The Complainant is American Honda Motor Co., Inc. of Torrance, California, United States of America ("United States" or "U.S."), represented by Phillips Ryther & Winchester, United States.
The Respondent is Corrie Watson of Fort Worth, Texas, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 14, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 15, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 10, 2017. The Response was filed with the Center on July 8, 2017.
The Center appointed William R. Towns as the sole panelist in this matter on July 18, 2017. 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
The Complainant, established in 1959, is a wholly-owned subsidiary of Honda Motor Company Limited ("Honda"), a Japanese corporation founded in 1948 and a leading manufacturer and seller of automobiles, motorcycles, and motors. North America is Honda's largest automobile market, and nearly all of the Honda automobiles sold in the U.S. are made in North America. The Complainant has exclusive authority to use and enforce Honda's trademarks in the United States.
The initial U.S. registration for the HONDA mark was obtained by Honda in 1967, and since then a number of additional U.S. registrations for HONDA and HONDA-formative marks have been issued. Honda has devoted considerable effort and expense to promoting its HONDA marks throughout the world, and HONDA is consistently ranked among the most valuable global brands by organizations such as Interbrand. A number of UDRP panels have recognized that HONDA is a well-known mark. See, e.g., American Honda Motor Co., Inc. v. Domain Admin, Private Registrations Aktien Gesellschaft, WIPO Case No. D2012-2185 (HONDA mark in use in U.S. for over 40 years); American Honda Motor Co., Inc. v. Milan Kovac / B c/o Privacy Protect,WIPO Case No. D2012-1680 (HONDA mark well-known as early as 2003); American Honda Motor Co., Inc. v. Honda Automobile Company,WIPO Case No. D2007-1558 (HONDA mark unquestionably famous).
Honda automobiles are sold in the U.S. through a network of licensed dealerships. Honda dealerships are allowed to use the HONDA mark in advertising, promotion, sale and servicing of Honda products, subject to the terms of the dealer agreement, and upon termination of the agreement are required to discontinue all use of the HONDA mark and any confusingly similar words, symbols, or other marks. Many Honda dealers use a naming convention combining the HONDA mark with either the dealer's name or the geographic location of the dealer – e.g.,Honda of Fort Worth. This is one of several established naming conventions among automobile manufacturers and their authorized dealers. See, e.g., Volkswagen Group of America, Inc. v. Michael Oates, Captex Commercial Properties,WIPO Case No. D2017-0815 (); Volkswagen Group of America, Inc. v. Sergey Asmik,WIPO Case No. D2014-0616 (); Bayerische Motoren Werke AG v. Private Registrations AG,WIPO Case No. D2010-0898 (); American Honda Motor Co., Inc. v. Domain Admin, Private Registrations Aktien Gesellschaft, supra ().
The Respondent is a former Honda dealer, who operated Frank Kent Honda, in Fort Worth, Texas, until selling the dealership in March 2015. The Respondent registered the disputed domain name on March 10, 2014, according to the concerned Registrar's WhoIs records. Weatherford is a town located approximately 30 miles west from the center of Fort Worth. The disputed domain name currently does not resolve to an active website, although previously it has been used with a landing or placeholder page, which indicates that the website is coming soon and asks users to check back to see if site content is "available", i.e., present.
The Complainant first learned of the Respondent's registration of the disputed domain name in late 2016, at some point after Honda had approved a new Honda dealership to serve Weatherford, Texas. The Honda dealer, with the Complainant's approval, had elected to trade under the name "Honda of Weatherford". The Complainant's legal counsel by email forwarded a demand letter to the Respondent on January 2, 2017. The Respondent's brother replied in part as follows:
"This URL was registered long before Honda announced it was adding a point to Weatherford and we are currently not using it to redirect business to sites detrimental to the Honda brand. We are willing to negotiate the purchase of the url www. but you will not be getting it via a demand letter. This url is an asset of Frank Kent Motor Company and we value it because we are constantly looking at other dealerships and additional Honda franchises. The road to taking the url (asset) without payment is long and not always guaranteed via UDRP and ICANN since we are automotive and once Honda."
The Complainant's legal counsel in reply indicated he would recommend that the Respondent be reimbursed for out-of-pocket registration costs in consideration of the transfer of the disputed domain name. The Respondent's brother then offered to transfer the disputed domain name if Honda would become a sponsor of Dream Park Forth Worth, a playground for children with special needs. The Respondent's brother forwarded a PowerPoint presentation to the Complainant, which indicated the minimum donation to become a sponsor would be USD 13,000. The Complainant advised the Respondent's brother that Honda could not agree to a proposal of this nature given the circumstances, and once again requested the transfer of the disputed domain name. The Respondent did not respond further. 5. Parties' Contentions A. Complainant
The Complainant submits that the disputed domain name is confusingly similar to the Complainant's HONDA mark, as it wholly incorporates the HONDA mark and combines it with the name of a geographic location in which Honda will soon open a new dealership. The Complainant maintains that the disputed domain name reflects a well-established naming convention among automobile manufacturers in general and Honda dealers in particular.
