American Honda Motor Co. Inc. v. Ben Kopf
Claim Number: FA2111001974140
Complainant is American Honda Motor Co. Inc. (“Complainant”), represented by Samantha Markley of Loza & Loza, LLP, California, USA. Respondent is Ben Kopf (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <acuralosgatos.com>, registered with IONOS SE.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 19, 2021; the Forum received payment on November 19, 2021.
On December 1, 2021, IONOS SE confirmed by e-mail to the Forum that the <acuralosgatos.com> domain name is registered with IONOS SE and that Respondent is the current registrant of the name. IONOS SE has verified that Respondent is bound by the IONOS SE 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 December 3, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 23, 2021 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@acuralosgatos.com. Also on December 3, 2021, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On December 30, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant manufactures a variety of vehicles, including cars. Complainant has rights in the ACURA mark through its registrations with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. 1,407,602, registered Sep. 2, 1986; Reg. 1,644,580, registered May 14, 1991). See Compl. Exs. B – F. Respondent’s <acuralosgatos.com> domain name is identical or confusingly similar to Complainant’s mark as it incorporates the mark in its entirety and adds the geographic term “los gatos”, along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <acuralosgatos.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its ACURA mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead inactively holds the disputed domain name’s resolving website.
Respondent registered and uses the <acuralosgatos.com> domain name in bad faith. Respondent attracts internet users for commercial gain using Complainant’s mark. Respondent had knowledge of Complainant’s rights in the ACURA mark at the time of registration. Respondent inactively holds the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a wholly-owned United States subsidiary of the Japanese corporation Honda Motor Co., Ltd., one of the world’s leading automobile companies.
2. Complainant has established its trademark rights in the ACURA mark through its registrations with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. 1,407,602, registered Sep. 2, 1986; Reg. 1,644,580, registered May 14, 1991).
3. Respondent registered the <acuralosgatos.com> domain name on September 16, 2011.
4. Respondent has caused the disputed domain name to be in inactively held and to be redirected to the main webpage of the registrar of the domain name.
5. The evidence shows that Respondent has no rights or legitimate interests in the domain name and that the 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 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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the ACURA mark through its registrations with the USPTO (e.g. Reg. 1,407,602, registered Sept. 2, 1986; Reg. 1,644,580, registered May 14, 1991). See Compl. Exs. B – F. Registration with the USPTO is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). Therefore, as the Panel agrees, it finds Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s ACURA mark. Complainant argues that Respondent’s <acuralosgatos.com> domain name is identical or confusingly similar to Complainant’s ACURA mark. Under Policy ¶ 4(a)(i), adding a geographic term and the “.com” gTLD is generally insufficient in differentiating a disputed domain name from the mark it incorporates. See General Motors LLC v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, FA 1656166 (Forum Feb. 12, 2016) (finding respondent’s <gm-uzbekistan.com> domain name confusingly similar to complainant’s GM mark as the addition of the geographic term “uzbekistan” is inconsequential to a Policy ¶ 4(a)(i) analysis). The disputed domain name incorporates Complainant’s ACURA mark in its entirety and adds the term “los gatos”, which is an incorporated town in California, along with the “.com” gTLD. The domain name therefore implies that it is an official domain name of the owner of the ACURA trademark and that it will lead to an official website of Complainant dealing with its ACURA goods and services in Los Gatos, both of which implications are false and misleading. Therefore, as the Panel agrees with the submissions of Complainant, it finds Respondent’s domain name is identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). This decision is consistent with decisions in a series of cases cited by Complainant such as American Honda Motor Co., Inc. v. Whoisproxy.com / Amir Cohen, Hush Privacy Protection Ltd., WIPO Case No. Case No. D2019-2246.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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”).
