Complainant is American Honda Motor Co., Inc. of Torrance, California, United States of America, represented by Phillips Ryther & Winchester, United States of America.
Respondent is Honda Annapolis, Waldorfhonda of Sunnyvale, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Melbourne IT Ltd (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2014. On March 31, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 2, 2014, 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 Complainant submitted an amendment to the Complaint on April 4, 2014.
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 Respondent of the Complaint, and the proceedings commenced on April 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 28, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 30, 2014.
The Center appointed Sandra A. Sellers as the sole panelist in this matter on May 5, 2014. 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
Honda is the world’s largest manufacturer of motorcycles and engines, and one of the leading automobile makers. It also develops, manufactures and distributes a wide variety of other transportation-related products. Honda began in 1946 in Japan. In 1959, American Honda Motor Co., Inc. was established as Honda’s first overseas subsidiary. Approximately 84% of Honda automobiles sold in the US are manufactured in North America. Honda has other manufacturing facilities located in 19 countries. Worldwide sales for 2009-2013 were over USD four billion.
New and used HONDA automobiles are sold through a network of authorized HONDA dealers, which are often referred to by names comprised of “Honda” and the city or geographic area in which the dealership is located. Waldorf Honda is the name of a new HONDA dealership located in Waldorf, Maryland.
Honda holds many federal trademark registrations for HONDA and marks that incorporate HONDA. Honda obtained its first US Registration in 1967. The HONDA mark is an internationally famous trademark, as recognized in Business Week’s “100 Most Valuable Global Brands.” Other UDRP decisions have recognized that the HONDA mark is famous.
Respondent registered the disputed domain name on January 13, 2011. The disputed domain name has never been used.
On March 2, 2014, Complainant’s counsel emailed a demand letter to Respondent and asked Respondent to transfer the disputed domain name to Complainant. In response, My Private Registration sent an email stating that, to ensure delivery, a form needed to be completed. Complainant provided the required information. To ensure receipt by Respondent, Complainant submitted the information again on March 3, 2014. Respondent did not reply. On March 17, 2014, Counsel sent a third message to Respondent warning that Complainant may file a lawsuit if Respondent failed to respond by March 18, 2014. Respondent never replied. 5. Parties’ Contentions A. Complainant
Complainant asserts that it has rights in the HONDA trademark. It contends that the disputed domain name is confusingly similar to Complainant’s mark because it consists of Complainant’s HONDA mark in its entirety, and the addition of Waldorf, a city in which Complainant’s dealer, Waldorf Honda, is located. Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain name, and that it registered and uses the disputed domain name in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is 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 name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
As set forth above, Complainant holds many federal trademark registrations for HONDA and marks that incorporate HONDA. The HONDA mark is an internationally famous trademark, as recognized in Business Week’s “100 Most Valuable Global Brands.” Other UDRP decisions have recognized that the HONDA mark is famous.
The disputed domain name is confusingly similar to Complainant’s HONDA mark. It contains Complainant’s HONDA mark in its entirety. The only difference between Complainant’s mark and the disputed domain name is the addition of the word “Waldorf”, which is the location of one of Complainant’s dealerships, Waldorf Honda. Numerous previous UDRP decisions have held that the addition of a geographical indication is likely to be interpreted by Internet users as describing the geographical origin of Complainant’s products or services and that Complainant is operating or doing business in such area. See Kabushiki Kaisha Toshiba dba Toshiba Corporation v. WUFACAI, WIPO Case No. D2006-0768; LEGO Juris A/S v. Budi Irshandi / Cha Licious,WIPO Case No. D2012-2343 (for “uk”); Karen Millen Fashions Limited v. Australia Karen Millen, Linde Meredith, WIPO Case No. D2012-2376 (for“au”).
Accordingly, the Panel finds that Complainant has rights in the HONDA mark and that the disputed domain name is confusingly similar to Complainant’s mark. Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Because it is generally difficult for a complainant to prove the fact that a respondent does not have any rights or legitimate interests in a disputed domain name, previous UDRP panels have found it sufficient for a complainant to make a prima facie showing of its assertion where there has been no response.
Complainant has exclusive rights in the HONDA mark and has not authorized Respondent to register and use the disputed domain name . Respondent is not affiliated with or related to Complainant, nor is Respondent licensed or authorized to use the HONDA mark. Respondent has made no showing that it is known by the disputed domain name, nor that it has any legitimate interest in using the disputed domain name or that it is making a bona fide offering of goods or services using the disputed domain name. On the evidence before the Panel, Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name.
The Panel is satisfied that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in the disputed domain name.
Respondent is in default, and has not provided any evidence in its own favor.
The Panel finds that the evidence in the record is sufficient to establish that Respondent has no rights or legitimate interests in the disputed domain name, and thus Complainant meets the second criterion of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
It is difficult to conceive that Respondent did not know of Complainant’s marks and products when Respondent registered the disputed domain name. As set forth above, the HONDA mark is famous. This Panel therefore infers that Respondent was aware or must have been aware of Complainant’s mark when Respondent registered the disputed domain name, and therefore registered it in bad faith. See, e.g., Jupiters Limited v. Aaron Hall,WIPO Case No. D2000-0574, in which the panel found it “inevitable that [r]espondent registered the domain names in full knowledge of [c]omplainant’s rights and interests”.
Additionally, under 15 USC §1072, registration of the HONDA mark constitutes constructive notice of the mark. Respondent therefore had legal, if not actual, notice of Complainant’s mark prior to registering the disputed domain name.
The disputed domain name reverts to an inactive web page. However, the circumstances identified in paragraphs 4(b)(i), (ii) and (iii) of the Policy can be found in a situation involving a passive holding of the domain name registration. Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003. In Telstra, the Panel considered the specific circumstances of the case, including the following:
(i) the Complainant’s trademark has a strong reputation and is widely known;
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name;
(iii) the Respondent has taken active steps to conceal its true identity;
(iv) the Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement; and
(v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate.
Each of these factors has been met. Complainant’s HONDA mark is famous. Respondent has provided no evidence in its defense. Respondent registered the disputed domain name using the allegedly false registration name of “Honda Annapolis” and the false organization name “Waldorfhonda.” The only bona fide entities using such names are Honda’s authorized dealers, namely, Honda of Annapolis and Waldorf Honda, which are not affiliated with Respondent. As in Telstra and many other UDRP decisions, “it is not possible to conceive of any plausible actual or contemplated active use of the domain name by Respondent that would not be illegitimate.”
Additionally, Complainant sent Respondent a cease and desist letter on March 2 and 3, 2014, and a reminder on March 17, 2014. Respondent therefore was made aware of Complainant’s rights in the HONDA mark and Complainant’s demand that it transfer the disputed domain name to Complainant. A failure of a Respondent to respond to a cease and desist letter has been considered relevant in finding of bad faith (see News Group Newspapers Limited and News Network Limited v. Momm Amed Ia,WIPO Case No. D2000-1623; Nike, Inc. v. Azumano Travel,WIPO Case No. D2000-1598; and America Online, Inc. v. Antonio R. Diaz,WIPO Case No. D2000-1460).
This Panel therefore finds that Respondent has registered and is using the disputed domain name in bad faith under the third element of paragraph 4(a) of the Policy. 7. Decision
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 be transferred to the Complainant.
Sandra A. Sellers
Sole Panelist
Date: May 19, 2014
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