American Honda Motor Co., Inc. filed a UDRP to get the freshly registered domain Hondae.com.
It’s rather obvious that the famous HONDA mark forms the majority of the domain keyword but the Respondent in this case attempted to present an alternate reality.
According to Respondent, “strategic search” for tourist destinations yielded a range of results including one in South Korea for a district of Seoul called Hongdae (or “Hong Dae” in English-language resources), which was transliterated as “Hondae” in some posts published on the website Reddit.com. Therefore, Respondent added the translations “hongdae” and “hondae” to its list of domain names to pursue for speculative registration.
All this sounds rather far-fetched, however. The disputed domain was parked with PPC ads that displayed content related to Honda products and HongDae.com has been registered since 2002. The sole panelist at the Forum isn’t a fan of the Squid Game, apparently:
Considering the confusing similarity of the hondae.com domain name with Complainant’s well-known trademark and the circumstance that the hondae.com domain name initially resolved to a pay-per-click page displaying links related to Complainant’s mark and products, the Panel concludes that, on balance of probabilities, Respondent registered and used the hondae.com domain name to target Complainant and its mark.
In view of the redirection of the hondae.com domain name to the website described above, displaying pay-per-click links and a notice indicating that the hondae.com domain name is for sale, the Panel finds that Respondent intentionally attempted to attract internet users to its website for commercial gain, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website […] Therefore, the Panel finds that Complainant has proven that Respondent registered and is using the hondae.com domain name in bad faith […]
Final decision: Transfer the domain Hiondae.com to the Complainant.
Copyright © 2025 DomainGang.com · All Rights Reserved.American Honda Motor Co., Inc. v. Domain Admin
Claim Number: FA2411002126033
PARTIES
Complainant is American Honda Motor Co., Inc. (“Complainant”), represented by Samantha Markley of Loza & Loza, LLP, California, USA. Respondent is Domain Admin (“Respondent”), represented by Grant Carpenter, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is hondae.com, registered with Alpha Beta Domains LLC.
PANEL
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Luca Barbero as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on November 20, 2024; Forum received payment on November 20, 2024.
On November 20, 2024, Alpha Beta Domains LLC confirmed by e-mail to Forum that the hondae.com domain name is registered with Alpha Beta Domains LLC and that Respondent is the current registrant of the name. Alpha Beta Domains LLC has verified that Respondent is bound by the Alpha Beta Domains 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 November 22, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 12, 2024 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@hondae.com. Also on November 22, 2024, 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 December 12, 2024.
On December 13, 2024, pursuant to the Parties’ requests to have the dispute decided by a single-member Panel, Forum appointed Luca Barbero as Panelist.
On December 18, 2024, Complainant sent an Additional Submission.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that 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.
RELIEF SOUGHT
Complainant requests that the hondae.com domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant submits that it was founded in 1959 as the first wholly owned subsidiary of the Japanese corporation Honda Motor Co., Ltd, one of the leading automobile companies worldwide.
Complainant states that it has exclusive rights to use, and protect, the trademarks belonging to Honda Motor Co., Ltd in the United States.
Complainant contends that the hondae.com domain name is confusingly similar to the HONDA mark in which it has rights as it reproduces the HONDA mark in its entirety with the mere addition of a single letter “e”.
Complainant states that Respondent has no rights or legitimate interest in the hondae.com domain name since it is in no way affiliated with Complainant, nor has it ever been licensed or authorized by Complainant to use its HONDA mark or to register the hondae.com domain name.
Moreover, Complainant submits that Respondent is not commonly known by the hondae.com domain name, based on the registrant information in the Whois and in view of the fact that hondae.com domain name does not lead to an active website.
Complainant further contends that Respondent is not using the hondae.com domain name in connection with a bona fide offering of goods or services since it does not lead to an active website and submits as Exhibit J a screenshot showing the hondae.com domain name resolving to a parking page with sponsored links also related to HONDA motorcycle parts and accessories.
