Complainant is American Honda Motor Co., Inc. of Torrance, California, United States of America (“United States” of “US”), represented by Phillips Ryther & Winchester, United States.
Respondent is Ryan G Foo, PPA Media Services of Santiago, Chile.
The disputed domain name <babylonhonda.com> is registered with Internet.bs Corp. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, 2015. On May 13, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 20, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 21, 2015, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on May 26, 2015, to replace the originally named respondent with the current Respondent.
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 May 27, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 16, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 17, 2016.
The Center appointed Christian Gassauer-Fleissner as the sole panelist in this matter on June 24, 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.
Complainant American Honda Motor Co., Inc. is a wholly-owned subsidiary of the Japanese corporation Honda Motor Co., Ltd., one of the world’s leading automobile companies, and has the exclusive right to use and protect trademarks belonging to Honda Motor Co., Ltd. in the United States. Complainant was founded in 1959 as Honda Motor Co., Ltd.’s first overseas subsidiary. Honda Motor Co., Ltd. is the owner of numerous U.S. trademark registrations for HONDA, inter alia, the following trademark registration in the U.S.:
|
Country |
Reg. No. |
Mark |
Class |
Date of Registration |
|
U.S. |
826,779 |
HONDA |
23 |
April 4, 1967 |
In UDRP proceedings as early as 2003, in Honda Motor Company Limited v. LOKITA Enterprises, WIPO Case No. D2003-0507, the HONDA trademark was recognized as well known.
The disputed domain name combines the mark HONDA with the name of the geographic area in which a Honda dealer is located. New and used Honda automobiles are sold through a network of authorized Honda dealers, which are often referred to by names comprising “Honda” and the city or geographic area in which the dealership is located. Complainant has a dealer located in West Babylon, New York, (U.S.) that, pursuant to authorization from Complainant, uses the domain name <babylon-honda.com>, registered on October 31, 1997. The disputed domain name was registered on November 20, 2000. When Complainant discovered the disputed domain name in early 2015, it was being used to resolve to “www.mazdausa.com”, the website of Complainant’s competitor. Complainant’s outside counsel emailed two demand letters to Respondent. Respondent did not respond but directed the disputed domain name to “www.hyonda.com”, being used to display pay-per-click advertisements for new and used automobiles, including new and used Honda automobiles. Without responding, Respondent then re-directed the disputed domain name to “www.hyundaiusa.com”, the website of Complainant’s competitor. Still without responding, Respondent then, at the time of filing, re-directed the disputed domain name to a webpage within “www. honda.com”, Honda’s official website.
Complainant contends the following:
The disputed domain name is confusingly similar to the registered HONDA trademark because it incorporates the HONDA trademark in its entirety with the name of the geographic area “Babylon” in which a Honda dealer is located, and is virtually identical to the domain name <babylon-honda.com> used by that dealer. An addition of a geographic term to a trademark does not reduce confusion but rather strengthens the likelihood of confusion by making Internet users mistakenly believe that the disputed domain name might be Complainant’s official website with regard to a certain area.
As a result, it clearly appears that the disputed domain name is confusingly similar to Complainant’s trademark.
Respondent has no prior right or legitimate interest in respect of the disputed domain name. Respondent has not been authorized to use the trademark in any way, has no connection or affiliation with Complainant and has never made any bona fide use of the disputed domain name. The only use that Respondent has made of the disputed domain name is to redirect visitors to websites of Complainant’s competitors, to display pay-per-click advertisements targeted toward the domain name’s trademark meaning and to resolve to the webpage “www.honda.com”.
Pursuant to paragraph 4(c), the legitimacy of the respondent’s use of a domain name is to be determined by the use made of the domain name before the respondent became aware of the dispute. Before receiving a demand letter from Complainant, Respondent used the disputed domain name to direct visitors to “www.mazdausa.com”. Such a use is clearly illegitimate. The other uses of directing visitors to the website of Complainant’s competitors after being notified from Complainant to “www.hyonda.com”, a domain name that is a confusingly-similar variant of HONDA, and to “www.honda.com” are also illegitimate and infringing. Targeting links toward the domain name’s trademark meaning is infringing, as well as the use of a domain name to resolve to the trademark holder’s own website, as consumers cannot possibly be expected to realize that such a domain name is owned and controlled by a registrant who has no affiliation with the trademark holder.
Furthermore, Respondent has registered and used the disputed domain name in bad faith because it was registered with the knowledge of Complainant’s rights, as Complainant’s trademark is a strong mark that has become so famous that it is impossible for any respondent to claim that he was unware of prior rights or has a legitimate interest in domain names that incorporate the mark HONDA. Respondent cannot possibly claim that he registered a domain name combining HONDA with “Babylon” without recognizing or intending to trade on Complainant’s trademark value. Respondent’s use of the disputed domain name to resolve to websites of competing auto manufacturers and to display pay-per-click advertisements targeted toward automobiles demonstrates that Respondent was aware of Complainant and intended to benefit from the value of the HONDA mark. The redirection of visitors of the disputed domain name to a webpage within “www.honda.com” also constitutes evidence of bad faith.
