson Honda. Respondent registered the domain name on May 28, 2008 and registered on September 4, 2010.1 5. Parties’ Contentions A. Complainant
Complainant asserts that it is one of the world's leading automakers, with 2010 fiscal year revenues in excess of USD 92 million. Complainant asserts that the predecessor to its parent company was founded in Japan in 1946, which has many trademark registrations for the mark HONDA. Complainant asserts that it is a wholly owned subsidiary of the Japanese company Honda Motor Co., Ltd. and "has the exclusive right to use trademarks belonging to Honda Motor Co., Ltd. in the U.S. and the right to sue for violations of Honda Motor Co., Ltd.’s rights."
Complainant asserts that dealers are permitted to use the HONDA name in domain names subject to dealer agreements and website compliance guidelines, which include the requirement that the dealer name appear in the domain name.
Complainant asserts that Respondent used the disputed domain names for parked advertising pages that contained advertisements for competitors' car sales. After some correspondence between the parties, these pages were changed to "starter pages" with a disclaimer of affiliation with Complainant (and also with advertising for GoD).
Complainant asserts that Respondent's husband spoke with his former employer about the possibility of transferring the disputed domain names to the dealership in exchange for a car.
Complainant asserts that the disputed domain names consist of Complainant's trademark along with a geographic indicator and thus are confusingly similar to Complainant's HONDA trademark.
Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain names because Respondent is not licensed to use Complainant's marks, is not known by the marks, is not affiliated with Complainant, and has not made a bona fide use of the disputed domain names.
Complainant further asserts that links to competitors' sites on the disputed domain names have been held to be neither legitimate nor fair. Complainant asserts that Respondent was aware of Complainant's trademark rights when Respondent registered the disputed domain names, that Respondent has generated revenue from "sponsored links" on the disputed domain names and that Respondent diverted traffic from Complainant's authorized dealer to competitive websites, all of which Complainant asserts evidences bad faith. B. Respondent
Respondent asserts that Complainant wants the disputed domain names because Complainant plans to change the name of Wade Raulerson Honda to “Honda of Gainesville”. Respondent asserts that she has never used, and has no intent to use, the Honda logo, and that it is deceiving to allow people to register a domain name if it is the subject of trademark rights.
Respondent asserts that she received threatening correspondence from Complainant and was not comfortable responding to it.
Respondent asserts that she purchased the disputed domain names and along with numerous other domain names, several of which also are car-related, in the hopes of owning and operating a business in the future.
Respondent asserts that the "sponsored links" on the disputed domain names were the result of the activities of GoD and that Respondent did not intend to, and did not make any money from the "parked" pages. Respondent further asserts that the domain names were not purchased with the intent to sell them for money, that Respondent was approached several times as part of efforts by others to buy the disputed domain names, and that a dealership salesperson called Respondent's husband to fish for a price for the disputed domain names, at which time Respondent's husband "explained that we were not interested in selling and after being coaxed, jokingly made the statement 'OK, fine, a car for my daughter'."
Respondent alleges that her husband worked for a Honda dealer for nearly 25 years and then "was let go without notice, no severance or reasoning, and was not paid for 155 hours of vacation pay."
Respondent alleges that "we would like to open a used car lot in the area. We would use the domains in question along with several other domains we own in conjunction with this business." 6. Supplemental Pleadings
The parties submitted several pieces of additional correspondence after filing the Complaint and Response. The Panel will admit this correspondence pursuant to Paragraph 10(d) of the Rules, although the Panel notes that it has found many of the points in these submissions are not relevant. 7. Discussion and Findings
Pursuant to paragraph 15(a) of the Rules, panels in UDRP proceedings “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 [they] deem applicable”.
Under paragraph 4(a) of the Policy, Complainant must prove the following:
(i) Respondent’s domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) Respondent’s domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy Complainant must show that the disputed domain names are “identical or confusingly similar to a trademark or service mark in which Complainant has rights”.
The trademark registrations and extensive use described above demonstrate that Complainant has rights in the HONDA mark.
The disputed domain names consist of the HONDA mark with the geographic descriptor "ofgainesville" appended to the end, plus the “.com” and ".net" gTLDs. Prior UDRP panels have found that "[this] Complainant’s trade mark is famous around the globe. The addition of a geographical suffix, therefore, does not sufficiently alter the underlying mark to which it is added." Honda Motor Company Limited v. LOKITA Enterprises,WIPO Case No. D2003-0507; see also American Honda Motor Co., Inc. v. Honda Automobile Company,WIPO Case No. D2007-1558. The addition of the “.com” and ".net" gTLDs also does not remove the confusing similarity between the disputed domain names and Complainant's trademark. Turkcell Iletisim Hizmetleri A.S. v. kara tara,WIPO Case No. D2010-1184 ("the TLD suffix is irrelevant when comparing a disputed domain name to a trademark as the addition of generic top level domains (gTLDs) or country code top level domains (ccTLDs) does not affect the confusing similarity or identity between the domain name and the trademarks in issue").
