American Honda Motor Co., Inc. v. Brian Dorsett / Dorsett Auto Sales, Inc.
Claim Number: FA2005001896229
Complainant is American Honda Motor Co., Inc. (“Complainant”), represented by Samantha Markley of Loza & Loza, LLP, US. Respondent is Brian Dorsett / Dorsett Auto Sales, Inc. (“Respondent”), US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <terrehautehonda.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.
Charles A. Kuechenmeister, 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 <terrehautehonda.com> domain name (the 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@terrehautehonda.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 8, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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.
PRELIMINARY ISSUE: Consent to Transfer
On June 4, 2020, the FORUM received a letter on Respondent Dorsett Auto Sales, Inc.’s letterhead, signed by one Daniel Higgins as E-Commerce Manager, reading in its entirety as follows (including typographical and wording errors):Dorsett Auto Sales agrees that the domain name show be transfer domain-name registration to Complainant. While not meeting all of the technical requirements for a response provided by Rule 5(c), this letter may reasonably be taken as such. It appears to be authentic and clearly expresses a willingness on the part of Respondent Dorsett Auto Sales, Inc. to transfer the Domain Name to Complainant. There is no communication from Respondent Brian Dorsett, however, nor is the letter from Dorsett Auto Sales, Inc. signed by him. Under these circumstances the Panel deems it prudent to conduct a full analysis of the issues within the framework established by the Policy.
A. Complainant
Complainant is one of the world’s leading automobile and motorcycle manufacturing companies. It has rights in the HONDA mark through its registration of that mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 826,779, registered Apr. 4, 1967). Respondents’ <terrehautehonda.com> Domain Name is identical or confusingly similar to Complainant’s HONDA mark as it incorporates that mark in its entirety, merely adding the geographic identifier “terrehaute,” and the “.com” generic top-level domain (“gTLD”).
Respondents lack rights or legitimate interests in the Domain Name. Respondents are not affiliated with or related to Complainant, nor has Complainant authorized or licensed them to use its mark, they are not commonly known by the Domain Name, and they are not using the Domain Name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use but instead use it to redirect Internet traffic to their own web site at <dorsettautomotive.com>, where they sell competing brands of automobiles.
Respondents registered and use the Domain Name in bad faith. They use it to attract Internet users to their own competing webpage for commercial gain, and they had actual and constructive notice of Complainant’s rights in the HONDA mark when registering the Domain Name.
B. Respondent
The full content of Respondent’s Response is set forth verbatim in the Consent to Transfer analysis.
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 a complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(1) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) the 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.
The Panel finds as follows with respect to the matters at issue in this proceeding:
Identical and/or Confusingly Similar
The HONDA mark was registered to the Honda Motor Co. Ltd. with the USPTO (Reg. No. 826,779) on April 4, 1967 (Complaint Exhibit D). Registration of a mark with the USPTO is sufficient to establish rights in that mark for the purposes of Policy ¶ 4(a)(i). Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant alleges that it is a wholly-owned subsidiary of Honda Motor Co. Ltd. A subsidiary of the owner of a registered mark has been held to qualify as having rights sufficient to meet the requirements of Policy ¶ 4 (a)(i). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), at ¶ 1.4.1 (“a trademark owner’s affiliate such as a subsidiary of a parent or of a holding company, . . , is considered to have rights in a trademark under the UDRP for the purposes of standing to file a complaint.”). Complainant offered no evidence directly supporting its claim that it is a subsidiary of Honda Motor Co. Ltd. The only evidence bearing on this issue is Complaint Exhibit H, which is a WHOIS report for the <honda.com> domain name listing Complainant as the registrant of that name. This evidence is anything but conclusive, but the Panel accepts it as minimally sufficient to support Complainant’s rights in the mark or at least its authority from the mark owner to bring and maintain this proceeding. That domain name was first registered in October 1989 and it is assumed that Honda Motor Co. Ltd. would have taken action to have it transferred if Complainant were not in fact closely related to or owned by it.
