DECISION

 

American Honda Motor Co., Inc. v. Kanokann Srisuwan

Claim Number: FA2310002067194

 

PARTIES

Complainant is American Honda Motor Co., Inc. ("Complainant"), represented by Samantha Markley of Loza & Loza, LLP, California, USA. Respondent is Kanokann Srisuwan ("Respondent"), Thailand.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <acurazdx.com> ("Domain Name"), registered with Internet Domain Service BS Corp.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Nicholas J.T. Smith as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on October 20, 2023; Forum received payment on October 20, 2023.

 

On October 23, 2023, Internet Domain Service BS Corp confirmed by e-mail to Forum that the <acurazdx.com> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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 25, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 14, 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@acurazdx.com. Also on October 25, 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 formal response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.

 

On November 15, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith 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

Complainant, American Honda Motor Co. Inc., is a wholly-owned subsidiary of Honda Motor Co., Ltd., one of the world's leading automobile companies. Complainant has rights in the ACURA mark based on its registration with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,407,602, registered Sept. 2, 1986). Complainant also has rights in the ZDX mark based on its registration with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,733,342, registered Jan. 5, 2010). Respondent's <acurazdx.com> domain name is confusingly similar to both of Complainant's marks because it wholly incorporates both the ACURA and ZDX marks while adding the ".com" generic top-level domain ("gTLD") to form the Domain Name.

 

Respondent does not have any rights or legitimate interests in the <acurazdx.com> domain name. Respondent is not commonly known by the Domain Name, nor has Respondent received authorization from Complainant to use its ACURA or ZDX mark. Additionally, Respondent is not using the Domain Name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use because Respondent is not actively using the domain name.

 

Respondent registered and uses the <acurazdx.com> domain name in bad faith. Respondent uses the Domain Name to attract users for commercial gain by taking advantage of the consumer confusion between Complainant's ACURA or ZDX marks and the Domain Name. Respondent's bad faith is further indicated by the inactive holding of the Domain Name. Additionally, Respondent had actual knowledge of Complainant's rights in the ACURA or ZDX marks.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.  However on October 26, 2023 a representative of Respondent contacted Forum to offer the sale of the Domain Name to Complainant for a sum likely greater than any out of pocket costs incurred by Respondent in respect of the <acurazdx.com> domain name.

 

FINDINGS

Complainant holds trademark rights for the ACURA and ZDX marks.  The Domain Name is confusingly similar to each of Complainant's ACURA and ZDX marks.  Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used the Domain Name in bad faith.

 

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 has rights in the ACURA and ZDX marks based on registration with the USPTO (e.g., Reg. No. 1,407,602, registered Sept. 2, 1986 and Reg. No. 3,733,342, registered Jan. 5, 2010). Registration of a mark with the USPTO sufficiently confers a complainant's rights in a mark for the purposes of Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office ("USPTO").").

 

The Panel finds that the <acurazdx.com> domain name is confusingly similar to both marks as it fully incorporates the ACURA and ZDX marks and adds the ".com" gTLD. Merely adding a gTLD to a combination of a complainant's marks does not distinguish a disputed domain name from the marks under Policy ¶4(a)(i). See Hewlett-Packard Development Company, L.P. v. Yangxiaoyi / Qingyuan Tianheng Trading Company Ltd., FA 1625637 (Forum June 23, 2015) (finding the combination of a complainant's marks does not allow a respondent to avoid a finding of confusing similarity under Policy ¶4(a)(i)); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) ("A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.").

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have 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 interest 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."). The Panel holds that Complainant has made out a prima facie case.

 

Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the ACURA or ZDX marks. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. 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)); see also Kohler Co. v. Privacy Service, FA 1621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where "Privacy Service" was listed as the registrant of the disputed domain name).  The WHOIS lists "Kanokann Srisuwan" as registrant of record. Coupled with Complainant's unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).

 

The Domain Name is inactive and there is no other evidence of any intention to use the Domain Name for any purpose, be it a bona fide offering or legitimate non-commercial use. In the absence of any additional evidence (none available in the present case) inactive holding of a disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See CrossFirst Bankshares, Inc. v Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) ("Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).").  

 

Moreover, shortly after the present proceeding was commenced a representative of Respondent sent an e-mail to Forum seeking payment of a sum in exchange for transferring the Domain Name that was in excess of any likely out-of-pocket costs that could have been incurred by Respondent in respect of the Domain Name.  Absent any other explanation, this indicates that the Domain Name was registered for the purpose of selling it to Complainant, for a sum in excess of any out-of-pocket costs that could have been incurred by Respondent.  Absent any explanation by Respondent for its conduct, such conduct is not by itself a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).  See AOL Inc. v. YourJungle Privacy Protection Service aka Whois Agent, FA 1533324 (Forum Jan. 17, 2014) ("Respondent has offered the <aoljobsweek.com> domain name for sale to the general public, which demonstrates that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).").

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

The Panel finds on the balance of probabilities that, at the time of registration of the Domain Name, April 24, 2023, Respondent had actual knowledge of Complainant's ACURA and ZDX marks. The Complainant had, at the time of registration, used the ACURA mark, a coined word with no obvious meaning, for almost 25 years. Furthermore, there is no obvious explanation, nor has one been provided, for an entity to register a domain name that wholly incorporates both the ACURA and ZDX marks other than to take advantage of Complainant's reputation in the ACURA and ZDX marks. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).

 

The Panel notes that the actions of Respondent prior to commencement of the proceeding do not fall under the arguments set out in Policy ¶ 4(b). However, these arguments are merely illustrative rather than exclusive to support a finding of bad faith.  See Bloomberg Finance L.P. v. Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services, FA 1714157 (Forum Mar. 8, 2017) (determining that Policy ¶ 4(b) provisions are mere illustrative of bad faith, and that the respondent's bad faith may be demonstrated by other allegations of bad faith under the totality of the circumstances).  It is well accepted that the elements of Policy ¶ 4(b) are not exclusive and that a Panel may consider all of the circumstances of a given case, including passive holding, in making its bad faith analysis.  See Telstra Corporation Limited v. Nuclear Marshmallows, Case No. D2000-0003 (WIPO Feb. 18, 2000) (after considering all the circumstances of a given case, it is possible that a "[r]espondent's passive holding amounts to bad faith."); Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) ("Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website."). 

 

Respondent has, without alternative explanation (or active use), registered a domain name that wholly incorporates the coined and well-known ACURA and ZDX marks. Inactive holding of a domain name can be evidence of bad faith under Policy ¶ 4(a)(iii) and, after considering the totality of the circumstances (including the nature of the ACURA and ZDX marks) and in the absence of any Response or other explanation for such inactivity by the Respondent, the Panel finds that this inactive holding of the Domain Name amounts to use in bad faith per Policy ¶ 4(a)(iii).

 

In addition, Respondent has, following the commencement of the proceeding offered the Domain Name for sale to the Complainant for a sum greater than any likely out-of-pocket costs.  An offer to sell a disputed domain name may be evidence of bad faith per Policy ¶ 4(b)(i).  See Campmor, Inc. v. GearPro.com, FA 197972 (Forum Nov. 5, 2003) ("Respondent registered the disputed domain name and offered to sell it to Complainant for $10,600. This demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(i).").  In the present case, given the nature of the Domain Name, the content of the e-mail sent by Respondent's representative and the lack of alternative explanation provided by Respondent, the Panel finds that the Respondent registered and used the Domain Name in bad faith pursuant to Policy ¶ 4(b)(i).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).

 

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 <acurazdx.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Nicholas J.T. Smith, Panelist

Dated: November 15, 2023