American Honda Motor Co. Inc. v. Humble Jacobs
Claim Number: FA2106001950756
Complainant is American Honda Motor Co. Inc. (“Complainant”), represented by Samantha Markley of Loza & Loza, LLP, California, USA. Respondent is Humble Jacobs (“Respondent”), Portugal.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ahm-honda.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 11, 2021; the Forum received payment on June 11, 2021.
On June 14, 2021, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <ahm-honda.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 June 16, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 6, 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@ahm-honda.com. Also on June 16, 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 July 13, 2021 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the HONDA trademark as exclusive licensee in the United States of its parent corporation that is the owner of the trademark and service mark registrations described below.
Complainant also claims rights as exclusive licensee of its parent corporation’s common law rights in the HONDA mark accrued through long and extensive use in commerce. Complainant’s group commenced use of the mark with the Honda Civic in 1972, the Honda Accord in 1976, the Honda Prelude in 1987 and the Honda Pilot in 2002. In 2020, Complainant sold 29.83 million product units across the globe, with sales in China, Japan, North America, Europe, the Middle East, Africa, Asia, North America, and South America, with sales revenue estimated to be 14,931 billion yen (about $136 billion U.S. dollars) and its profits were estimated to be 633.6 billion yen (about $5.8 billion U.S. dollars).
Complainant submits that the disputed domain name <ahm-honda.com>, is confusingly similar to the HONDA trademark in which Complainant has rights because it incorporates the HONDA mark in its entirety.
It also includes the acronym “ahm”, which is commonly used by Complainant and represents Complainant’s entity name, American Honda Motor.
Complainant adds that the generic top-level domain (“gTLD”) extension <.com> contributes no distinctive element to the disputed domain name
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name because: it cannot be assumed that Respondent is known by the name AHMHONDA.COM, especially in view of the fact that the disputed domain name does not lead to an active website.
In contrast, Complainant is known as AHM Honda, and Complainant commonly uses the “AHM” abbreviation for “American Honda Motor.” Furthermore, Complainant’s employees use email addresses formed by adding “ahm” as a subdomain preceding the second-level domain “honda” and the top-level domain “.com,” such as […]@ahm.honda.com. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WhoIs information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Furthermore, Complainant has not authorized Respondent to register for use the disputed domain name. Complainant asserts that Respondent is not affiliated with or related to Complainant, nor is Respondent licensed or authorized to use the HONDA mark.
Complainant adds that the disputed domain name does not lead to an active website and therefore Respondent is failing to make any active use of the disputed domain name for a bona fide offering of goods or services See Diners Club International Ltd. v. Private Registrations Aktien Gesellschaft, FA 1362464 (Forum Jan. 13, 2011) (holding that “a parked website unrelated to Complainant’s business…is not a bona fide offering of goods or services….”).
Complainant refers to copies of email correspondence, submitted as evidence in annex to the Complaint, which it submits illustrates that Respondent is using the disputed domain name to create an email account from which Respondent is sending phishing emails in bad faith to Complainant’s distributors and argues that such use cannot constitute a bona fide offering of goods or services.
Referring to the trademark registrations described below, Complainant submits that it has been using the HONDA trademark for over 54 years prior to the registration of the disputed domain name. Accordingly, Respondent had, at the very least, constructive notice of Complainant’s trademark rights. See American Honda Motor Co., Inc. v. Gabriel Salcedo (a/k/a Tuhonda), WIPO Case No. D2013-1846 (“Respondent’s awareness of the HONDA trademark may also be inferred because the mark was registered with the U.S. Patent and Trademark Office prior to Respondent’s registration of the disputed domain name and since the HONDA trademark is well-known and famous.).
Complainant adds that the disputed domain name does not resolve to active website, and argues that it has been held that such use of a confusingly similar disputed domain name, is evidence of bad faith use and registration under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
Complainant submits that the disputed domain name was registered in bad faith.