Respondents’ <terrehautehonda.com> Domain Name is identical or confusingly similar to Complainant’s HONDA mark as it incorporates that mark verbatim, merely adding the geographic identifier “terrehaute,” and the “.com” gTLD. These changes are not sufficient to distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). Franklin Covey Co. v. franklincoveykorea, FA 1774660 (Forum Apr. 11, 2018) (finding that the <franklincoveykorea.com> domain name is confusingly similar to the FRANKLIN COVEY mark, as “[t]he addition of a geographic term and a gTLD do not negate confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i).”). The WIPO Overview 3.0, at ¶ 1.7, states that the test for confusing similarity “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name.” Notwithstanding the changes described above, Complainant’s mark is clearly recognizable within the Domain Name.
For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the HONDA mark, in which Complainant has rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. 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”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to the respondent of the dispute, the respondent has used or has made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondents have no rights or legitimate interests in the Domain Name because (i) Respondents are not affiliated or associated with Complainant and Complainant has not licensed, authorized, or otherwise permitted them to use its mark, (ii) Respondents have not been commonly known by the Domain Name, and (iii) Respondents are not using the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use because it redirects Internet traffic to the web site for Respondents’ auto sales business, which competes with Complainant. These allegations are addressed as follows:
Complainant states that Respondents are not associated or affiliated with it and that it has never licensed or authorized them to use its mark in any way. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”).
The WHOIS report submitted as Complaint Exhibit A lists the registrant of the Domain Name as “Brian Dorsett / Dorsett Auto Sales, Inc.” Neither of these names bears any resemblance to the Domain Name. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name), Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (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 is satisfied that Respondents have not been commonly known by the Domain Name for the purposes of Policy ¶ 4(c)(ii).
Complaint Exhibits C and M are screenshots of pages of a web site located at <dorsettautomotive.com>, to which the Domain Name redirects Internet traffic from the Domain Name. These pages advertise and promote the goods and services offered by “Dorsett Automotive,” which has the same address as that listed for Respondent in the Complaint Exhibit A WHOIS report and which offers automobiles and automotive products manufactured by companies such as Mitsubishi, Hyundai, Ford and Nissan, all of whom are direct competitors of Complainant. Using a confusingly similar domain name to attract Internet users and redirect them to a respondent’s own competing website is neither a bona fide offering of goods or services for the purposes of Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use for the purposes of Policy ¶ 4(c)(iii). Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)), General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (“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).”).
Complainant has made its prima facie case. On the evidence presented, and in the absence of any evidence from Respondents, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s web site or location or of a product of service on the respondent‘s web site or location.
The evidence of Respondents’ conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration and use, based upon one or more of the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP panels over the years. First, Respondents are clearly using the Domain Name to attract, for commercial gain, Internet users to their web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its web site. This fits squarely within the circumstances described in Policy ¶ 4(b)(iv) and is manifest evidence of bad faith registration and use. Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).
Finally, Complainant asserts that Respondents had constructive and actual knowledge of Complainant and its HONDA mark when they registered the Domain Name. Arguments of bad faith based on constructive notice are not well-taken, as UDRP panels have most frequently declined to find bad faith based upon constructive knowledge. The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). Nevertheless, it is evident that Respondents had actual knowledge of Complainant and its mark when they registered the Domain Name. Complainant’s HONDA mark had been used by it or its parent corporation for almost 50 years by that time (Complaint Exhibit D) and it was and is well-known in the automobile industry in which Respondents operate. Respondents copied it verbatim into the Domain Name, only adding the name of the city where their business is located (Complaint Exhibits C and M). Policy ¶ 4(b) recognizes that mischief can assume many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005), 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 merely 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). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and registering a confusingly similar domain name with actual knowledge of a complainant’s rights in its mark has often been held to be evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
For the reasons first set forth above, the Panel finds that Respondents registered and are using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
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 <terrehautehonda> Domain Name be TRANSFERRED to Complainant.
Charles A. Kuechenmeister, Panelist
Dated: June 9, 2020
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