Complainant is American Honda Motor Co., Inc. of, Torrance, California, United States of America (“United States”), represented by Phillips, Ryther & Winchester, United States.
Respondent is Wayne Craig / GMGL Marketing Services Inc. of, Avondale, Arizona, United States. 2. The Domain Names and Registrars
The disputed domain names , , , , and are registered with Wild West Domains, LLC and GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2014. On October 22, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 23, 2014, the Registrar transmitted by email to the Center its verification response confirming that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 31, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 20, 2014. The Center received informal email communications from the Respondent on October 27, 2014 and November 19, 2014. Respondent did not submit any formal response. Accordingly, the Center notified Respondent of the proceeding to panel appointment on November 20, 2014.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on December 1, 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
Complainant is the world’s largest manufacturer of motorcycles and engines and one of the world’s leading automakers. Complainant owns registrations for the mark HONDA, including United States Registration No. 0,826,779 (registered 1967), and registrations for the mark ACURA, including United States Registration No. 1,407,602 (registered 1986). Complainant’s worldwide revenue was USD 92,210 million in Fiscal Year 2010. In 2010, Complainant sold 1,230,480 Honda vehicles in the United States, where Respondent lists his address of record. Due to extensive use, advertising, and revenue associated with its HONDA and ACURA marks worldwide, Complainant enjoys a high degree of renown around the world, including in the United States.
Complainant owns the registration for domain names that include its registered HONDA and ACURA mark, including , , , and Complainant uses these domain names to connect to websites through which it informs potential customers about its HONDA and ACURA marks and its products and services, including warranties and service contracts.
The disputed domain names and were registered by the Respondent on January 8, 2003. The disputed domain names and were registered by Respondent on January 17, 2010. The disputed domain names and were registered by Respondent on April 22, 2003.
Respondent has no affiliation with Complainant. Respondent has set up websites at the URLs associated with all of the disputed domain names, with information about extended warranties for Acura and Honda products and services. Complainant has not authorized any activities by Respondent, nor any use of its trademarks thereby. 5. Parties’ Contentions A. Complainant
Complainant contends that (i) the disputed domain names , , , , and are identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain names; and (iii) Respondent registered and is using the disputed domain names in bad faith. B. Respondent
Respondent1 did not provide the Center with a formal Response to Complainant’s contentions in this proceeding. However, two communications by Respondent were forwarded to the Center before the Complaint was formally instituted, and the Center notified Respondent that these would become part of the file if Respondent did not also issue a formal Response as he did not. In those communications, Respondent indicated in his October 27 email that the “sites clearly state that [they] are not affiliated or endorsed” by Complainant and that further Respondent “provid[es] an independent service for vehicles.” Respondent further indicated on another email communication the same date: “All I do is offer a service for folks that own these types of vehicles.” Finally, in his email communication to the Center on November 19, Respondent stated the following:
“What is the status of this frivolous issue? No trademarked items are used on my site and NO ONE thinks they are dealing with the OEM or a dealer.”
As has been noted in other cases, although some of Respondent’s communications do not conform with the Rules, in this type of situation, it is not inappropriate for the Panel to admit and consider all of them, since they “would not in fact prejudice the Complainant or affect the outcome of this case.” Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. AlexanderLehner, WIPO Case No. D2001-1447(transferring ). See also paragraph 4.2 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). 6. Discussion and Findings A. Identical or Confusingly Similar
This Panel must first determine whether the disputed domain names , , , , and are identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that they are. Each of the disputed domain names directly and fully incorporates Complainant’s well-known, registered trademarks, HONDA or ACURA, and merely adds descriptive wording including “warranty” or “warranties.” The Panel finds that the added words would be perceived by Internet users as descriptive of a website where they could find information about sales of warranties on Complainant’s Honda and Acura products. This is especially so since Complainant itself offers warranties on its Honda and Acura cars.
Numerous UDRP panels have agreed that supplementing or modifying a trademark with generic or descriptive words does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example, Microsoft Corporation v. StepWeb,WIPO Case No. D2000-1500 (transferring ); General Electric Company v. Recruiters,WIPO Case No. D2007-0584; (transferring ); CBS Broadcasting, Inc. v. Y2K Concepts Corp.,WIPO Case No. D2000-1065. (transferring ).
This Panel therefore finds that the disputed domain names are identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain name in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “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”.
Respondent argues that his use of the disputed domain names is legitimate since he offers “an independent service for vehicles.” The majority view on this issue is expressed in paragraph 2.3 of WIPO Overview 2.0. As stated therein, a reseller maybe considered to have rights or legitimate interests in a mark, provided certain requirements are met. These generally include that: (i) the site is used only to sell the trademarked goods; (ii) the site accurately and prominently discloses the registrant’s relationship to the mark holder; and (iii) respondent does not try to “corner the market” in domain names that reflect the mark. Id. See also Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095; BlackRock Institutional Trust Company, N.A. v. Investors FastTrack, WIPO Case No. D2010-1038.
The Panel finds that these three qualifications are not fulfilled by the websites associated with the disputed domain names. First, Complainant has submitted evidence that Respondent uses the URLs associated with each of the disputed domain names to link to websites that represent Respondent as an “independent broker for a number of nationally recognized Auto Service Contract Programs (aka Extended Auto Warranties).” Second, the sites do not clearly and prominently disclose Respondent’s relationship to Complainant. Third, Respondent has registered a number of domain names including Complainant’s marks.
This Panel finds that considering the circumstances presented overall, Respondent has not shown rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “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 the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [the] web site or location”. As noted in Section 4 of this Panel’s decision, Respondent has set up websites at the URLs associated with the disputed domain names, from which it sells or offers to sell its services. Hence, Respondent is trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondent’s own commercial gain.
Furthermore, considering the high degree of renown of Complainant’s HONDA and ACURA marks around the world including in the United States where Respondent lists his address of record, and the fact that the websites associated with the disputed domain names refer to those products, it may be presumed that Respondent was aware of Complainant’s rights in Complainant’s marks when registering the disputed domain names. Accordingly, this too, evidences bad faith by Respondent. Finally, Respondent has evidenced a pattern of bad faith conduct in accordance with paragraph 4(b)(ii), by registering other domain names similar to those at issue in this proceeding, including , , , , , , and .
Therefore, this Panel finds that Respondent registered and used the disputed domain names in bad faith in accordance with paragraph 4(a)(iii) 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 names , , , , and be transferred to Complainant.
Lorelei Ritchie
Sole Panelist
Dated: December 8, 2014
1 The Panel notes that although some of the disputed domain names may be registered to Wayne Craig, and some to his company, GMGL Marketing Services Inc., he has provided sufficient indication that they are under the same control.
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