American Honda Motor Co. Inc. v. Jennifer McKenna
Claim Number: FA2005001896227
Complainant is American Honda Motor Co., Inc. (“Complainant”), represented by Samantha S. Markley of Loza & Loza, LLP, California, USA. Respondent is Jennifer McKenna (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thenewbabylonhonda.com>, registered with GoDaddy.com, 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.
Eduardo Magalhães Machado as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 13, 2020; the Forum received payment on May 13, 2020.
On May 14, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <thenewbabylonhonda.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 May 15, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 4, 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 postmaster@thenewbabylonhonda.com. Also on May 15, 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 June 4, 2020.
On June 9, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Eduardo Magalhães Machado 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.
A. Complainant
Complaint affirms it is the subsidiary of the Japanese corporation Honda Motor Co., Ltd., one of the world’s leading automobile companies, asserting rights in the HONDA mark through US Reg. No. 826,779, registered April 4, 1967, among others.
In this sense, Complainant claims that the disputed domain name <thenewbabylonhonda.com> would be confusingly similar to Complainant’s registered HONDA mark as it includes the HONDA mark in its entirety with the mere addition of the generic term “the new” and the geographic location “Babylon”, referring to Babylon, NY, and the “.com” generic top-level domain (“gTLD”) to Complainant’s entire mark.
According to the Complainant, those additions would be insufficient to prevent the confusingly similarity of the disputed domain name with Complainant’s HONDA mark.
Moreover, Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain name considering that Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark.
Complainant also claims that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent does not make use of the disputed domain name.
Lastly, Complainant argues that Respondent registered and uses the <thenewbabylonhonda.com> domain name in bad faith. In this regard, Complainant affirms that Respondent, who must’ve had constructive notice of Complainant’s HONDA mark, has registered the disputed domain name in an attempt to attract internet users to Respondent’s webpage for commercial gain by creating a likelihood of confusion with Complainant’s HONDA registered mark.
Another indicative of bad-faith by the Respondent in the registration and use of the disputed domain name would be, according to the Complainant, that Respondent inactively holds the disputed domain name.
B. Respondent
In Respondent’s brief response via email, Respondent stated that: “I do not need this domain. If you are interested in it, tell me what you wish to do.”
The Panel acknowledges that Respondent did not make any contentions related to section 4 of the UDRP Policy.
Complainant was founded in 1959 and it is the American subsidiary of the Japanese corporation Honda Motor Co., Ltd., one of the world’s leading automobile companies.
Complainant is the owner of several trademark registrations for the HONDA and related marks such as U.S. Reg. No. 829,779; 2,390,535; 2,390,539 and 5,933,279, as provided by Annexes C, D, E, and F of the complaint. Complainant’s earliest trademark registration for the HONDA mark dates back from April, 1967 (U.S. Reg. No. 829,779).
Complainant is also the owner of the domain name <honda.com> since October, 1989.
According to the WHOIS information, the disputed domain name was registered on April 14, 2019.
The disputed domain name is not currently active, as it solely displays a “website coming soon” message (Annex N of the complaint).
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.
Ownership of a trademark registration is generally sufficient evidence that a complainant has the required rights in a mark for purposes of paragraph 4(a)(i) of the Policy. 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).
The Complainant owns rights related to the HONDA mark since 1967, as per trademark registrations of the mark with the USPTO (U.S. Reg. No. 829,779).
In this sense, the Panel finds that the disputed domain name is confusingly similar to Complainant’s HONDA mark since the disputed domain name reproduces the entirety of the HONDA mark with the mere additions of the generic term “the new” and the geographic location “Babylon”, in a clear reference to the city of Babylon, New York. Said additions to Complainant’s HONDA mark in the disputed domain name do not prevent a confusingly similarity with Complainant’s marks.
That is because the addition of generic and/or descriptive terms and a geographic identifier is insufficient to distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy); see also Dell Inc. v. Suchada Phrasaeng, FA 1745812 (Forum Sep. 28, 2017) (“Adding geographical terms does not sufficiently distinguish a domain name from a mark to prevent a finding of confusingly similarity under a Policy ¶4(a)(i) analysis.”).
Moreover, the addition of the “.com” gTLD also does not prevent the disputed domain name from being confusingly similar to the Complainant’s trade mark pursuant to the Policy.
The Panel, thus, concludes that the Complainant has established the first condition of paragraph 4(a) of the Policy.
No evidence was provided that the Respondent owns any rights or legitimate interest in the disputed domain name nor that Respondent is commonly known by the disputed domain name.
According to Complainant’s uncontested allegations, Respondent is not licensed nor authorized by the Complainant to use Complainant’s marks. In this regard, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”
Moreover, Respondent’s use of the disputed domain name cannot be considered as a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain name as Respondent is not even using the disputed domain name as provided by Annex N of the complaint.
Previous panels have found that respondent’s failure to make active use of a disputed domain name may not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”).
Therefore, considering that Respondent has failed to make any contentions related to Policy Paragraph 4(a)(ii) and that Complainant was able to make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name, is that the Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The disputed domain name was registered and is being used in bad-faith by the Respondent considering that such was registered in an attempt to attract internet users for the disputed domain name by creating a likelihood of confusion with Complainant’s well-known HONDA mark for Respondent’s own commercial gain.
This can be inferred by the fact that Complainant’s HONDA mark is to be considered a worldwide well-known mark (Annexes I and J.), making it almost impossible for Respondent to not have any prior knowledge of such mark and Complainant’s rights related to such.
Respondent’s prior knowledge of Complainant’s marks can be considered as an indicative of bad-faith according to prior panels’ decisions. See 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.”).
In this sense, Respondent registered the disputed domain name, which incorporates the well-known HONDA mark with the purpose of associating itself with Complainant’s marks and, therefore, attracting internet users to access the domain name for commercial gain, profiting off Complainant’s registered and well-known mark.
Respondent’s bad faith in the registration of the disputed domain name is also noted by the fact that such not only incorporates in its entirety Complainant’s well-known HONDA mark, but also adds the generic expression “the new” and the geographic location “Babylon”, which would mislead internet users to believe that Respondent would be an authorized reseller of Complainant’s products in Babylon, NY. That is because Complainant’s authorized resellers tend to refer to themselves by names comprised of the HONDA mark and the city or geographic area in which the dealership is located at.
Therefore, Respondent’s registration and use of the disputed domain name can also be considered as an attempt by the Respondent to pass off as one of Complainant’s authorized resellers, which seems to not be the truth as Complainant even claimed that another authorized Honda dealer is already operating under the name “The New Babylon Honda”.
In this sense, Respondent’s registration and use of the disputed domain name could even divert Complainant’s clientele from Complainant’s authorized reseller to Respondent’s.
Lastly, Respondent’s bad faith is also evidenced by the lack of use of the disputed domain name, as provided by Annex N of the complaint. Inactive holding of a disputed domain name is also an indicative of bad faith registration and use per Policy ¶ 4(a)(iii). See 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.”
In light of the above, the Panel finds that the Complainant has established the third element of paragraph 4(a)(iii) of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thenewbabylonhonda.com> domain name be TRANSFERRED from Respondent to Complainant.
Eduardo Magalhães Machado, Panelist.
Dated: June 15, 2020
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