(a) Respondent has chosen to take Complainant’s trademark and to use it in its domain name, incorporating Complainant’s ACURA mark and adding the geographic term “los gatos”, which is an incorporated town in California, and which does not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the <acuralosgatos.com> domain name on September 16, 2011;
(c) Respondent does not use the disputed domain name for any bona fide offerings of goods or services, nor any legitimate noncommercial or fair uses, but has caused the disputed domain name to be inactively held and to be redirected to the main webpage of the registrar which is used to promote the goods and services of the regstrar;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent is not commonly known by the <acuralosgatos.com> domain name, nor has Complainant authorized or licensed Respondent to use its ACURA mark in the disputed domain name. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS Information may demonstrate that a Respondent is not commonly known by a disputed domain name, while a lack of evidence demonstrating otherwise may affirm a Complainant’s assertion that it never authorized or licensed Respondent to use its mark in the disputed domain name. See Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain name where the WHOIS information listed Respondent as “Operi Manaha,” and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.). The WHOIS of record identifies Respondent as “Ben Kopf”, and nothing in the record rebuts Complainant’s submission that it never authorized or licensed Respondent to use its ACURA mark in the domain name. See Registrar Verification Email. Therefore, as the Panel agrees, it finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the <acuralosgatos.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), past panels have found that inactively holding a disputed domain name, and/or hosting unrelated content on the domain name’s resolving website are generally not considered bona fide offerings of goods or services, nor legitimate noncommercial or fair uses. See Haru Holding Corporation v. AI Matusita, FA 1679867 (Forum Aug. 11, 2016) (holding that “unrelated use [of a disputed domain name] by a respondent consists of neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use”); see also Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Complainant provides a screenshot of the disputed domain name’s resolving website, which redirects to registrar’s main webpage which is used to promote the goods and services of the registrar. See Compl. Ex. L. Complainant argues this redirection shows Respondent is not actively using the site for any purpose. Therefore, as the Panel agrees, it finds Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <acuralosgatos.com> domain name in bad faith. Under Policy ¶ 4(b)(iv), using a Complainant’s mark to attract internet users to a domain name’s resolving website, where Respondent hosts unrelated content may be evidence of bad faith attraction for commercial gain. See Hancock Fabrics, Inc. v. Active Advantage, Inc., FA 204111 (Forum Dec. 4, 2003) (“Respondent’s use of the <hancockfabric.com> domain name, a domain name confusingly similar to Complainant’s HANCOCK FABRICS mark, to redirect Internet traffic to a website that provides a selection of jokes demonstrates Respondent’ bad faith use of the disputed domain name because Respondent has created a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of Respondent’s website, which evidences bad faith registration and use under Policy ¶ 4(b)(iv).”). The Panel notes that the domain name’s resolving website currently redirects to the registrar’s main page which is used to promote the goods and services of the registrar. See Compl. Ex. L. Therefore, as the Panel agrees, it finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Secondly, Complainant argues that Respondent registered the <acuralosgatos.com> domain name with constructive and actual knowledge of Complainant’s rights in the ACURA mark. Under Policy ¶ 4(a)(iii), while constructive knowledge is generally insufficient in demonstrating bad faith, actual knowledge may be sufficient, and may be demonstrated through incorporation a registered and/or widely known mark into a domain name, as well as Respondent’s use of the domain name’s resolving website. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). The Panel notes that the disputed domain name incorporates the ACURA mark in its entirety. Therefore, as the Panel agrees, it finds Respondent registered the disputed domain name with bad faith actual knowledge of Complainant’s rights in the mark under Policy ¶ 4(a)(iii).
Thirdly, Complainant argues that Respondent registered and uses the <acuralosgatos.com> domain name in bad faith by inactively holding the disputed domain name. Under Policy ¶ 4(a)(iii), inactively holding a disputed domain name’s resolving website may be evidence of bad faith registration and use. See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). The Panel notes Complainant’s screenshot of the disputed domain name’s resolving website, which redirects to the registrar’s main website which is used to promote the goods and services of the registrar. See Compl. Ex. L. Therefore, as the Panel agrees, it finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <acuralosgatos.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: December 30, 2021
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