The Complainant is American Honda Motor Co. Inc. of Torrance, California, United States of America ("United States"), represented by Phillips Ryther & Winchester, United States.
The Respondent is Hector Henriquez of El Paso, Texas, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with Wild West Domains, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 9, 2018. On April 10, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 11, 2018, 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 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 April 16, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 6, 2018. An informal email communication was received by the Center from the Respondent on May 2, 2018. The Center received email communications from the Complainant on May 3, 2018 and May 6, 2018.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on May 13, 2018. 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 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 engines. The Complainant has exclusive authority to use and enforce Honda's trademarks in the United States.
The earliest United States registration for the HONDA mark was obtained by Honda in 1967 (see e.g., United States trademark registration no. 826779 for HONDA, registered April 4, 1967). Honda has devoted considerable effort and expense to promoting its HONDA marks throughout the world, and the HONDA trademark is consistently ranked among the most valuable global brands by organizations such as Interbrand. Numerous 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 the United States for over 40 years); American Honda Motor Co., Inc. v. Honda Automobile Company,WIPO Case No. D2007-1558 (HONDA mark unquestionably famous).
Honda has similarly obtained registrations in the United States for designs for the HONDA and ACURA trademarks, used in connection with automobiles and automobile parts. The ACURA trademark is also a well-known mark in the United States. See American Honda Motor Co., Inc. v. Pro-Line Protoform, 325 F. Supp.2d 1081, 1085 (C.D. Cal. 2004) ("The famousness and distinctiveness of the Honda Marks cannot be questioned. Indeed, 'Honda' and 'Acura' are words that were added to the English language by Honda. They are the quintessential distinctive marks, entitled to the strongest and broadest protection available from the trademark laws.")
Honda automobiles are sold in the United States 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 their dealer agreement. Many Honda dealers use a naming convention combining the HONDA mark with either the dealer's name or the geographic location of the dealer. This is one of several established naming conventions among automobile manufacturers and their authorized dealers. For example, the Complainant has a dealer located in El Paso, Texas, which uses the business name "El Paso Honda" and the corresponding domain name , which it registered and began using in 1997.
The Respondent is the president and owner of Brasil Auto Center Inc., a Texas corporation, which sells used Honda automobiles in El Paso, Texas in competition with the Complainant's authorized dealer, El Paso Honda.
The disputed domain name was registered on August 4, 2010. According to evidence submitted in the Complaint, the disputed domain name was previously used to promote Respondent's business, Brasil Auto Center. More specifically, the disputed domain name was used to advertise the sale of used Honda and Acura automobiles in competition with El Paso Honda, as well as to sell other auto and motorcycle brands. It no longer resolves to any website content.
Prior to this Complaint, the Complainant and the Respondent exchanged cease-and-desist correspondence, and entered into a settlement agreement, wherein the Respondent agreed to cease all use of the disputed domain name and transfer it to the Complainant after a brief phase-out period. At the end of that phase-out period, the Respondent, through its then-appointed counsel, demanded USD 15,000 to transfer the disputed domain name. The Respondent continued to maintain and use the disputed domain name until the Respondent deactivated the corresponding website on April 13, 2018. 5. Parties' Contentions A. Complainant
The disputed domain name wholly incorporates Honda's registered HONDA mark and combines it with the word "used" and "El Paso." The additional geographic indicator copies the well-known convention of forming dealer names by combining the manufacturer's mark with the dealer's name or location. The addition of the term "used" does not distinguish the disputed domain name.
The Respondent is not known by the disputed domain name, has not been authorized by Honda to use the HONDA marks in any way, has no connection or affiliation with Honda, and has never made any bona fide use of the disputed domain name.
The Respondent is precluded from claiming any legitimate rights or interests because the structure or format of the disputed domain name itself suggests affiliation with, sponsorship, or endorsement by Honda. The disputed domain name follows the precise naming convention employed by Honda dealers and, specifically, by the Honda dealership located in El Paso, Texas. This principle has been specifically recognized by numerous prior UDRP panels with respect to the convention of naming dealerships by combining the name of the manufacturer with a geographic location.
The Respondent also made illegitimate use of the disputed domain name to host a website prominently featuring Honda's copyrighted auto images. The Respondent also used the disputed domain name to display images of Honda's design trademarks. More specifically, the Respondent began to display pictures of used autos offered for sale by the Respondent against a background on which Honda's Acura emblem was clearly visible. The Respondent did not use Honda trademarks on its website simply to communicate that it sold used Honda and Acura automobiles; it displayed "Used Honda El Paso" on its website as if "Used Honda El Paso" was its business name and in a manner that exceeded the boundaries of permissible fair use. The Respondent replicated the distinctive blue-and-white color scheme used by Honda in its advertising and dealership facilities on the Respondent's website homepage. Respondent does not confine its web pages to advertise used Honda autos, but uses the domain name to advertise many competing brands, including Toyota, Jeep, VW, and Polaris.
Continued registration of the disputed domain name in violation of the settlement agreement precludes the Respondent from establishing rights in the domain name.
The Respondent's bad faith is established by the fact that the HONDA trademark falls within a select class of internationally strong marks that have become so famous that it is impossible for any respondent to claim it was unaware of Honda's prior rights or to have legitimate interests in domain names that incorporate the mark. As an auto dealer in the relatively small city of El Paso, Texas, the Respondent was surely also aware of the Honda's dealer's use of the name "El Paso Honda".
The Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion. The Respondent selected a domain name that is nearly identical to the domain name used by Honda's dealer. The Respondent used the disputed domain name to host a website designed to appear as if it belonged to a Honda dealer or the used-car division of a Honda dealer, complete with Honda's unique design trademarks and copyrighted images lifted from Honda's marketing materials.
The Respondent refused to transfer the disputed domain name to Honda at the end of the transition period in accordance with the clear terms of the settlement agreement. Instead, the Respondent demanded the Complainant pay USD 15,000 for the transfer, a price in excess of the Respondent's out-of-pocket costs, which ultimately constitutes further evidence of the Respondent's bad faith. B. Respondent
The Respondent sent an informal email communication on May 2, 2018. It informed in relevant part that, "We have already canceled the domains that were disputed attached you will see that the domains were canceled April 13, 2018."
Appended to the informal communication was an email dated April 13, 2018 from Dealer Car Search, ostensibly a website design company for car dealers. It informed in relevant part that, "We have removed the following domains from your account: […]" 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.2.1. The Complainant has provided evidence that it has rights in the HONDA mark, which have been registered in the United States and elsewhere internationally, well before the Respondent registered the disputed domain name. The Complainant has also submitted evidence that the HONDA mark is known globally in connection with its products, including products ranging from small, general-purpose engines and scooters to specialty sports cars, personal watercraft, and jet airplanes, including side-by-sides.
With the Complainant's rights in the HONDA mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain ".com") is identical or confusingly similar to the Complainant's mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842.
In the instant proceeding, the disputed domain name is confusingly similar to the Complainant's HONDA mark because it incorporates this mark in its entirety as the dominant element of the disputed domain name. The addition of the descriptive and geographical terms "used" and "el paso" before and after the dominant HONDA element does not distinguish the disputed domain name from the Complainant's mark. See, e.g., Wingstop Restaurants Inc. v. Domains By Proxy, LLC / Johnson Millner / Matthew Alvarez,WIPO Case No. D2016-1004; see also Rolex Watch U.S.A., Inc. v. NCSO,WIPO Case No. D2010-0948 (transferring domain names including and ).
The Panel therefore finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the HONDA mark and in showing that the disputed domain name is identical or confusingly similar to this mark. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant must make at least a prima facie showing that the Respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once the Complainant makes such a prima facie showing, the burden of production shifts to the Respondent, though the burden of proof always remains on the Complainant. If the Respondent fails to come forward with evidence showing rights or legitimate interests, the Complainant will have sustained its burden under the second element of the UDRP.
Resellers, distributors, or service providers using a domain name containing the complainant's trademark to undertake sales or repairs related to the complainant's goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the "Oki Data test", the following cumulative requirements will be applied in the specific conditions of a UDRP case:
(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant's relationship with the trademark holder; and
(iv) the respondent must not try to "corner the market" in domain names that reflect the trademark.
WIPO Overview 3.0, sections 2.8.1– 2.8.2.
From the record in this case, it is evident that the Respondent was, and is, aware of the Complainant and its HONDA mark and does not have any rights or legitimate interests in the disputed domain name. While it is evident from the record that the Respondent used the disputed domain name to offer Honda products, the Respondent also clearly used the disputed domain name to offer many other trademarked goods in competition with the Complainant, including numerous other auto and motorcycle brands like Jeep, Polaris, Toyota, and VW. In addition, in the absence of a formal Response from the Respondent, the record is devoid of any evidence to establish that the Respondent's website accurately and prominently disclosed either the presence or absence of any authorized relationship between the Respondent and the Complainant. To the contrary, the record reflects that the Respondent used the disputed domain name to host a website which featured "Used Honda El Paso" as an ostensible trade name, as well as unauthorized copyrighted auto images and design trademarks that belong to the Complainant.
Accordingly, the Panel concludes that the Respondent does not have rights or legitimate interests in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location."
As noted above, the Complainant contends that the Respondent registered the disputed domain name because it is nearly identical to the domain name used by the Complainant's authorized dealer in El Paso, Texas, and then used the disputed domain name to appear as an authorized Honda dealer, complete with the use of the Complainant's unique design marks, trade dress, and copyrighted images. It is evident from the record that the Respondent was aware of the HONDA mark and the naming convention used by authorized Honda dealers when it registered the disputed domain name.
Indeed, the Panel views the facts in the instant Complaint as analogous to American Honda Motor Co., Inc. v. Corrie Watson,WIPO Case No. D2017-1165, wherein the panel opined, "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." Here, it is clear that the Respondent (doing business as "Brasil Auto Center Inc.", not as "Used Honda of El Paso") more likely than not registered the disputed domain name to gain an advantage over its local competitor, an authorized Honda dealership in El Paso.
In light of these activities, as well as the renown of the HONDA trademark, and in the absence of any formal Response from the Respondent, the Panel can only conclude that the disputed domain name was registered and used in bad faith. Furthermore, the Panel views the breach of the terms of Respondent's settlement agreement with the Complainant, coupled with a demand from the Respondent to pay USD 15,000, as additional and strong evidence of bad faith registration and use of the disputed domain name.
Accordingly, the Panel finds that the Complainant succeeds under this element 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.
Brian J. Winterfeldt
Sole Panelist
Date: May 24, 2018
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