Accordingly, the Panel finds that the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights, and that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Complainant also must demonstrate that Respondent has “no rights or legitimate interests in respect of the domain name”. Paragraph 4(a)(ii) of the Policy.
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [Respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to [Respondent] of the dispute, [Respondent’s] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) [Respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [Respondent has] acquired no trademark or service mark rights; or
(iii) [Respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Policy, paragraph 4(c).
The Panel finds that there is no evidence in the record that Respondent was making a bona fide use of the disputed domain names before receiving notice of this dispute, or that Respondent has been commonly known by the disputed domain names. Rather, the submissions attached to the Complaint indicate that Respondent was using the disputed domain names in connection with a parked page that advertised goods and/or services that compete with those of Complainant. The sale of competitive products using Complainant’s trademark typically is not considered “bona fide” or “legitimate” or “fair” for purposes of paragraphs 4(a)(ii) or 4(a)(iii) of the Policy. LTD Commodities, LLC v. Nadeem Qadir, NAF Claim No. FA0636445; Interstate National Dealer Services, Inc. v. Selwyn Colley,WIPO Case No. D2003-0934; Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "M",WIPO Case No. D2000-0847 ("use which intentionally trades on the fame of another can not constitute a 'bona fide' offering of goods or services"). UDRP panels have found the posting of a pay-per-click landing page with links to competitors to be inconsistent with a right or legitimate interest. See e.g. Get Away Today.Com Inc. v. Warren Gilbert,WIPO Case No. DCO2010-0021 ("It is well-established that operating a link farm parking page using a service mark in a domain name, and providing connection to services competitive with the service mark owner, does not establish rights or legitimate interests…The fact that Respondent may (or may not) be providing its link farm parking page through passive acceptance of a designation by its registrar GoD, Inc. does not alter the impact on Complainant from the standpoint of diversion of prospective customers.").
Respondent asserts that she and her husband (a former employee of an authorized Honda dealership) "would use the domains in question along with several other domains we own in conjunction with this [proposed used car] business", and notes that "[i]t would be a representation of our used car business and represent various used vehicles." As Respondent acknowledges, one of the "several other domains" Respondent has registered is .
Section 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, states that the "majority view" of such a scenario is that:
“Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder. The respondent must also not try to "corner the market" in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data2 principles. Pay-per-click (PPC) websites would not normally fall within such principles where such websites seek to take unfair advantage of the value of the trademark.”
In this case the Respondent has not actually offered used cars using the disputed domain names, and the Panel finds that these requirements have not been met here.
Moreover, the Panel notes that there is significant case law in the United States that indicates even if Respondent had offered used cars using the disputed domain names, doing so might constitute trademark infringement. For example, Volvo Trademark Holding AB v. Volvospares / Keith White,WIPO Case No. D2008-1860 is a UDRP case that followed the majority view in finding that the Respondent – who allegedly used the domain name to sell parts for Volvo cars – had rights or legitimate interests in the disputed domain name. However, that dispute was subsequently litigated in District Court and Volvo Trademark Holding AB, the original complainant, prevailed on summary judgment. Volvo Trademark Holding AB v. V, 703 F.Supp.2d 563 (E.D. Va. 2010). In the District Court case, the Judge ruled that the use of the domain to "display[] images of Volvo automobiles and advertise[] the sale of 'new, used, and reconditioned Volvo parts'" constituted "bad faith with intent to profit from use of the VOLVO mark in " and transferred the domain name to Volvo Trademark Holding AB.
There are a number of American trademark decisions that are consistent with the Virginia District Court's holding. For example, there is a body of law that prohibits terminated franchisees from continuing to use franchisor trademarks as part of their business name. See, e.g., Century 21 Real Estate Corp. v. Sandlin, 846 F.2d 1175, 1182 (9th Cir. 1988) ("The likelihood of confusion created by use of the word 'Century' by a former Century 21 franchisee operating in the same line of business and in the same locale justified the summary judgment and injunction against Sandlin's use of the name Century Investments & Realty"). Similar principles apply to resellers of genuine goods. See, e.g., Caterpillar Inc. v. Telescan Technologies, L.L.C., 2002 WL 1301304 at *5 (C.D. Ill. 2002) ("the first sale doctrine flounders where the plaintiff manufacturer has an established network of authorized dealers and defendant's activity misleads consumers into thinking that defendant is part of that network. Here, TeleScan's use of the Caterpillar Marks in the disputed domain names and the claims that the disputed web sites were 'A Listing Service of Caterpillar Equipment' is likely to cause confusion beyond mere resale.)(internal citations omitted); Porsche Cars North America, Inc. v. Manny’s Porshop, Inc., 972 F. Supp. 1128 (N.D. Ill. 1997) (enjoining use of “Porshop” for a Porsche repair shop due to likelihood of trademark infringement and dilution); Volkswagenwerk Aktiengesellschaft v. Karadizian, 170 U.S.P.Q. 565 (C.D. Cal. 1971) (holding that, by selling cars under the name “Volkswagen Village,” the defendant infringed and diluted Volkswagen’s trademarks and committed unfair competition”). Even the recent decision of Toyota Motor Sales, USA, Inc. v. Tabari, 610 F.3d 1171 (9th Cir. 2010), which observed that it is possible for a reseller of genuine goods to make nominative fair use of a trademark in a domain name, stated that "[s]ites like trademark-USA.com, or will also generally suggest sponsorship or endorsement by the trademark holder…a location modifier following a trademark indicates that consumers can expect to find the brand's local subsidiary, franchise or affiliate." Id. at 1179.
