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 Domain Administrator - WhoIs Watchdog, of Shanghai, China / Honda Automobile Customer Service - American Honda Motor Co., Inc. of Torrance, California, United States of America. 2. The Domain Name And Registrar
The disputed domain name (“Domain Name”) is registered with R Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 30, 2015. On March 31, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 1, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. On April 14, 2015, Complainant stated that “the true or beneficial registrant is Domain Administrator, WhoIs Watchdog, which was the registrant of record prior to receiving a demand letter from our client. In footnote 1, we request that Domain Administrator, WhoIs Watchdog, be named as the respondent in the caption in order that the caption may accurately reflect the respondent’s true identity. In view of the above, we included “Domain Administrator, WhoIs Watchdog” in the caption, followed by “a/k/a” and the obviously false information in the current WhoIs record.” The Center informed Complainant that the Center would proceed to formal Complaint Notification on this basis, noting that any resultant (or related) issues of proper Respondent identity would in any case need to be considered at the discretion of the Panel.
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 April 29, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 19, 2015. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on May 26, 2015.
The Center appointed John R. Keys, Jr. as the sole panelist in this matter on June 9, 2015. 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 incorporated in California, United States of America, with a primary place of business in Torrance, California. Complainant is a wholly owned subsidiary of the Japanese corporation Honda Motor Co., Ltd. Honda Motor Co., Ltd. is a major manufacturer and seller of motorcycles, automobiles, small engines and other products in many countries of the world, including in the United States of America.
Honda Motor Co., Ltd. owns 13 trademark registrations for HONDA on the Principal Register of the United States, ten of which were registered before Respondent registered the Domain Name. The original U.S. registration of HONDA, No. 826,779, was issued on April 4, 1967, and remains active.
Complainant has the exclusive right to use trademarks belonging to Honda Motor Co., Ltd. in the United States and the right to sue to enforce those HONDA trademark rights.
The Domain Name was registered on October 25, 2010, in the name of Domain Administrator, WhoIs Watchdog with an address in Shanghai, China. The Domain Name directs to a website containing advertising links for various goods and services related to products that Complainant sells, including motorcycles, automobiles and related products and services.
On December 12, 2014, Complainant sent Respondent WhoIs Watchdog a letter demanding transfer of the Domain Name to Complainant. Four days later, the registration record for the Domain Name was “updated” to reflect a new registrant name and organization, this is, “Honda Automobile Customer Service Organization, American Honda Motor Company, Inc.,” with an address in Torrance, California. However, ownership and control of the Domain Name was not actually transferred to Complainant. The new registration information was in effect an unauthorized use by Respondent of a new alias that falsely suggested association with Complainant. 5. Parties’ Contentions A. Complainant
Complainant contends that the HONDA trademark is internationally famous and one of the most recognized and valuable trademarks in the world.
Complainant contends that it has rights in the HONDA trademarks by reason of its parent company’s registrations of those marks in the United States, its exclusive agreement for use of those registered trademarks in the United States, and its actual use and promotion of the trademarks in the United States over a period of many years.
Complainant further contends that the Domain Name is confusingly similar to Complainant’s HONDA trademarks in that the Domain Name incorporates the HONDA mark in its entirety. The fact that the Domain Name adds the geographic identifier “sanjose”, the name of a city in California, is consistent with the convention of many automobile manufacturers, and of Honda in particular, of forming an authorized dealer’s name by combining the manufacturer’s trademark with a geographic name identifying the location of the dealership. Thus, the Domain Name suggests an authorized Honda dealership located in San Jose, California.
Complainant contends that Respondent has no rights or legitimate interests in the Domain Name for the following reasons:
- Respondent is not known by the Domain Name, has not been authorized by Honda to use the HONDA trademarks in any way, and has no connection to or affiliation with Honda;
- Respondent’s use of the Domain Name to direct Internet users to a website displaying pay-per-click advertisements targeted toward the Domain Name’s trademark meaning is not a use in connection with a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy, nor is it a legitimate noncommercial or fair use of the Domain Name under paragraph 4(c)(iii) of the Policy.