Complainant argues that the copies of documents submitted in annexes to the Complaint show that Respondent has used the disputed domain name as an email address for messages sent to third parties intentionally creating confusion with Complainant’s mark. More specifically, the exhibited documents show that Respondent has used the disputed domain name to set up email accounts using the names of real Complainant’s employees to send emails to Complainant’s distributors purporting to be from Complainant’s Finance Division (“American Honda Finance”) . The emails directed the distributors to send payments such as payoff amounts due in connection with the outstanding invoices, to bank accounts controlled by Respondent.
Complainant submits that Respondent created the impression that the emails came from Complainant’s own <ahm.honda.com> email addresses.
An email to a Honda distributor dated January 25, 2021 from an email address using the disputed domain name includes the actual name of one of Complainant’s employees, leading the distributor to believe it is communicating with American Honda Finance. In the email, the sender requests that the Honda distributor provide prior payment details so that “alternative banking details” may be provided. It is clear that the sender plans to instruct the Honda distributor to send a payment to the sender’s own bank account.
Another exhibited email from the same Honda distributor confirms that a wire transfer had been made on January 26, 2021 to settle several outstanding invoices. Complainant states that sadly, the Honda distributor actually remitted payment, as it believed it was in direct communication with American Honda Finance.
Yet another email from the same Honda distributor replying to an email from an address formed by the disputed domain name, was sent confirming that another wire transfer had been made on February 18, 2021 to settle several outstanding invoices. Again, the distributor believed it was in direct communication with American Honda Finance.
Complainant submits that in total, the distributor transferred funds in excess of $50,000 to the scammer using the <ahm-honda.com> email address.
Complainant adds that the email correspondence has been redacted to remove the names of its employees whose names were used in the scam, as well as to remove the actual invoice numbers and the exact amounts of outstanding balances.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a wholly-owned subsidiary of one of the world’s leading manufacturers of motorcycles, engines and automobiles and holds the exclusive right to use and protect trademarks belonging to its parent company in the United States.
Complainant’s parent company is the owner of numerous U.S. trademark registrations for HONDA which are the subject of the exclusive license including, inter alia, the following:
· United States registered trademark HONDA registration number 826,779 registered on the Principal Register on November 2, 1965 for goods and services in class 23;
· United States registered trademark and service mark H HONDA logo registration number 2,390,535, registered on the Principal Register on September 26, 2000 for goods and services in international classes 28 and 35;
· United States registered trademark and service mark H HONDA log, registration number 2,390,539, registered on the Principal Register on September 26, 2000 for goods and services in international classes 16, 18, 25 and 35;
· United States registered service mark HONDA registration number 5,933,279 registered on the Principal Register on December 10, 2019 for services in international class 35.
Complainant owns and uses the domain name <ahm.honda.com> as an email address.
The disputed domain name was registered on January 15, 2021 and does not lead to an active website but has been used to create an email account from which Respondent has sent misleading emails to third party distributors of Complainant’s products impersonating one of Complainant’s departments viz. American Honda Finance.
There is no information available about Respondent except for that which is provided in the Complaint, the Registrar’s WHOIS, and the information provided by the Registrar in response to the request by the Forum for details of the registration of the disputed domain name. The Registrar has confirmed that Respondent is the registrant of the disputed domain name.
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”).
Complainant has presented a convincing, uncontested case that its parent company has rights in the HONDA trademark and service mark acquired ownership of the portfolio of registered trademarks described below, for which Complainant itself holds rights as the exclusive licensee in the United States.
Complainant has also shown that its parent and itself has acquired a reputation and goodwill in the use of the mark, protected at common-law through long and extensive use of the mark in the United States commencing with the launch of the Honda Civic in 1972, the Honda Accord in 1976, the Honda Prelude in 1987 and the Honda Pilot in 2002.