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain names, and that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
Complainant also bears the burden of establishing that the “domain name has been registered and is being used in bad faith”. Policy, paragraph 4(a)(iii). As set forth in the Policy, paragraph 4(b):
“[T]he following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [Respondent has] registered or [Respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [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 [Respondent has] engaged in a pattern of such conduct; or
(iii) [Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.”
Complainant asserts that elements of bad faith are present. Respondent asserts that she had no intent of selling the disputed domain names and that the statement about trading them for a car was made in jest and after Complainant's husband was coaxed into proposing a sale. Complainant also asserts that the paid links on Respondent’s "parked pages" satisfy bad faith factors (iii) and/or (iv). Certainly there are many decisions to support this assertion. See, e.g., Hoffmann-La Roche Inc. v. Kevin Chang,WIPO Case No. D2008-1344. Respondent asserts that this was due to the standard practices of GoD and that Respondent did not intend to, and did not, make any money from this practice. The Panel finds that Respondent was aware that these competitive links were displayed for some time, however, and chose to allow the pages to display in that manner when other options were available (as evidenced by Respondent's later activities in directing the disputed domain names to "starter pages"). Under these circumstances, Respondent is responsible for these activities, which do amount to bad faith. Grundfos A/S v. Texas International Property Associates,WIPO Case No. D2007-1448.
The bad faith factors listed above are not exclusive, and Complainant asserts that the registration of domain names using a famous trademark such as HONDA also constitutes bad faith. Complainant may overstate the import of the decisions on this point in its Complaint. See American Honda Motor Co., Inc. v. Honda Automobile Company,WIPO Case No. D2007-1558. However, as noted by the panel in Honda Motor Co., Ltd. v. Import 3000, Oscar Alberto Garcia Sandez,WIPO Case No. D2010-0905:
"Taking into consideration the registration of the HONDA trademark around the world, the nature of Complainant's products and the prolonged use and exposure of the HONDA trademark, it is clear that Respondent should have been fully aware of the existence of Complainant's trademark at the time it obtained the registration of the disputed domain name. The use of the disputed domain name for a website that is used to market products of Complainant's competitors constitutes an improper use of Complainant's mark and is evidence of Respondent's bad faith."
In the present case, there can be no serious doubt that the Respondent (the wife of a former employee of an authorized Honda dealership) was aware of the HONDA trademark when she registered the disputed domain names. Further, she has claimed, but not substantiated, that the disputed domain names were registered for the purpose of operating a used car dealership with her husband.
The Panel finds that the only evidenced use made of the disputed domain names (paid links) clearly constitutes bad faith, and the only intended use stated by Respondent (starting a used car sales business) has been held to be infringing (see Volvo Trademark Holding AB v. V, 703 F.Supp.2d 563 (E.D. Va. 2010); Caterpillar Inc. v. Telescan Technologies, L.L.C., 2002 WL 1301304 (C.D. Ill. 2002); Porsche Cars North America, Inc. v. Manny’s Porshop, Inc., 972 F. Supp. 1128 (N.D. Ill. 1997); Volkswagenwerk Aktiengesellschaft v. Karadizian, 170 U.S.P.Q. 565 (C.D. Cal. 1971); cf. Toyota Motor Sales, USA, Inc. v. Tabari, 610 F.3d 1171 (9th Cir. 2010)) and thus also may give rise to bad faith. American Honda Motor Co. Inc. v. Auto of St. Louis, JIM FEENEY,WIPO Case No. D2010-0541(finding bad faith in light of Respondent's "business plan of using the disputed domain names to allow consumers seeking to buy or sell used Honda cars").
Finally, the fact that Respondent registered two domain names that are confusingly similar to a trademark in which Complainant has rights adds to the evidence of bad faith. Bayer Schering Pharma AG v. New World Express LLC,WIPO Case No. D2010-1387.
Accordingly, the Panel finds that the present record supports a conclusion that the disputed domain names have been registered and used in bad faith, and that paragraph 4(a)(iii) of the Policy is satisfied. 8. 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 disputed domain names, and , be transferred to Complainant.
Bradley A. Slutsky
Sole Panelist
Dated: April 1, 2011
1 Respondent also acknowledges registering , which was registered on September 7, 2010.
2 Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No.D2001-0903.
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