Complainant also submits that Respondent had constructive notice of Complainant’s trademark rights when it registered the hondae.com domain name, in view of the registration of the HONDA mark in the United States in connection with land vehicles and engines in April 1967, Complainant’s use of the HONDA mark for over fifty-four years and the worldwide reputation and goodwill acquired by Complainant.
Complainant states that Respondent registered and used the hondae.com domain name with the intention to take unfair advantage of consumer confusion between Complainant’s HONDA mark and the hondae.com domain name in an effort to attract Internet users for commercial gain.
Complainant further contends that Respondent’s use of the hondae.com domain name even in connection with an inactive website, is evidence of bad faith registration and use.
B. Respondent
Respondent replied to Complainant’s contentions stating as follows.
Respondent is in the business of speculatively registering domain names and generating revenue from those domain names through various methods, including placing “parking” or “sponsored search” pages on the domain names and selling the domain names.
Respondent finds the Complaint is unfounded, since the hondae.com domain name was registered in good faith as part of Respondent’s legitimate business practice of acquiring domain names associated with geographic locations.
The Respondent submits that it conducted due diligence including trademark checks and manual reviews, to avoid conflicts with third-party rights and registered the hondae.com domain name for its descriptive and geographic significance, with no intent to target the Complainant or its trademark.
Respondent concedes some failures in its risk management policies and procedures related to the use of the hondae.com domain name following registration but submits that there is no evidence of bad faith registration.
Respondent explains that in implementing the foregoing business strategy, it compiled a list of neighborhoods in various cities that are popular with tourists. According to Respondent, the search yielded a range of results including one in South Korea for a district of Seoul called Hongdae (or “Hong Dae” in English-language resources), which was transliterated as “Hondae” in some posts published on the website www.reddit.com. Therefore, Respondent added the translations “hongdae” and “hondae” to its list of domain names to pursue for speculative registration.
Respondent further states that as part of its business practice it implements and maintains various risk-management policies and procedures to avoid registering names that infringe the rights of any third parties, including checking the names in the list against entries in the WIPO Global Brand Database and ensuring any sponsored ads or searches related to possible trademark infringement are avoided.
Respondent submits that in the case at hand, due to the similarity of the HONDA mark with the hondae.com domain name, the parking page erroneously displayed searches inter alia related to Complainant but assured that upon being informed of the present proceeding, it immediately acted upon the settings to ensure that the automated searches would yield results exclusively related to the Hong Dae District of Seoul and Korea in general.
In view of the above, Respondent acknowledges that though its original manual review failed in this case to exclude specific reference to similar marks, after being informed of the present proceeding, it proceeded to duly refine and update the search criteria, to further identify brands and categories of goods and services to be excluded from displayed searches and sponsored ads. Respondent claims that in no way did it intend to register the hondae.com domain name in bad faith or to profit from the association with Complainant.
With specific reference to bad faith registration and use, Respondent rebuts that “Hondae” is a reasonably commonly used phonetic variant of the Hong Dae District name, which is a well-known neighborhood in Seoul and submits that its intent in registering the hondae.com domain name was solely to generate ad revenue from domain parking pages targeting tourists and to potentially sell the name to a new registrant for use in connection with a neighborhood of Seoul, not to purposely create an association with Complainant’s mark.
Respondent concedes that, in good faith, it inadvertently allowed parking page results that its risk management policies and procedure were designed to avoid. However, Respondent submits that this was due to one-time failure of otherwise rigorous risk management policies and procedures and does not see how such failure could be seen as evidence of bad faith use.
FINDINGS
Complainant is a wholly owned subsidiary of the Japanese corporation Honda Motor Co., Ltd, one of the world’s leading automobile companies.
