American Honda Motor Co. Inc. v. Piazza Management Company
Claim Number: FA2010001917164
Complainant is American Honda Motor Co. Inc. (“Complainant”), represented by Samantha Markley of Loza & Loza, LLP, California, USA. Respondent is Piazza Management Company (“Respondent”), represented by Butera Beausang Cohen & Brennan, Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wrighthonda.com>, registered with Network Solutions, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Michael A. Albert as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 15, 2020; the Forum received payment on October 15, 2020.
On October 20, 2020, Network Solutions, LLC confirmed by e-mail to the Forum that the <wrighthonda.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 21, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 16, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to email@example.com. Also on October 21, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on November 16, 2020.
On November 24, 2020, Complainant filed an Additional Submission.
On November 23, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Michael A. Albert as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant is a wholly-owned subsidiary of the Japanese corporation Honda Motor Co., Ltd., one of the world’s leading automobile companies. Complainant has rights in the HONDA mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 826,779, registered Apr. 4, 1967). Respondent’s <wrighthonda.com> domain name is confusingly similar to Complainant’s mark as Respondent merely adds the generic or geographically descriptive term “wright” and the “.com” generic top-level domain (“gTLD”).
Respondents has no rights or legitimate interests in the <wrighthonda.com> domain name as Respondent has not been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark in such a manner. While Respondent is an authorized Honda dealer and sells Honda automobiles, Respondent is not operating under the name WRIGHT HONDA. Rather, Respondent is operating under the name PIAZZA HONDA OF SPRINGFIELD. As such, Respondent does not have a legitimate interest in the domain name <wrighthonda.com>. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is using the disputed domain name to redirect to Respondent’s Complainant-authorized website.
Respondent registered and uses the <wrighthonda.com> domain name in bad faith. Specifically, Respondent is redirecting Internet users to Respondent’s legitimate webpage for commercial gain. Additionally, Respondent had actual or constructive knowledge of Complainant’s rights in the HONDA mark at the time of registration.
Respondent’s domain name is not using the term “Wright” in reference to the geographic location of Wright, Pennsylvania, but in reference to Arthur Wright, who has a significant amount of goodwill as a Honda dealer in Eastern Pennsylvania.
Complainant has made no showing of any actual confusion on the part of customers who might believe that Wright Olds or Respondent is actually “Honda” the automobile manufacturer, as a consequence of the use of the domain name <wrighthonda.com>.
Over the years Arthur Wright has been or is a long time partner in several dealerships with Vincent Piazza, who is the current voting shareholder of Wright Olds and the principal of Respondent Piazza Management Company. Wright Olds registered the fictitious name “Wright Honda” for almost fourteen years (1990-2004). During this time, Respondent submits that Wright Olds built up significant business good will in the name and, consequently rights to that name as a “trade name.” The fictitious name itself was registered to Wright Olds because Arthur Wright, Jr. has and had affiliation with Respondent and the family of dealerships of which Wright Olds is a part. Mr. Wright is well-known and highly regarded as a Honda dealer.
Complainant has not sufficiently shown that Respondent registered and used the disputed domain name in bad faith.
C. Additional Submissions
Complainant argues that the addition of the term “WRIGHT” referring to a person, Arthur Wright, Jr., rather than a geographic location, does not distinguish the domain from Complainant’s mark. “In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark.” See WIPO Overview 3.0, section 1.7.
Complainant also argues that Respondent’s rights in the WRIGHT HONDA mark have been abandoned due to disuse for many years.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant claims rights in the HONDA mark through its registration of the mark with the USPTO (e.g., Reg. No. 826,779, registered Apr. 4, 1967). Registration with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that the Complainant has rights in the HONDA mark under Policy ¶ 4(a)(i).
Complainant argues Respondent’s <wrighthonda.com> domain name is confusingly similar to Complainant’s mark as Respondent merely adds the generic or geographically descriptive term “wright” and the “.com” gTLD. Adding a generic or geographic term and a gTLD to a complainant’s mark may not sufficiently distinguish a disputed domain name from the mark under Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). Therefore, the Panels finds Respondent’s <wrighthonda.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See High Adventure Ministries v. JOHN TAYLOE / VOICE OF HOPE, FA 1737678 (Forum Aug. 9, 2017) (holding that a complainant’s failure to satisfactorily meet its burden suggests respondent has rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also JJ206, LLC v. Erin Hackney, FA 1629288 (Forum Aug. 25, 2015) (finding that a respondent may defeat a complainant’s established case by showing it has made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services).
Respondent argues Respondent is commonly known by the disputed domain name as it is affiliated with Respondent’s personal name. Using a personal name in connection with a disputed domain name may establish rights and legitimate interest in the disputed domain name under Policy ¶ 4(c)(ii). See G. A. Modefine S.A. v. Mani, D2001-0537 (WIPO July 20, 2001) (finding that the respondent had rights and legitimate interests in the <armani.com> domain name, where the domain name reflects the initials of the respondent’s first and middle name, combined with its entire last name). Here, Respondent contends that the “wright” portion of the disputed domain name is connected with Arthur Wright, who is an affiliate of Respondent.
Additionally, Respondent argues Respondent uses the disputed domain name for a bona fide purpose as the disputed domain name is used in connection with the sale of cars. Using a disputed domain name to legitimately sell goods offered by a complainant may be a bona fide purpose per Policy ¶¶ 4(c)(i) or (iii). See Inter-Tel, Inc. v. Marcus, FA 727697 (Forum July 27, 2006) (finding that the respondent’s use of the disputed domain name in the resale of complainant’s products constitutes a bona fide offering of goods or services in accord with Policy ¶ 4(c)(i) where the respondent actually offered the goods or services at issue, the respondent used the site to sell only the trademarked goods, the site accurately disclosed the registrant’s relationship with the trademark owner, and the respondent did not try to corner the market in all domain names, (which would have thus deprived the trademark owner of reflecting its own mark in a domain name)). Here, Respondent contends that the domain name is connected to an affiliate of Respondent and offers Complainant’s cars in a legitimate manner.
Therefore, the Panel finds that Complainant has failed to meet its burden to show that Respondent lacks rights or legitimate interest in the disputed domain name under Policy ¶ 4(a)(ii).
Complainant contends in its supplemental submission that any rights Respondent had in the WRIGHT HONDA mark have been abandoned due to lengthy disuse. This argument fails for two reasons. First, even under applicable trademark law, Respondent fails to meet the high burden to show trademark abandonment. The record suggests that Respondent has continued to make some uses of the term WRIGHT in connection with its Honda automobile sales, as the name of one of the founders, owners, or affiliates of Respondent, up to and including recently. Secondly, trademark abandonment, even if shown, does not retroactively render a good-faith domain name registration improper.
As discussed above, Complainant has failed to meet its burden to show that Respondent lacks rights or legitimate interest in the <wrighthonda.com> domain name under Policy ¶ 4(a)(ii) and so has likewise not established bad faith registration. See Record Connect, Inc. v. Chung Kit Lam / La-Fame Corporation, FA 1693876 (Forum Nov. 3, 2016) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Sheet Labels, Inc. v. Harnett, Andy, FA 1701423 (Forum Jan. 4, 2017) (finding that because the respondent had rights and legitimate interests in the disputed domain name, its registration of the name was not in bad faith).
Complainant having failed to establish all three of the elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <wrighthonda.com> domain name REMAIN WITH Respondent.
Michael A. Albert, Panelist
Dated: December 7, 2020
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