In 2020, Complainant sold 29.83 million product units across the globe, with sales in China, Japan, North America, Europe, the Middle East, Africa, Asia, North America, and South America. See Exhibit G. Complaint’s sales revenue in 2020 was estimated to be 14,931 billion yen (about $136 billion U.S. dollars) and its profits were estimated to be 633.6 billion yen (about $5.8 billion U.S. dollars).
The disputed domain name consists of the element “ahm”, a hyphen, Complainant’s HONDA trademark and service mark and the gTLD <.com> extension.
Complainant’s HONDA trademark and service mark is the dominant and distinctive element of the disputed domain name. In context, the element “ahm” is an acronym referring to Complainant, but on its own it has no obvious meaning or distinctive character.
Also, in the context of the present case, the gTLD extension has no distinguishing characteristic and would be considered as a technical necessity for an Internet domain name.
This Panel finds therefore that the disputed domain name is confusingly similar to the HONDA mark in which Complainant has rights. Complainant has therefore satisfied first element in the test in Policy ¶ 4(a)(i).
Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name because:
· it cannot be assumed that Respondent is known by the disputed domain name especially in view of the fact that the disputed domain name does not resolve to an active website;
· in contrast, Complainant is known as “AHM Honda”, and Complainant commonly uses the “AHM” abbreviation for “American Honda Motor” ;
· Complainant’s employees use email addresses formed by adding “ahm” as a subdomain preceding the second-level domain “honda” and the top-level domain “.com,” such as […]@ahm.honda.com;
· Complainant’s rights in the HONDA mark are well-known and Complainant, having exclusive rights to use the mark, has not authorized Respondent to register or use the disputed domain name;
· Complainant asserts that Respondent is not affiliated with, or related to Complainant, nor is Respondent licensed or authorized to use the HONDA mark;
· the disputed domain name does not lead to an active website and therefore Respondent is failing to make any active use of the disputed domain name for a bona fide offering of goods or services;
· copies of email correspondence, submitted as evidence in annex to the Complaint, illustrate that Respondent is using the disputed domain name to create an email account from which Respondent is sending phishing emails in bad faith to Complainant’s distributors and argues that such use cannot constitute a bona fide offering of goods or services.
It is well established that once the complainant makes out a prima facie case that respondent has no rights or legitimate interests in a disputed domain name, the burden of production shifts to the respondent to prove its rights and interests.
Respondent has failed to file a Response and therefore has failed to discharge the burden of production. Therefore, this Panel must find that on the balance of probabilities, Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainant and its parent organization have developed an extensive reputation and goodwill in the HONDA mark through long and extensive use over 54 years prior to the registration of the disputed domain name. Because of its worldwide reputation, it is most implausible that the registrant of the disputed domain name was unaware of Complainant’s business, name, mark, reputation, and goodwill, when the disputed domain name was chosen and registered.
The registrant’s knowledge of Complainant’s further shown by the similarity between the disputed domain name and Complainant’s own <ahm.honda.com> domain name which it uses as an email address in its business. Furthermore, the element “ahm” is commonly used by Complainant as an acronym for “American Honda Motor”.
This Panel finds therefore that on the balance of probabilities the registrant of the disputed domain name was actually aware of Complainant’s rights in the HONDA mark when the disputed domain name was chosen and registered. Furthermore, on the balance of probabilities the disputed domain name was registered in bad faith in order to take predatory advantage of Complainant, it reputation and goodwill in order to confuse third parties.
Complainant has adduced convincing evidence that the disputed domain name is being used to maintain an email account from which emails have been sent to third-party distributors of Complainant’s products. Furthermore, the evidence shows that Respondent has used these emails to perpetrate a fraud by impersonating Complainant’s organization and inducing its distributors to make payments believing that Complainant’s organization was the recipient, which was not the case. Such use of the disputed domain name for the purposes of phishing, constitutes bad faith use under the Policy.
As this Panel is found that the disputed domain name was registered and used in bad faith, Complainant has succeeded in the third and final element in the test in Policy ¶ 4(a)(iii), and is entitled to succeed in this application.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ahm-honda.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: July 14, 2021
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