Complainant has the exclusive rights to use, and protect, the following trademark registrations owned by Honda Motor Co., Ltd in the United States (Exhibits B, C, D and E to the Complaint):
– United States trademark registration No. 826,779 for HONDA (word mark), filed on November 02, 1965, and registered on April 04, 1967, in international classes 07 and 12;
– United States trademark registration No. 2,390,535 for H HONDA (figurative mark), filed on October 24, 1997, and registered on September 26, 2000, in international classes 28 and 35;
– United States trademark registration No. 2,390,539 for H HONDA (figurative mark), filed on October 24, 1997, and registered on September 26, 2000, in international classes 16, 18, 25, 28 and 35;
– United States trademark registration No. 5,933,279 for HONDA (word mark), filed on August 13, 2018, and registered on December 10, 2019, in international class 35.
Complainant’s affiliated company Honda North America, Inc., a wholly owned subsidiary of the Japanese corporation Honda Motor Co., Ltd., is the owner of the domain name honda.com, registered on October 25, 1989 and used to promote the HONDA products and services.
The hondae.com domain name was registered on October 23, 2024, and initially resolved to a parking page with commercial links that included a reference to HONDA motorcycle parts and accessories.
Presently instead, it resolves to a parking page with commercial links related to Hong Dae and Korea. A notice published on the top of the website states that the hondae.com domain name is for sale.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and 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.
PRELIMINARY PROCEDURAL ISSUE: COMPLAINANT’S ADDITIONAL SUBMISSION
The Panel notes that Complainant’s Additional Submission is mostly aimed at contesting Respondent’s contentions and is not based on additional circumstances that Complainant could not have been aware of at the time of the filing of the Complaint. The Panel finds that Complainant’s allegations contained therein, although certainly pertinent, are not decisive for the outcome of the case, which can thus be decided on the basis of the sole allegations contained in the Complaint and the Response.
Moreover, in light of the content of Complainant’s Additional Submission, which does not raise new circumstances not yet addressed by Respondent in the Response, the Panel does not deem appropriate to request further submissions from Respondent and, also bearing in mind the need for procedural efficiency, will now proceed to issue its Decision.
Identical and/or Confusingly Similar
Complainant has established rights in the HONDA mark based on its United States trademark registrations 826,779 and 5,933,279 cited above. See GK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015), holding that a complainant’s registration with the USPTO or any other governmental authority adequately proves complainant’s rights under paragraph 4(a)(i) of the Policy.
The hondae.com domain name incorporates Complainant’s HONDA mark in its entirety with the mere addition of the letter “e” and the generic Top Level Domain (“gTLD”) “.com”. The addition of a single letter and a gTLD to a mark does not distinguish the disputed domain name from the mark incorporated therein according to Policy ¶ 4(a)(i). See Bittrex, Inc. v. Sergey Valerievich Kireev / Kireev, FA 1784651 (Forum June 5, 2018) (holding that the domain name consists of the BITTREX mark and adds “the letters ‘btc’ and the gTLD .com which do not distinguish the Domain Name from Complainant’s mark.”)
In view of the above, the Panel finds that Complainant has proven that the hondae.com domain name is confusingly similar to a trademark in which Complainant has established rights according to Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Complainant is required to make a prima facie case that Respondent lacks rights and legitimate interests in the hondae.com domain name under paragraph 4(a)(ii) of the Policy, then the burden shifts to Respondent to show that 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 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”).
In the case at hand, Complainant has made a prima facie case and Respondent has failed to raise convincing circumstances that could demonstrate, pursuant to Policy ¶ 4(a)(ii), rights or legitimate interests in the hondae.com domain name.
Based on the records, Complainant has not licensed, permitted, or authorized Respondent to use Complainant’s HONDA mark or to register the hondae.com domain name.
Moreover, there is no indication before the Panel that Respondent, whose name is “Domain Admin” according to the WHOIS information, is commonly known by the hondae.com domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record listed “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the statefarmforum.com domain name pursuant to Policy ¶ 4(c)(ii)).
Complainant submits that Respondent has not been using the hondae.com domain name in connection with a bona fide offering of goods or services or a legitimate use since the hondae.com domain name is confusingly similar to Complainant’s mark and has been merely parked.