Complainant requests that the disputed domain name be transferred to it.
In the Complaint as filed, the named respondent was Domain Admin, Whois Privacy Corp. The Registrar of the disputed domain name sent an email communication to the Center on May 20, 2015, disclosing the underlying registrant of the disputed domain name as Ryan G Foo, PPA Media Services and that the registrant expressed the will to release the disputed domain name to Complainant (“Note that the registrant asked us to release the domain to the complainant as he no longer needs”). Complainant filed an amendment to the Complaint to replace Domain Admin, Whois Privacy Corp. with the newly identified registrant, Ryan G Foo, PPA Media Services as Respondent. Respondent did not file a formal response.
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant has the burden of proving 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.
In case of Respondent’s default, the Panel may accept as true the factual allegations stated within the Complaint and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Limited v. AnonymousSpeech LLC and Global House Inc., WIPO Case No. D2009-1779 and also paragraph 5(e) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”).
The Panel considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law and will render its decisions on the basis of the uncontroverted evidence supplied by Complainant.
Complainant sufficiently proved this part of the Complaint. Complainant is a wholly-owned subsidiary of Honda Motor Co., Ltd. and holds many federal trademark registrations for HONDA and trademarks that incorporate HONDA. The HONDA trademark is an internationally well-known trademark.
The disputed domain name, <baylonhonda.com>, is confusingly similar to the trademark HONDA because the disputed domain name contains the entirety of the trademark HONDA and merely adds the geographically descriptive term “Babylon”. The addition of a descriptive term to a famous trademark is not sufficient to overcome a claim of confusing similarity.
The Panel therefore finds that the disputed domain name is confusingly similar to the trademark HONDA in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
Para 4(c) of the Policy sets out that rights or legitimate interests in a domain name may be demonstrated by showing that:
(i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
(ii) Respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.
The consensus view of UDRP panels is that “a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests.” Once the complainant has made this prima facie case, the “respondent carries the burden of demonstrating rights or legitimate interests in the domain name” (WIPO Overview Of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 2.1).
Complainant has stated exclusive rights in the HONDA trademark and has not authorized Respondent to register and use the disputed domain name <baylonhonda.com>. Respondent is not affiliated with or related to Complainant, nor is Respondent licensed or authorized to use the HONDA trademark. Respondent is in default and has not provided any evidence in its own favor. Based on the evidence submitted to the Panel, Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name.
On these grounds, 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.
The Panel finds that Respondent knew of Complainant and Complainant’s HONDA trademark when it registered the disputed domain name. As set above, HONDA is a well-known trademark and the Panel therefore infers that Respondent was aware or must have been aware of Complainant’s trademark when Respondent registered the disputed domain name. Respondent therefore registered the disputed domain name in bad faith.
The disputed domain name redirected visitors to websites of Complainant’s competitors, displayed pay-per-click advertisements targeted towards the domain name’s trademark meaning and resolved to a webpage on Honda’s own website. Paragraph 4(b) of the Policy sets out four illustrative circumstances of the registration and use of a domain name in bad faith. Those circumstances include:
“(iv) by using the disputed domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] website 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 [the respondent’s] website or location or of a product or service on [Respondent’s] website or location.”
It is well established that the use of a domain name that incorporates a trademark to offer the products of competitors of the trademark owner is likely to cause confusion among consumers as to the source of products or to confusingly suggest sponsorship by the trademark owner, and is therefore evidence of bad faith. See Six Continent Hotels, Inc. v. The Omnicorp, WIPO Case No. D2005-1249. The undisputed evidence of Complainant shows that Respondent intends to benefit from the value of the HONDA Mark demonstrated by Respondent’s use of the disputed domain name resolving to websites of competing auto manufacturers and displaying pay-per-click advertisements targeted toward the domain name’s trademark meaning, namely automobiles. Respondent therefore intentionally attempted to attract, for commercial gain, Internet users visiting websites of Complainant and clicking on pay-per-click advertisements. The Panel therefore finds that the fame of Complainant’s mark combined with the use of the disputed domain name as described is evidence of bad faith registration and use.
Furthermore, it is well known that it is also bad faith for Respondent to use a domain name that incorporates Complainant’s trademark and to redirect Internet traffic, even if to Complainant’s website or a portion of Complainant’s own website because it interferes with Complainant’s ability to control the use of its own trademarks on the Internet, including whether and how domain names incorporating those trademarks resolve to particular websites. It also raises the risk that Respondent could use the disputed domain name to resolve to Respondent’s own website or to a website of another competitor. See Ameriquest Mortgage Co. v. Jason Banks, WIPO Case No. D2003-0293.
Therefore, this Panel finds that Respondent registered and used the disputed domain names in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
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 <babylonhonda.com> be transferred to Complainant.
Christian Gassauer-Fleissner
Sole Panelist
Date: July 8, 2015