American Honda Motor Co. Inc. v. abdelali dahani / natus.ma
Claim Number: FA2112001978252
Complainant is American Honda Motor Co. Inc. (“Complainant”), represented by Samantha Markley of Loza & Loza, LLP, California, USA. Respondent is abdelali dahani / natus.ma (“Respondent”), Morocco.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <powershonda.com>, registered with NameCheap, Inc..
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 December 23, 2021; the Forum received payment on December 23, 2021.
On December 23, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <powershonda.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 28, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 18, 2022 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@powershonda.com. Also on December 28, 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 January 24, 2022, 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 mark established by its ownership of the portfolio of trademark registrations described below and its extensive use of the mark on a variety of products including automobiles, motorcycles and power products including generators and engines since 1972.
Complainant has adduced evidence including third party reports to show that it has an extensive reputation and goodwill in the HONDA mark and 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. In the same year, Complaint’s sales revenue 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).
Complainant alleges that the disputed domain name is confusingly similar to its HONDA trademark and service mark, arguing that the disputed domain name <powershonda.com> includes Complainant’s HONDA trademark in its entirety and thus is virtually identical to the Complainant’s mark.
Complainant adds that the disputed domain name differs from Complainant’s mark only in that it includes the descriptive term “powers” in combination with the generic Top Level Domain “(gTLD”) extension <.com>.
In a similar fact pattern, in American Honda Motor Co., Inc. v. Wayne Craig / GMGL Marketing Services Inc. the panel held that the disputed domain names, <acuraextendedwarranties.com>, <acurawarrantyspecialist.com>, <extendedwarrantiesforacura.com>, <extendedwarrantiesforhonda.com>, inter alia, were confusingly similar to the HONDA trademark.
In the instant case, the only term added to Complainant’s HONDA mark in the disputed domain name is the word “powers” and Complainant argues that as a whole, the term “powers honda” implies some type of power product provided by Complainant, and this is especially the case because a significant portion of Complainant’s business is focused on generators.
Accordingly, Complainant submits that the only distinctive portion of the disputed domain name is Complainant’s HONDA mark and neither of the additional elements add any distinctiveness to the disputed domain name.
Complainant then alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that Complainant has exclusive rights in the HONDA mark by virtue of its trademark registrations and the goods and services offered in connection with the mark are well-known to the public because Complainant has been using the mark for over fifty-four years.
Complainant asserts that it is the world’s largest motorcycle manufacturer, the world’s largest engine maker, one of the world’s leading automakers, a premier provider of generators, and one of the best-known and most well-respected companies globally.
Complainant further asserts that as holder of exclusive rights in the HONDA trademark, it has not authorized Respondent to register and use the disputed domain name that incorporates its HONDA mark.
Furthermore, Complainant asserts that Respondent is not affiliated with or related to Complainant, nor is Respondent licensed or authorized to use the HONDA trademark.
Complainant adds that it cannot be assumed that Respondent is known by the name POWERSHONDA.COM.
Referring to screen captures of the website to which the disputed domain name resolves Complainant points out the address given for Respondent, is in fact that of American Honda, which is a wholly-owned subsidiary of Honda Motor Co., Ltd., the parent company of Complainant. Complainant adds that this mailing address is listed on Complainant’s own actual website, at <powerequipment.honda.com>.
Complainant further argues that said screen captures illustrate that the website to which the disputed domain name resolves is remarkably similar to Complainant’s own website at <powerequipment.honda.com>.
Respondent’s website includes banners and logos referring to Complainant, as well as images of Complainant’s products and marketing materials directly lifted from Complainant’s own website at <powerequipment.honda.com>.
Complainant contends that the images and marketing materials, captured from Complainant’s own website are being used by Respondent in order to create an association with Complainant.
Complainant submits that therefore this Panel should conclude that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. 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).
Complainant concludes that it is obvious that Respondent is offering Complainant’s products in an attempt to mislead consumers into believing that Respondent is in fact Complainant, or at the very least, is associated with Complainant and accordingly, Respondent is not using the domain name in connection with a bona fide offering of goods, and as such, does not have a legitimate interest in the domain name.
Complainant then alleges that Respondent registered and is using the disputed domain name in bad faith arguing that Complainant’s HONDA mark has an extensive reputation and Complainant had been using the mark extensively for over fifty years before the disputed domain name was registered.
Complainant reiterates that it has gained a worldwide reputation and developed goodwill that consumers rely on, and Complainant’s products have been recognized in the field as being among the best. In this regard Complainant refers to publications including Consumer Reports, that ranked Complainant as the fifteenth most reliable automotive brand of 2020.
Complainant alleges that the disputed domain name was registered with the intention to take unfair advantage of consumer confusion between Complainant’s HONDA mark and the disputed domain name in an effort to attract Internet users for commercial gain. 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 argues that panels established under the Policy have confirmed, that using a domain name to intentionally attract, for commercial gain, Internet users to a website by creating confusion with a complainant’s mark is evidence of bad faith registration. See Adobe Systems Incorporated v. Domain OZ (WIPO Case No. D2000-0057). In determining whether respondent has knowingly attempted to use complainant’s trademark rights to attract Internet users by creating a likelihood of confusion with complainant’s trademark as to the source, sponsorship, affiliation or endorsement of respondent’s website with the intent of commercial gain, the panel considered whether respondent was aware of complainant’s trademark rights at the time of registration, as well as whether respondent’s activities are in the same field as complainant.