Finally, Complainant contends that Respondent registered and uses the Domain Name in bad faith based on the following grounds:
- Complainant’s HONDA trademark is so famous that Respondent had to be aware of Complainant’s rights and intended to trade on the Domain Name’s trademark value;
- Respondent’s awareness of Complainant’s trademark may be inferred from the fact of registration by the United States Patent and Trademark Office;
- Complainant’s mark is so well-known and famous that it is not possible to conceive of any use of the Domain Name that would not be illegitimate;
- Respondent clearly intended to use the Domain Name to benefit from Complainant’s trademark meaning;
- Respondent provided false contact information and altered the WhoIs record after receiving a demand letter from Complainant; and
- Respondent has a demonstrated history of cyberpiracy. B. Respondent
Respondent did not file a Response nor reply to Complainant’s contentions. 6. Discussion And Findings
Because Respondent did not respond to the Complaint, the Panel considers whether Respondent was given adequate notice of the proceeding. The evidence indicates that the Center sent the Complaint in electronic form and the Written Notice in hard copy by courier to Respondent at the addresses provided by the Registrar and in the Amended Complaint. The Panel concludes that the Center discharged its responsibility under the Rules to notify Respondent of the Complaint and administrative proceeding.
Where there is no response to the complaint, the panel must decide the dispute based upon the complaint. Rules, paragraphs 5(e) and 14(a). The panel is to decide the complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any principles of law the panel deems applicable. Rules, paragraph 15(a). Under Rules, paragraph 14(b), Respondent’s failure to answer entitles the Panel to “draw such inferences therefrom as it considers appropriate”.
Under the Policy, paragraph 4(a), Complainant must prove each of three elements of its case in order to obtain the requested relief:
(i) the Domain Name 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) Respondent registered and is using the Domain Name in bad faith. A. Procedural Matter
Complainant named Domain Administrator, WhoIs Watchdog as the respondent but added “a/k/a [also known as] “Honda Automobile Customer Service, American Honda Motor Co., Inc.” with an address in Torrance, California, United States. Complainant alleged in the Complaint that Respondent had falsely and without authorization changed the name of the Domain Name registrant to a false alias that corresponded in part to the name of Complainant. There was in fact no actual transfer of the Domain Name to Complainant. The Panel accepts as true Complainant’s contention that WhoIs Watchdog Respondent simply changed the registration information to reflect a false identification of Domain Name ownership and that WhoIs Watchdog remains the beneficial and controlling owner of the Domain Name. Nevertheless, under the circumstances, and since the Registrar’s information presently lists on the publicly available WhoIs “Honda Automobile Customer Service, American Honda Motor Co., Inc.” as the registrant, the Panel considers it appropriate and prudent to name that entity as Respondent entity, rather than just an alias for the Domain Name owner, so that there is no question whether effective relief can be granted, if Complainant’s case is otherwise proved. B. Identical or Confusingly Similar
Complainant possesses rights in the HONDA trademark by reason of its parent company’s registrations of the mark by the United States Patent and Trademark Office, Complainant’s exclusive authorization from the parent to use and enforce the HONDA mark in the United States, and, as a matter of common law, from its long-term use of the mark in the United States.
The Panel considers the Domain Name to be confusingly similar to the HONDA trademark in which Complainant has established legal rights. The HONDA mark is incorporated into the Domain Name in its entirety and with correct spelling. Joining the HONDA trademark with a geographic descriptor, in this case “San Jose”, the name of a city in California, does not serve to distinguish the Domain Name from Complainant’s trademark but rather strengthens the impression that the Domain Name refers to the website of a Complainant's dealer located in San Jose, California, in line with a convention of Complainant and other automobile companies to identify their authorized dealers with a combined trademark identifier and geographic locator. See, e.g., American Honda Motor Co., Inc. v. Honda Annapolis,WIPO Case No. D2014-0510; American Honda Motor Co., Inc. v. Javier Barro,WIPO Case No. D2013-2097.
The Panel considers that Complainant has established the first element of its case. C. Rights or Legitimate Interests
Complainant bears the overall burden of proving that Respondent has no rights or legitimate interests in the Domain Name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). However, where Complainant makes a prima facie case that Respondent does not possess such rights or legitimate interests, the burden of production shifts to Respondent to demonstrate that it does in fact possess such rights or legitimate interests. Id. Where, as here, Respondent fails to come forward with allegations or evidence to demonstrate that it possesses such rights or legitimate interests, Complainant’s prima facie case will usually be found sufficient to meet Complainant’s overall burden of proof. Id.
Paragraph 4(c) of the Policy provides that a respondent may demonstrate rights or legitimate interests in a domain name by showing one of the following circumstances:
(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 has 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.
