Complainant is American Honda Motor Co., Torrance, California, United States of America represented by White & Case, LLP, United States of America.
Respondent is Maguire Automotive Group of Bordentown, New Jersey, United States of America. 2. The Domain Name and Registrar
The disputed domain name (“Disputed Domain Name”) is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2011 and named Domains by Proxy, Inc. as Respondent. On October 25, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the Disputed Domain Name. On October 25, 2011, GoD, Inc. 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 Complainant on October 27, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amended Complaint. Complainant filed an amended Complaint on November 1, 2011, naming Maguire Automotive Group as Respondent. The Center verified that the Complaint, together with the amended 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 November 3, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 23, 2011. An email communication from Respondent was received by the Center on November 2, 2011. The email provided updated contact information, but did not address the merits of the Complaint.
The Center appointed Michael A. Albert as the sole panelist in this matter on December 2, 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. 4. Factual Background
Complainant American Honda Motor Co., Inc., a California corporation, is the American subsidiary of Honda Motor Co., Ltd., a Japanese company that was founded in 1946. Together with its subsidiaries, Honda Motor Co. is one of the world’s leading and most well-known automakers. Complainant, American Honda Motor Co. Inc., was founded in 1959 as Honda Motor Co.’s first overseas subsidiary.
Complainant owns dozens of trademark registrations related to its HONDA trademark. These registrations date back as far as 1967. See United States Patent and Trademark Office Reg. No. 826779. More recently, Honda Motor Co., Ltd. obtained registration for the HONDA trademark on October 26, 2010. See United States Patent and Trademark Office Reg No. 3867580.
As Complainant observes, and Respondent does not dispute, UDRP panels have found that Complaint’s trademark rights in HONDA are well-established worldwide. See, e.g., Honda Motor Company Limited v. LOKITA Enterprises,WIPO Case No. D2003-0507 (listing 26 countries in which Complainant has obtained registrations for HONDA and ordering transfer of ).
In addition to maintaining , Complainant authorizes Honda dealers to use domain names that include the HONDA trademark. Complainant has one authorized dealer in Hamilton County, New Jersey, which operates under the trade name Hamilton Honda. Hamilton Honda attempted to register the domain name , but was unable to do so because the domain name was already registered to Respondent. The Hamilton Honda dealer registered the domain name , which the Hamilton Honda dealer uses to promote Honda products and services.
Respondent attempted to become a Honda dealer for Hamilton County in 2003, but Respondent’s bid was ultimately rejected by Complainant in 2004. Respondent registered the Disputed Domain Name on or about October 22, 2008.
At present, the Disputed Domain Name resolves to a website that reads, “Sorry! This site is not currently available.” Previously, the Disputed Domain Name had resolved to a website with links to “Sponsored Listings.” These listings included links to websites maintained by Complainant’s competitors, such as Audi, Lexus, and Chevrolet.
Respondent did not file a response to Complainant’s contentions in these proceedings. However, Respondent submitted an informal email communication to the Center on November 2, 2011. The Center notified the Parties on November 24, 2011 of the commencement of the Panel appointment process. 5. Parties’ Contentions A. Complainant
Complainant contends that under paragraph 4(a)(i) of the Policy the Disputed Domain Name is confusingly similar to its HONDA trademark because it incorporates the HONDA trademark in its entirety and merely adds “hamilton,” a “geographical identifier.” Complainant argues the addition of a geographic identifier creates the impression that the Disputed Domain Name belongs to an authorized dealer for the region. Complainant contends that the risk is even more pronounced here, where the authorized dealer owns and uses a domain name that differs only from the Disputed Domain Name in that it operates at a .net gTLD.
Complainant contends that under paragraph 4(a)(ii) of the Policy Respondent has no rights or legitimate interests in the Disputed Domain Name. Complainant maintains that Respondent has not used the Disputed Domain Name in connection with the bona fide offering of goods or services, and that Respondent is not commonly known by the name “hamiltonhonda.” Complainant avers that Respondent is not, and never has been, associated with Complainant or licensed to use the HONDA trademark. Complainant argues that Respondent applied to become a Honda dealer for Hamilton County in 2003 and that its bid was expressly rejected.
Finally, Complaint argues that under paragraph 4(a)(iii) of the Policy Respondent registered and is using the Disputed Domain Name in bad faith. Complainant notes that Respondent registered the Disputed Domain Name in October 2008, more than four years after Respondent was not selected as a Honda dealer for Hamilton County and that Respondent’s registration of the Disputed Domain Name has prevented the legitimate Hamilton County Honda dealer from using the Disputed Domain Name. In addition, Complainant contends that Respondent previously used the Disputed Domain Name to offer links to websites selling goods and services unrelated to the Disputed Domain Name. Some of the links, Complainant maintains, were to websites of competing automakers. B. Respondent
Respondent did not reply to Complainant’s contentions. On November 2, 2011, Respondent emailed the Center updating its contact information. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Respondent provided no formal Response, and the deadline for doing so expired on November 23, 2011. Accordingly, Respondent is in default. Given Respondent’s default, the Panel may infer that Complainant’s allegations are true where appropriate to do so. Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Nonetheless, Complainant retains the burden of proving the three requisite elements of paragraph 4(a) of the Policy. A. Identical or Confusingly Similar
Complainant provides sufficient evidence that it is the owner of a valid United States trademark (offered into evidence as Exhibit 4 to the Complaint). T, Inc. v. Daniel Deamone,WIPO Case No. D2001-1066 ([R]egistration of a mark is prima facie evidence of validity [. . . .] Respondent has the burden of refuting this assumption.”). Respondent has provided no evidence to refute the conclusion that Complainant possesses valid and enforceable trademark rights.
