DECISION

 

American Honda Motor Co., Inc. v. CATCHDADDY LLC / Registration Private

Claim Number: FA2310002064905

 

PARTIES

Complainant is American Honda Motor Co., Inc. ("Complainant"), represented by Samantha Markley of Loza & Loza, LLP, California, USA. Respondent is CATCHDADDY LLC / Registration Private ("Respondent"), Arizona, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <motocompacto.com>, registered with Dynadot Inc.

 

PANEL

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.

 

Ho-Hyun Nahm, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on October 4, 2023; Forum received payment on October 4, 2023.

 

On October 5, 2023, Dynadot Inc confirmed by e-mail to Forum that the <motocompacto.com> domain name is registered with Dynadot Inc and that Respondent is the current registrant of the name. Dynadot Inc has verified that Respondent is bound by the Dynadot Inc 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 9, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 30, 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@motocompacto.com. Also on October 9, 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 October 31, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

i) 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. Complainant has the exclusive right to use and protect trademarks belonging to Honda Motor Co., Ltd. in the United States. Complainant has attained common law rights in the MOTOCOMPACTO mark with priority rights of July 23, 2020. The disputed domain name is confusingly similar to Complainant's MOTOCOMPACTO mark because it contains the mark in its entirety, merely adding the ".com" generic top-level domain ("gTLD").

 

ii) Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant licensed Respondent to use its MOTOCOMPACTO mark in the disputed domain name. Respondent does not use the disputed domain name in connection with any bona fide offering of goods or services, nor a legitimate non-commercial or fair use. Instead, Respondent offers the disputed domain name for sale for $4,995.

 

iii) Respondent registered and uses the disputed domain name in bad faith. Respondent had constructive notice of Complainant's ownership of the MOTOCOMPACTO mark before its registration of the disputed domain name. The disputed domain name resolves to an inactive website. Respondent offers the disputed domain name for sale for an amount in excess of out-of-pocket expense. 

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

1. The disputed domain name was registered on November 17, 2022.

 

2. Complainant filed U.S. Trademark Application No. 90/069527 for the mark MOTOCOMPACTO on July 23, 2020.

 

3.  Complainant has established common law rights in the MOTOCOMPACTO with priority rights of July 23, 2020. 

 

4. The disputed domain name remains inactive.

 

5. The disputed domain name resolves to a "for sale" webpage offering it for $4,995.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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.

 

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 Jurisprudential Overview 3.0 at ¶ 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").

 

Identical and/or Confusingly Similar

Complainant asserts common law rights in the MOTOCOMPACTO mark with priority rights of July 23, 2020. The Panel finds that Complainant filed U.S. trademark application no. 90/069527 for the mark MOTOCOMPACTO in connection with "land vehicles, namely, self-balancing electric scooters; electrically-powered motor scooters" in Class 12 on July 23, 2020. The Panel further finds that Complainant has attained a consumer recognition in the industry in connection with the MOTOCOMPACTO mark by virtue of widespread media coverage as evidenced by Complainant's exhibits. An Internet news search for the term "motocompacto" yields 325 results. A representative sample of news and media coverage includes:

 

-"Honda's Motocompacto scooter will satisfy your secret desire to ride an electric suitcase to work," published by The Verge;

-Honda's adorable '80s microscooter is back and electrified for the 21st century," published by engadget;

-"Honda brings back its '80s MotoCompo micro-motorcycle, but this time it's electric," published by electrek;

-"Hello, Motocompacto! New Honda Mini-E-Cycle Remasters '80s Icon," published by MotorTrend; and

-"Honda Launches $995 Fold-Up Urban E-Scooter," published by Forbes.

 

Each of the articles above discusses Honda's MOTOCOMPACTO electric scooter in detail, and demonstrates that the public is well aware of this product. Complainant also submits a Declaration of Complainant's marketing manager, which supports the foregoing statements. This Declaration states that on September 14, 2023, Complainant made a press release announcing Complainant's MOTOCOMPACTO electric scooter. Leading up to Complainant's press release, Complainant had spent at least $700,000 on marketing the MOTOCOMPACTO electric scooter.