Complainant can make out a prima facie case by negating such circumstances, see Paris Hilton v. Deepak Kumar,WIPO Case No. D2010-1364, which Complainant has done that in this case.
Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. Policy, paragraph 4(c)(i). Respondent’s use of the Domain Name that is confusingly similar to and infringes Complainant’s trademark in order to create confusion, divert Internet users to one’s own website and trade intentionally on the marks and goodwill of another, for commercial gain, in this case by generating click-through revenues for advertising links to goods and services that compete with those of Complainant, is not a bona fide offering of goods or services. See, e.g. Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc.,WIPO Case No. D2006-1315.
There is nothing in the record suggesting that Respondent has ever been commonly known by the Domain Name. Complainant, moreover, has not granted Respondent authority or license to use Complainant’s name or trademark in a Domain Name. Policy, paragraph 4(c)(ii).
Respondent’s creation and use of an intentionally confusing Domain Name based on Complainant's trademark for a plainly commercial purpose does not constitute either a noncommercial or a fair use of the Domain Name. Policy, paragraph 4(c)(iii).
Respondent has not come forward with facts or argument to rebut Complainant’s prima facie case. Complainant’s prima facie case is supported on the record, and the Panel accepts it.
In the Panel’s opinion, Complainant has established the second element of its case. D. Registered and Used in Bad Faith
Complainant must show that the Domain Name was registered and is being used in bad faith. The Panel considers the evidence of record sufficient to establish that Complainant has done so in this case.
Complainant’s HONDA trademark is well-known and famous in the United States as well as internationally. Prior UDRP decisions have so found. See, e.g., American Honda Motor Co., Inc. v. Domain Administrator, Private Registrations Aktien Gesellschaft, WIPO Case No. D2012-2185; American Honda Motor Co., Inc. v. Honda Automobile Company, WIPO Case No. D2007-1558. With respect to such a mark, Respondent was necessarily aware of the HONDA trademark and of Complainant’s rights in the mark, and intentional use of that mark in registering and using the mark is itself evidence of bad faith. See Playboy Enterprises International, Inc. v. Tamara Pitts,WIPO Case No. D2006-0675; Ford Motor Company and Landrover Ltd. v. Kevin Knuhtsen,WIPO Case No. DBIZ2002-00183.
There is more here than just the inference drawn from the strength of Complainant’s trademark. Paragraph 4(b)(iv) of the Policy provides that the following is evidence of registration and use in bad faith:
“By using the domain name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
Respondent registered and is using a Domain Name that incorporates Complainant’s trademark in its entirety, that is plainly intended to confuse the Internet user and divert traffic from Complainant to Respondent, and that opens to a website featuring advertising links for goods and services similar or related to those of Complainant from which Respondent presumably earns click-through revenues. The evidence sufficiently establishes that Respondent clearly intended to exploit Complainant’s trademark and goodwill in that mark to create a likelihood of confusion as to the source of the website and the goods offered on the site for Respondent's own commercial gain. See Compagnie Générale des Etablissements Michelin v. ProvacyP Kim Bum LLC, WIPO Case No. D2013-0181; Volvo Trademark Holding AB v. Unasi, Inc.,WIPO Case No. D2005-0556. This constitutes bad faith registration and use within the meaning of the Policy.
Further evidence of bad faith registration consists in Respondent’s providing false and manipulative identification of the Domain Name registrant, registrant organization and address.
Complainant also alleges and supports that Respondent WhoIs Watchdog has engaged in a significant pattern of cyber misconduct as evidenced by a number of prior UDRP decisions, including Budget Rent A Car System, Inc. v. Admin, Domain, WIPO Case No. 2010-0149; Progman Consulting Oy v. WhoIs Watchdog, WIPO Case No. D2010-1393; Hacker Boat Company, Inc. v. Whois Watchdog,WIPO Case No. D2011-1296; Roxin Rechtsanwälte LLP v. Whois Watchdog,WIPO Case No. D2012-1794; EasyGroup Limited v. Domain Administrator, Whois Watchdog,WIPO Case No. D2014-1787.
The Panel concludes that Respondent registered and is using the Domain Name in bad faith and that Complainant therefore has established the third and final element of its case. 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 Domain Name, , be transferred to Complainant.
John R. Keys, Jr.
Sole Panelist
Date: June 23, 2015
Full & Egal Universal Law Academy