Complainant further argues that Respondent is using the disputed domain name to intentionally attract consumer seeking Complaint’s products to a website which imitates Complainant’s own website, in an attempt to mislead consumers into believing that Respondent is, in fact, Complainant, or at the very least, is associated with Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a manufacturer of automobiles, motorcycles and power products including generators and engines on which it uses the HONDA mark for which it owns a portfolio of trademark and service mark registrations including:
· United States of America registered trademark HONDA registration number 826,779, registered on the Principal Register on April 4, 1967 goods in classes 19 and 23;
· United States of America registered trademark and service mark HONDA & Design 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 of America registered trademark and service mark HONDA & Design registration number 2,390,539 registered on the Principal Register on September 26, 2000 for goods and services in international classes 16, 18, 25, 28, and 35;
· United States of America 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 has an established Internet presence and has held the domain name <honda.com> since October 25, 1989, which resolves to its principal website.
The disputed domain name was registered on November 19, 2011 and resolves to a website that purports to offer lawnmowers, generators, pumps, snow blowers, tillers and trimmers for sale. The website contains content that is extensively captured from Complainant’s own website and is being used to impersonate Complainant.
There is no information available about Respondent, except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the request for verification of the registration details of the disputed domain name in the course of this proceeding.
Respondent availed of a privacy shield to conceal his/her identity on the published WhoIs, and 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 provided convincing evidence that it has rights in the HONDA mark established by its ownership of the trademark and service mark registrations described above and its extensive use of the mark on a variety of products including automobiles, motor cycles and power products including generators and engines, with global sales in 2020 estimated to be 14,931 billion yen (approximately USD $136 billion) and profits were estimated to be 633.6 billion yen (approximately USD $5.8 billion).
The disputed domain name <powershonda.com> consists of Complainant’s HONDA mark and the descriptive term “powers” in combination with the generic Top Level Domain “(gTLD”) extension <.com>.
Complainant’s HONDA mark is the dominant and only distinctive element in the disputed domain name
In the context of this proceeding, this Panel finds that gTLD extension <.com> would be considered by Internet users as a necessary technical requirement for a domain name.
This Panel also finds that neither the descriptive term “powers” in combination with the generic Top Level Domain “(gTLD”) extension <.com> add any distinctive character to the disputed domain name.
This Panel finds therefore that the disputed domain name is confusingly similar to the HONDA mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arguing that
· Complainant’s HONDA mark and the goods and services offered in connection with the mark are well-known to the public because Complainant has been using the mark for over fifty-four years and Complainant has become the world’s largest motorcycle manufacturer, the world’s largest engine maker, one of the world’s leading automakers, a premier provider of generators, and one of the best-known and most well-respected companies globally;
· Complainant has exclusive rights in the HONDA trademark by virtue of its trademark and service mark registrations;
· Complainant has not authorized Respondent to register and use the disputed domain name that incorporates its HONDA mark;
· Respondent is not affiliated with, or related to Complainant, nor is Respondent licensed or authorized to use the HONDA trademark;
· it cannot be assumed that Respondent is known by the disputed domain name;
· screen captures of the website to which the disputed domain name resolves exhibited with the Complaint, show that the address given for Respondent is in fact that of American Honda, which is a wholly-owned subsidiary of Honda Motor Co., Ltd., the parent company of Complainant;
· additionally, said mailing address is listed on Complainant’s own actual website, at <powerequipment.honda.com>;
· said screen captures also show that the website to which the disputed domain name resolves is remarkably similar to Complainant’s own website at <powerequipment.honda.com> and includes banners and logos referring to Complainant, as well as images of Complainant’s products and marketing materials directly lifted from Complainant’s own website;
· Respondent is therefore using the images and marketing materials, captured from Complainant’s own website in order to create an association with Complainant and such an attempt to mislead consumers into believing that Respondent is Complainant, or at the very least, is associated with Complainant, is not a use of the disputed domain name in connection with a bona fide offering of goods, and as such, does not have a legitimate interest in the domain name.
It is well established that once a complainant makes out a prima facie case that a complainant has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that 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 has shown that it has an extensive worldwide reputation in the use of the HONDA mark on its products and services, with an established Internet presence. Complainant’s sales revenue in 2020 is 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).
It is improbable that the registrant would have chosen and the disputed domain name, without knowledge of Complainant’s HONDA mark which is the dominant and only distinctive element of the disputed domain name. Additionally the descriptive element “powers” is a reference to the type of goods manufactured and sold by Complainant under the HONDA mark.
On the balance of probabilities therefore, this Panel finds that the disputed domain name was chosen and registered in bad faith with Complainant’s mark in mind, with the intention of targeting and taking predatory advantage of Complainant’s mark reputation and goodwill.
On the balance of probabilities, the registrant registered the disputed domain name intending that it would be used to confuse, mislead and misdirect Internet users, luring Internet traffic away from Complainant’s website to a website used by Respondent to impersonate Complainant.
This finding is supported by the screen captures annexed to the Complaint showing how the disputed domain name is being actually used. Not only does the content of the website to which the disputed domain name resolves, refer extensively to Complainant and its products, the information provided is on the balance of probabilities intended to impersonate Complainant.
This is in circumstances where Respondent has no association or affiliation with Complainant and where Respondent provides false contact details to Internet users, and uses images and content captured from Complainant’s own website including Complainant’s trademark and logo without license or permission.
The uncontested evidence adduced by Complainant proves therefore on the balance of probabilities that the disputed domain name is being used in bad faith in order to impersonate Complainant and by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his/her web site or other on-line location, by creating a likelihood of confusion with Complainant's HONDA mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site.
As this Panel has found that the disputed domain names were registered and are being used in bad faith, Complainant has succeeded in the third element of the test in Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <powershonda.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: January 26, 2022
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