 

The Panel notes that to establish unregistered or common law trademark rights for purposes of the Policy, Complainant must show that its mark has become a distinctive identifier which consumers associate with Complainant's goods and/or services. The Panel is of the view that a pending trademark application would not by itself establish trademark rights within the meaning of UDRP paragraph 4(a)(i). The Panel finds that Complainant has established common law rights in the MOTOCOMPACTO with priority rights of July 23, 2020 under Policy ¶ 4(a)(i) on the grounds that i) the filing of an intent-to-use trademark application with the USPTO, subject to the mark being registered, may constitute constructive use of the mark and confer priority rights as of the filing date under United States trademark law; ii) based on vast media efforts publicizing the launching of the MOTOCOMPACTO e-Scooter, the public is likely to associate the mark MOTOCOMPACTO with Complainant and Complainant's products; and iii) Complainant's mark is rather unique and distinctive, and thus it does not require higher degree of consumer recognition unlike a generic or descriptive mark. See Universal Remanufacturing Co. LLC d/b/a Phoenix Chassis v. Super Privacy Service LTD c/o Dynadot and Domain Sales (expired domain caught by auction winner c/o Dynadot), D2022-3700 (WIPO Dec. 23, 2022) (finding that under United States trademark law, the filing of an intent-to-use trademark application, subject to the mark being registered, constitutes constructive use of the mark and confers priority rights as of the date of the application's filing date. This mark has not yet been registered, and hence the "intent to use" application, by itself, may not be sufficient under the UDRP to recognize Complainant's trademark rights on that basis. Although the evidence presented is thin, the Panel finds it sufficient to recognize Complainant's common law trademark rights in PHOENIX CHASSIS in these circumstances, especially given the relatively low "standing" threshold for trademark rights under the first element of the UDRP.).

 

Complainant argues that the disputed domain name is confusingly similar to Complainant's MOTOCOMPACTO mark because it contains the mark in its entirety, merely adding the ".com" gTLD. The Panel agrees and finds that the disputed domain name is confusingly similar to Complainant's MOTOCOMPACTO mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) ("Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests").

 

Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain name because Respondent has not been licensed nor commonly known by the disputed domain name; and the disputed domain name is being offered for sale. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA 1613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists "Dale Anderson" as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization to use a complainant's mark may indicate that the respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The Panel notes that the WHOIS information for the disputed domain name lists the registrant as "CATCHDADDY LLC / Registration Private." Additionally, there is no evidence to suggest that Respondent was authorized to use Complainant's mark in the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

 

Complainant argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate non-commercial or fair use. Complainant specifically points out that the disputed domain name remains inactive and resolves to a "for sale" webpage offering it for $4,995. The Panel notes that the use of the disputed domain name which is confusingly similar to Complainant's mark to sell it for the amount of out-of-pocket expense does not constitute a bona fide offering of goods or services or any legitimate non-commercial or fair use. See Enterprise Holdings, Inc. v. Huang Jia Lin, FA 1614086 (Forum May 25, 2015) ("Accordingly, the Panel finds that Respondent's general attempt to sell the disputed domain name is further evidence of Respondent's lack of rights and legitimate interests under Policy ¶ 4(a)(ii).").

 

The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

 

Registration and Use in Bad Faith

Complainant contends that Respondent registered and uses the disputed domain name in bad faith. Respondent is offering to sell the disputed domain name, and a general offer for sale may be sufficient to establish registration and use in bad faith per Policy ¶ 4(a)(iii). See Airbnb, Inc. v. Super Privacy Service LTD c/o Dynadot, FA 1821386 (Forum Jan. 10, 2019) ("Complainant argues that Respondent registered and uses the <airbnbb.com> domain name in bad faith by offering it for sale.  The Panel agrees and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i)."). Further, the offer is for a price far in excess of the out-of-pocket registration fee. An offer to sell a disputed domain name with an inflated price may act as further evidence of bad faith registration and use. See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA 1625332 (Forum July 17, 2015) ("A respondent's general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).); see also Retail Royalty Company and AE Direct Co LLC v. Whois Foundation / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin, FA 1821246 (Forum Jan. 13, 2019) ("Respondent lists the disputed domain name for sale for $5,759, which is a price well in excess of out of pocket costs. Such an offering can evince bad faith under Policy ¶ 4(b)(i)."). Complainant has provided a screenshot of the disputed domain name's resolving webpage offering the disputed domain name for $4,995. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <motocompacto.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Ho-Hyun Nahm, Esq., Panelist

Dated: November 1, 2023