American Honda Motor Co., Inc. v. Hulmiho Ukolen
Claim Number: FA2302002033372
Complainant is American Honda Motor Co., Inc. (“Complainant”), United States of America (“United States”), represented by Loza & Loza, LLP, United States. Respondent is Hulmiho Ukolen (“Respondent”), Finland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pasadenahonda.com> (the “disputed domain name”), registered with Gransy, s.r.o. (the “Registrar”).
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to Forum electronically on February 24, 2023; Forum received payment on February 24, 2023. On March 1, 2023, the Registrar confirmed by e-mail to Forum that the <pasadenahonda.com> disputed domain name is registered with Gransy, s.r.o. and that Respondent is the current registrant of the name. The Registrar has verified that Respondent is bound by the Gransy, s.r.o. 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 March 2, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 22, 2023 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 postmaster@pasadenahonda.com. Also on March 2, 2023, 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.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On March 30, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Lynda M. Braun as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a wholly-owned subsidiary of the Japanese corporation Honda Motor Co., Ltd., one of the world’s leading automobile companies. Complainant was founded in 1959 as Honda Motor Co., Ltd.’s first overseas subsidiary. Complainant has the exclusive right to use and protect trademarks belonging to Honda Motor Co., Ltd. in the United States. Honda is the world’s largest motorcycle manufacturer, the world’s largest engine maker, one of the world’s leading automakers, and one of the best-known and most well-respected companies worldwide.
The trademarks owned by Honda Motor Co., Ltd. and permitted to be used in the United States by Complainant are, among others, the following: HONDA, United States Registration No. 826,779, registered on April 4, 1967, in International Classes 7 and 12; H HONDA logo, United States Registration No. 2,390,535, registered on September 26, 2000, in International Class 35; H HONDA logo, United States Registration No. 2,390,539, registered on September 26, 2000, in International Classes 16, 25 and 35; and HONDA, United States Registration No. 5,933,279, registered on December 10, 2019, in International Class 35 (hereinafter collectively referred to as the “HONDA Mark”).
Complainant contends that it has rights in the HONDA Mark through its registration with the United States Patent and Trademark Office (“USPTO”). Complainant also contends that the disputed domain name is confusingly similar to Complainant’s trademark as it incorporates the HONDA Mark in its entirety preceded by the geographic term “pasadena” and followed by the “.com” generic Top-Level Domain (“gTLD”).[i]
Complainant claims that Respondent lacks rights and legitimate interests in the disputed domain name since Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed or otherwise permitted Respondent to use its HONDA Mark in the disputed domain name.
Complainant also contends that Respondent registered and is using the disputed domain name in bad faith because Respondent attracts Internet users for commercial gain and Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the HONDA Mark.
B. Respondent
Respondent failed to submit a Response in this proceeding. The disputed domain name was registered on March 31, 1998, more than thirty years after Complainant received United States Registration No. 826,779 for the HONDA Mark. Respondent’s disputed domain name resolved to Volvo’s official website at “www.volvo.com”, and thus, was in competition with Complainant, demonstrating bad faith. An Internet user attempting to arrive at the Honda website would be redirected to the Volvo website, although that is not the website the user wanted to reach.[ii]
The Panel finds that Complainant has registered trademark rights in the HONDA Mark as described above. The Panel also finds that the disputed domain name is confusingly similar to Complainant’s HONDA Mark, that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered and is being used in bad faith.
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 disputed domain name should be cancelled or transferred:
(1) the disputed 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 disputed domain name; and
(3) the disputed domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Overview 3.0 at section 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Panel finds that the disputed domain name is confusingly similar to the HONDA Mark as set forth below.
The Panel further finds that Respondent’s disputed domain name is confusingly similar to Complainant’s HONDA Mark as it consists of the entirety of the HONDA Mark preceded by the geographic term “pasadena”, and then followed by the gTLD “.com”. The addition of a geographic term and a gTLD fail to distinguish a disputed domain name from a trademark per Policy paragraph 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (confusing similarity exists where a disputed domain name contains a complainant’s entire mark and differs only by the addition of a term and gTLD; the differences between the disputed domain name and its incorporated trademark are insufficient to differentiate one from the other for purposes of the Policy). There are several other panel decisions that have reached the same conclusion with respect to disputed domain names that include the HONDA Mark followed or preceded by a geographic term and followed by a gTLD.