The Complainant maintains that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. According to the Complainant, the Respondent has not been authorized to use the HONDA mark in a domain name, has no present connection or affiliation with Honda, and is not commonly known by the disputed domain name. The Complainant submits that the Honda Automobile Dealer Sales and Service Agreement ("SSA") did not authorize the Respondent to use the Complainant's HONDA mark beyond that necessary to advertise the Respondent's dealership in Fort Worth, while doing business under the name Frank Kent Honda. The Complainant further asserts that the Respondent was obligated to discontinue all use of the HONDA mark upon the termination of the Respondent's dealership in 2015, that the Respondent was never authorized under the SSA to register or use the disputed domain name, and that the Respondent's registration of the disputed domain name in violation of the SSA precludes the Respondent from establishing rights in the disputed domain name, citing Yamaha Motor Corporation, USA v. Danny Crescenzi,WIPO Case No. D2005-1269.
The Complainant asserts that the Respondent registered the disputed domain name based on the disputed domain name's speculative value should the opportunity arise for "future automotive acquisitions." The Complainant submits that vague and unspecified plans to use the disputed domain name in connection with a future automotive-related endeavor do not constitute demonstrable preparations to use the disputed domain name, or a name corresponding to the disputed domain name, in connection with a bona fide offering of goods or services.
Moreover, the Complainant asserts that the disputed domain name could only conceivably be used with a Honda dealership in Weatherford. The Complainant maintains that the only explanation for the Respondent's registration of the disputed domain name is to "corner the market" on Honda names referring to geographic areas surrounding the Respondent's former territory, thus precluding other Honda dealers from maintaining a dealership in that area.
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Complainant asserts that the Respondent clearly was aware of the HONDA marks, and argues given the strength and fame of the HONDA mark that the Respondent's bad faith is established by the fact of registration alone. The Complainant further submits that the Respondent sought to profit from and exploit the HONDA mark, and that it is no coincidence that the Respondent registered a domain name appropriating an established naming convention used by the Complainant's dealers. Additionally, according to the Complainant, bad faith is demonstrated by the Respondent's passive holding of the disputed domain name. The Complainant maintains that the Respondent's demand that Honda agree to a negotiated price for the transfer of the disputed domain name and counteroffer of no less than USD 13,000 constitutes further evidence of bad faith B. Respondent
The Respondent, addressing the Complainant's contention that the disputed domain name is confusingly similar to the Complainant's mark, submits that the Complainant is relying upon three UDRP cases in which none of the respondents submitted a response. The Respondent contends these prior cases thus are not relevant to the instant case.
The Respondent disputes the Complainant's contention that the Respondent lacks rights or legitimate interests in the disputed domain name. First, the Respondent notes that the disputed domain name was registered while the Respondent was operating the Frank Kent Honda dealership, and thus the Respondent was not a "former Honda dealer" as alleged by the Complainant. The Respondent further states that Frank Kent Honda is the closest Honda dealership to Weatherford, and that residents of Weatherford comprised over four percent of the Respondent's active customer database. The Respondent asserts that it was "imperative" to own a domain name reflecting the name of this neighboring city, and that the disputed domain name was used only to drive Internet traffic to the Frank Kent Honda website ("").
The Respondent denies that the disputed domain name was registered and is being used in bad faith. The Respondent points to a screen shot of January 2, 2017, containing a "404 error" notice, and states there has been no use of the disputed domain name to the detriment of the Complainant. The Respondent reiterates that the disputed domain name was registered only to redirect Internet traffic to the website of Frank Kent Honda.
The Respondent denies having any interest in selling the disputed domain name, and notes that it was the Complainant who first contacted the Respondent. According to the Respondent, Frank Kent Honda was a fourth-generation automotive company founded in 1935, and one of the most awarded Honda dealers in the U.S. in 2012. The Respondent states it is known for acting in a manner of honesty and transparency. The Respondent further notes that Frank Kent was inducted in the Automotive Hall of Fame in 1989.