Respondent rebuts Complainant’s contentions stating that it operates in the business of speculatively registering domain names corresponding to geographical terms and generating revenue from those domain names through various methods, including placing “parking” or “sponsored search” pages on the domain names and selling the domain names. Respondent further submits that it registered the hondae.com domain name due to the correspondence of “hon dae” to the name of a geographic location in South Korea (“Hong Dae”) as referenced on the “www.reddit.com” website. Respondent acknowledges the similarity of the hondae.com domain name with the HONDA mark and that the hondae.com domain name previously resolved to a parking page with reference to the HONDA mark but submits that, immediately upon receipt of the Complaint notification, it changed the content of the webpage to prevent brand-related links from appearing.
The Panel acknowledges Respondent’s rebuttals to Complainant’s allegations and notes, however, that it has failed to provide convincing evidence to demonstrate, pursuant to paragraph 4(c) of the Policy, that it has rights or legitimate interests in the hondae.com domain name.
Indeed, in order to substantiate its claim that the hondae.com domain name was registered for use in connection with its business strategy of registering domain names corresponding to geographical terms, namely, names of neighborhoods in various cities that are popular with tourists, Respondent submitted only a screenshot of few results yielded by the “www.reddit.com” Reddit website, showing amongst other examples, the word “hondae” being purportedly used to refer to the location Hong Dae in South Korea. There is no other evidence before the Panel showing that the district name Hong Dae may actually be commonly spelled as Hon Dae.
On the contrary, the Panel notes that the hondae.com domain name is almost identical to Complainant’s HONDA mark and the honda.com domain name, from which it differs only by one single letter “e”. Furthermore, as mentioned above, the hondae.com domain name initially resolved to a parking page publishing commercial links also related to Complainant’s HONDA mark and products and Respondent changed the algorithm to exclude the automotive category from the links displayed on the website only after being notified of the present proceeding.
In view of the above, the Panel finds that Respondent has failed to demonstrate that it registered the hondae.com domain name for its inherent value as a domain name and not to capitalize on the reputation and goodwill of Complainant’s mark.
Thus, the Panel finds that Complainant has made a prima facie case and that Respondent has failed to demonstrate that it used the hondae.com domain name in connection with a bona fide offering of goods or services prior to receiving notice of the dispute. The Panel also finds that Respondent’s redirection of the hondae.com domain name to a pay-per-click page where the hondae.com domain name is offered for sale does not amount to a legitimate noncommercial or fair use.
Therefore, the Panel finds that the Complainant has proven that Respondent has no rights or legitimate interests in the hondae.com domain name according to Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
The Panel finds that, in light of the registration of the trademark HONDA in the United States since 1967, the use of the mark in connection with Complainant’s products and services in the United States and several other countries and the well-known character of the HONDA mark in the automotive sector, Respondent could not ignore the existence of Complainant’s mark at the time of registration of the hondae.com domain name.
Indeed, Respondent admitted having knowledge of the HONDA mark but contended that it did not appreciate the confusing similarity of the hondae.com domain name with the mark.
The Panel notes that Respondent declared to be active in the business of speculative registration of domain names corresponding to generic terms but failed to provide convincing explanations demonstrating that it intended to register the hondae.com domain name as it corresponds to the name of a geographic location.
Considering the confusing similarity of the hondae.com domain name with Complainant’s well-known trademark and the circumstance that the hondae.com domain name initially resolved to a pay-per-click page displaying links related to Complainant’s mark and products, the Panel concludes that, on balance of probabilities, Respondent registered and used the hondae.com domain name to target Complainant and its mark.
In view of the redirection of the hondae.com domain name to the website described above, displaying pay-per-click links and a notice indicating that the hondae.com domain name is for sale, the Panel finds that Respondent intentionally attempted to attract internet users to its website for commercial gain, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website according to Policy ¶ 4(b)(iv).
Therefore, the Panel finds that Complainant has proven that Respondent registered and is using the hondae.com domain name in bad faith according to Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the hondae.com domain name be TRANSFERRED from Respondent to Complainant.
Luca Barbero, Panelist
Dated: December 27, 2024