Accordingly, the Panel finds that Policy paragraph 4(a)(i) has been established by Complainant.
In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name under Policy paragraph 4(a)(ii), and then the burden shifts to Respondent to show that it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interests in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Here, the Panel holds that Complainant has made out a prima facie case.
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name as Respondent has not provided evidence nor proven that it is commonly known by the disputed domain name, nor has Complainant authorized, licensed or otherwise permitted Respondent to use the HONDA Mark. Moreover, Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.
Further, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent registered and is using the disputed domain name to trade upon Complainant’s global reputation. As a result, Respondent cannot claim rights or legitimate interests in the disputed domain name based on the notion that it has used the disputed domain name or a corresponding name in connection with a bona fide offer of goods or services.
Complainant asserts that Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor any noncommercial or fair use. Under Policy paragraphs 4(c)(i) and (iii), operating a disputed domain name that resolves to a competing webpage is not a bona fide offering of goods or services, nor any noncommercial or fair use. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). The disputed domain name redirects Internet users to the official website for Volvo, which clearly competed with the Honda website that the Internet users wished to reach. Therefore, the Panel concludes that Respondent’s use of the disputed domain name is not a bona fide offering of goods or services, nor a noncommercial or fair use.
Accordingly, the Panel finds that Policy paragraph 4(a)(ii) has been established by Complainant.
This Panel finds that, based on the record, Complainant has demonstrated the existence of Respondent’s bad faith registration and use pursuant to paragraph 4(b)(iv) of the Policy as described below.
First, the Panel finds that Respondent registered and is using the disputed domain name in bad faith by attracting users for commercial gain. Under Policy paragraph 4(b)(iv), using a disputed domain name to attract users for commercial gain and create a likelihood of confusion is evidence of bad faith registration and use. See CAN Financial Corporation v. William Thomson / CNA Insurance, FA1401001541484 (Forum Feb. 28, 2014) (finding that the respondent had engaged in bad faith under Policy paragraph 4(b)(iv) by using a confusingly similar domain name to attract Internet users to its own website where it sold competing insurance services). Here, the disputed domain name initially resolved to Volvo‘s official website at “www.volvo.com”, which displayed Volvo products. Thus, the webpages in the disputed domain name’s resolving Volvo website competed with those in the Honda website, demonstrating use in bad faith.
Second, the fame of the HONDA Mark, which was used and registered by Complainant thirty years in advance of Respondent’s registration of the disputed domain name, renders it wholly implausible that Respondent created the disputed domain name independently. Moreover, where a disputed domain name is so obviously connected with a well-known name, product or service, its use by someone with no connection to the name, product or service indicates bad faith. Therefore, the Panel concludes that Respondent had actual knowledge of Complainant’s rights in the HONDA Mark, and this constitutes bad faith under Policy paragraph 4(a)(iii). It strains credulity to believe that Respondent had not known of the Complainant or its HONDA Mark when registering the disputed domain name.[iii] Thus, as here, prior knowledge of a complainant’s trademark before registering a domain name is sufficient to find bad faith under Policy paragraph 4 (a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum February 6, 2014) (finding actual knowledge due to the domain name chosen and the use made of it).
Accordingly, the Panel finds that Policy paragraph 4(a)(iii) has been established by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pasadenahonda.com> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: April 9, 2023
[i] It should be noted that there is an authorized Honda dealership operating under the name HONDA OF PASADENA in Pasadena, California, United States. All genuine, authorized HONDA dealerships operate as, e.g., “HONDA OF (geographic name”). Some examples of genuine Honda dealerships are HONDA OF MANHATTAN, HONDA OF CHICAGO, HONDA of BROOKLYN, etc.
[ii] As of the writing of this Decision, the disputed domain name resolves to a website that has information about Tri Honda dealers. Respondent likely believed that changing the resolving website would help Respondent avoid bad faith use in this proceeding.
[iii] Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the HONDA Mark, as well as the fact that Complainant is the largest manufacturer of motorcycles and engines, and one of the world’s leading automakers.
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