According to the Respondent, that is why the Respondent, when contacted by the Complainant, simply requested that the Complainant pick a sponsorship level and donate to Fort Worth Dream Park, in exchange for which the disputed domain name would be transferred to the Complainant. The Respondent maintains this would "be benefiting the community for a lifetime," and that the Respondent would not profit therefrom. The Respondent maintains that the Complainant is attempting to bully a small company to obtain something it has no right to simply because the Complainant has had a change of direction. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of "the abusive registration of domain names", also known as "cybersquatting". Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term "cybersquatting" is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the HONDA mark, in which the Complainant has demonstrated rights. In considering this issue, the first element of the Policy serves essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant's trademark and the disputed domain name. In this case, the HONDA mark is clearly recognizable in the disputed domain name. The inclusion of the geographic location "Weatherford" does not serve to dispel the confusing similarity of the disputed domain name to the HONDA mark.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. The Respondent, while a Honda dealer doing business as Frank Kent Honda, registered the disputed domain name without the Complainant's knowledge, authorization, or consent. The Respondent retained the disputed domain after selling the Honda dealership. The disputed domain name is confusingly similar to the Complainant's well-known HONDA mark and adopts a naming convention used by authorized Honda dealers. Upon being contacted by the Complainant seeking transfer of the disputed domain name, the Respondent unequivocally stated that the Complainant would somehow (because of the "donation") have to purchase the disputed domain name.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the disputed domain name, even if he has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent claims to have registered the disputed domain name to drive consumers in the Weatherford, Texas area interested Honda automobiles to the website of the Frank Kent Honda dealership, at that time operated by the Respondent. However, the Respondent provides no evidence that the disputed domain name was ever used to redirect Internet users to the Frank Kent Honda website. The Respondent plainly was aware of the Complainant's rights in the HONDA mark when registering the disputed domain name, and the Respondent has not denied such knowledge. The Respondent registered a domain name (outside the scope permitted in the SSA) comprised of a recognized naming convention used by many authorized Honda dealers, which often serves as the Honda dealer's trade name. The Respondent has not denied being aware of this naming convention when registering the disputed domain name.
When contacted by the Complainant in January 2017, the Respondent characterized the disputed domain name as a valuable asset, stating "we are constantly looking at other dealerships and additional Honda franchises." Having regard to the foregoing, the Panel concludes that the Respondent, aware of the Honda dealers' naming convention (and doing business as "Frank Kent Honda", not as "Honda of Weatherford"), more likely than not registered the disputed domain name seeking an advantage over potential competitors for a Honda dealership in Weatherford, or otherwise seeking to create leverage to sell the disputed domain name to the Complainant. It seems unlikely that the Respondent would have registered and utilized the disputed domain name for the reason that has been asserted, since it potentially would cause consumer confusion and dilute the Frank Kent brand. Moreover, according to the Respondent, Weatherford residents accounted for only 4 percent of Frank Kent Honda's customers.
The Respondent has brought forth no credible evidence of use or preparations prior to notice of this dispute to use the disputed domain name in connection with a bona fide offering of goods or services. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name within the contemplation of paragraph 4(c)(iii) of the Policy. Similarly, there is no evidence that the Respondent has been commonly known by the disputed domain name. In short, the Respondent has not brought forward credible evidence to support a claim of rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(c) of the Policy.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the disputed domain name; or
(ii) circumstances indicating that the respondent registered the disputed 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, supra. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent's conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. It is patently clear from the record that the Respondent when registering the disputed domain name was aware of the HONDA mark and the naming convention used by authorized Honda dealers. The Panel concludes that the Respondent has been opportunistic; as discussed earlier, the Respondent registered the disputed domain name without the Complainant's knowledge, authorization, or consent. After a careful review of the record in this proceeding, the Panel concludes that the Respondent (doing business as "Frank Kent Honda", not as "Honda of Weatherford") more likely than not registered the disputed domain name seeking either to obtain advantage over potential competitors for a Honda dealership in Weatherford, or to leverage a substantial payment from the Complainant to acquire the disputed domain name.
The record in this proceeding is convincing that the Respondent's primary motive in relation to the registration and use of the disputed domain name was to capitalize on, or otherwise take advantage of, the Complainant's trademark rights, for commercial gain. When contacted by the Complainant, the Respondent made it very clear that the disputed domain name was a valuable asset the Complainant would be required to negotiate for to acquire. The Panel views with skepticism the Respondent's offer to transfer the disputed domain name in consideration of a donation by the Complainant to Dream Park Fort Worth. The Respondent almost certainly knew that the minimum contribution the Complainant could make would be USD 13,000. The Respondent may have miscalculated that the Complainant upon learning this would be more amenable to negotiating for the purchase of the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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.
William R. Towns
Sole Panelist
Date: August 1, 2017
1 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7.
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