The Disputed Domain Name, however, is not identical to the HONDA trademark. Therefore, the first issue is whether the Disputed Domain Name is confusingly similar to the HONDA trademark.
The Disputed Domain Name combines three elements: (1) Complainant’s HONDA trademark; (2) the word “Hamilton”, and (3) the suffix “.com.” The relevant comparison to be made is with the second-level portion of the Disputed Domain Name (i.e., “hamiltonhonda”), as it is well established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose. Playboy Enterprises International, Inc. v. John Taxiarchos,WIPO Case No. D2006-0561.
In this case, the addition of the term “hamilton” does not mitigate the confusing similarity between the Disputed Domain Name and the HONDA trademark because the term “hamilton” is geographically descriptive. The term “hamilton” is particularly misleading here because there is a legitimate Honda dealer operating within Hamilton County, New Jersey, under the trade name Hamilton Honda and using the domain name . See Dell Computer Corporation .v. MTO C.A. and Diabetes Education Long Life,WIPO Case No. D2002-0363 (finding to be confusingly similar to DELL); Telstra Corporation Limited v. Ozurls,WIPO Case No. D2001-0046 (finding to be confusingly similar to TELSTRA).
For all of the foregoing reasons, this Panel finds that the Disputed Domain Name is confusingly similar to Complainant’s HONDA trademark in which Complainant has established rights. Therefore, the Panel finds that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Under the Policy, paragraph 4(c), rights or legitimate interests in a domain name may be demonstrated by showing that:
(i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services;
(ii) Respondent has been commonly known by the domain names, even if no trademark or service mark rights have been acquired; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.
Complainant contends that Respondent has no rights to use the HONDA trademark. Complainant has alleged, and Respondent has not denied, that Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services, is not commonly known by the Disputed Domain Name, and is misleading customers for commercial gain.
For all of the foregoing reasons, this Panel finds that Complainant has proven that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. Therefore, the Panel finds Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances of the registration and use of a domain name in bad faith. One of the illustrations of bad faith under paragraph 4(b)(iv) of the Policy occurs when a respondent attempts to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with complainant’s mark(s) as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or of a product or service offered on the respondent’s website.
It is well established that using a domain name that incorporates a trademark to offer the products of competitors of the trademark owner is likely to cause confusion among consumers as to the source of products or to confusingly suggest sponsorship by the trademark owner, and is evidence of bad faith. See Six Continent Hotels, Inc. v. The Omnicorp,WIPO Case No. D2005-1249; Exel Oyj v. KH Trading, Inc.,WIPO Case No. D2004-0433. Here, un-rebutted evidence offered by Complainant shows that Respondent has used the Disputed Domain Name to attract Internet users to click on sponsored links to websites that offer products sold by competitors.
Furthermore, the Panel finds that Respondent knew of Complainant and Complainant’s HONDA trademark when it registered the Disputed Domain Name. Complainant has been using its HONDA trademarks for decades and has trademark registrations throughout the world for HONDA. Further, Complainant has asserted, and Respondent has not refuted, that Complainant has well-established rights in the HONDA trademarks and that these trademarks are well-known trademarks. Indeed, Respondent had applied to become a dealer for Complainant in Hamilton County. Taken together, these facts make it likely that Respondent registered the Disputed Domain Name even though he knew of Complainant’s mark.
Respondent’s knowledge of Complainant and Complainant’s HONDA trademark is strong evidence of bad faith. Based on the foregoing, the Panel finds that Respondent registered the Disputed Domain Name in bad faith. See Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415 (“It defies common sense to believe that Respondent coincidentally selected these precise domain names without any knowledge of Complainant and its [. . .] trademarks.”); Société Air France v. R Blue,WIPO Case No. D2005-0290 (“Respondent must have been aware of the Complainant’s trademarks while registering the domain name in dispute. This finding leads to the conclusion that the domain name in dispute has been registered in bad faith.”)
For all of the foregoing reasons, this Panel finds that Complainant has proven that Respondent registered and is using the Disputed Domain Name in bad faith. Therefore, the Panel finds that Complainant has proven the third and final element of the Policy. 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 Disputed Domain Name be transferred to Complainant.
Michael A. Albert
Sole Panelist
Date: December 13, 2011
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