Nominet UK Dispute Resolution Service

DRS 05818

Honda Motor Co Limited v Liam Kelly

Decision of Independent Expert

1.	Parties

Complainant:	Honda Motor Co Limited	
Country:	Japan

Respondent:	Liam Kelly	
Country:	United Kingdom

2.	Domain Names

hondapetrolgenerators.co.uk (“the first domain name”) and hondagenerator.org.uk (“the second domain name”) (collectively: “the domain names”)

3.	Procedural Background

Nominet received the complaint dated 18 June 2008 on 20 June. It checked that the complaint complied with its UK Dispute Resolution Service Policy (“the Policy”) and the Procedure for the conduct of proceedings under the Dispute Resolution Service (“the Procedure”).

The complaint was supported by material in 17 annexes:

A	printouts with details of the Complainant’s UK and European trademark registrations

B	a history of the Complainant

C	information from the Complainant’s website about its products

D	a selection of the Complainant’s promotional material

E	an article from Wikipedia about the Complainant

F	the Whois database entry for the first domain name

G	printouts from the website at the first domain name

H	a letter of 2 May 2008 from the Complainant to the Respondent, asking him to stop using the domain names

I	a printout of the source code for the web page at the first domain name

J	a printout from the website at production-power.co.uk

K	the Whois database entry for the second domain name

L	printouts from the website at the second domain name

M	a printout of the source code for the web page at the second domain name

N	the Whois database entry for production-power.co.uk

O	the results of a ‘Google’ search for ‘honda generator’

P	the results of a ‘Google’ search for ‘hondagenerator’

Q	Dispute Resolution Service decision 0205 (The Royal and Ancient Golf Club of St Andrews v The Championship Committee Merchandising Limited)

Nominet notified the Respondent of the complaint on 20 June and informed him that he had 15 working days within which to lodge a response.

On 23 June the paper copy of the complaint sent to the Respondent was returned by the Royal Mail, marked ‘addressee has gone away’. On the same day, the Respondent sent a brief email reply to the effect that he was content to transfer the domain names to the Complainant. On 25 June Nominet acknowledged the response and sent the Respondent a transfer form for him to complete. At 7 July the form had not been returned so the dispute entered the mediation stage. Mediation did not resolve the dispute and on 30 July Nominet notified the parties that an expert would be appointed to settle the matter if it received the appropriate fee from the Complainant. The fee was received on 8 August. 

On 11 August I, Mark de Brunner, agreed to serve as an expert under Nominet’s Dispute Resolution Policy and Procedure. I subsequently confirmed that I am independent of each of the parties and that there are no facts or circumstances that might call into question my independence.

4.	Outstanding Formal/Procedural Issues

For complaints filed on or after 29 July 2008 there is a new version (version 3) of the Dispute Resolution Service (DRS) Policy and Procedure. Version 2 of the rules applies to complaints filed between 25 October 2004 and 28 July 2008. This complaint was filed on 20 June 2008 so version 2 of the Policy and Procedure applies.

5.	The Facts

I have visited the web pages at both the domain names at issue and at the domain name registered by the Complainant (honda.co.uk). From those visits, the complaint and the administrative information supplied routinely by Nominet, I accept the following as facts.

The Complainant was established in 1948, apparently named after the company’s founding president, Soichiro Honda.  The company manufactures, among other things, cars, motorbikes and petrol generators. It is the largest engine-maker in the world, the second largest manufacturer in Japan and the fifth largest car manufacturer in the world. It holds UK and European trademarks for ‘Honda’ – the first UK trademark registration dating back some 30 years. It has registered the domain name honda.co.uk and has used it since before 1996. It has promoted the name ‘Honda’ extensively and established significant goodwill in the name.

The domain names were registered in 2007, the first on 15 November and the second on 14 December. 

At 28 May 2008, the first domain name resolved to a website that was an online shop for generators, water pumps, pressure washers and other industrial equipment. The landing page advised: ‘HondaPetrolGenerators is a trading name of Production Power Generators Ltd’. The source code for the website contained the metatag ‘honda generators’. It also contained a link to the Respondent’s other website at production-power.co.uk, for the sale, hire and servicing of equipment. The domain name production-power.co.uk was registered on 28 July 2007.

At 28 May 2008 the second domain name resolved to a website headed ‘Honda Generators Online Shop’ and containing links both to the first domain name and to production-power.co.uk. The source code for the website at the second domain name contained the metatags ‘honda’, ‘honda generators’ and ‘honda petrol generator’.

The Respondent’s response to the complaint is in the form of a brief email received by Nominet on 23 June 2008:

If Honda want both hondapetrolgenerators.co.uk and hondagenerator.org.uk then they are welcome to them.  You can move them away from fasthost when ever you want, the company they were registered for has never got off the ground.  We were ment (sic) to be selling Honda generators on the internet so this domain seemed a sensible option but its (sic) never taken off so Honda can have it for free if they want.

Regards
Liam

In the absence of a completed transfer form, however, the Complainant proceeded with the complaint to settle the dispute.

6.	The Parties’ Contentions

Complainant

The Complainant says that it has rights in Honda, a name which is similar to each of the domain names, because it has been trading as Honda since 1948.

It argues that the domain name is an abusive registration because the Respondent:

(i)	registered the domain name as a blocking registration

(ii)	registered the domain name for the purpose of unfairly disrupting the business of the Complainant (using a name in which the Complainant has rights in order to compete with the Complainant and to attract internet traffic to his main trading website at production-power.co.uk)

(iii)	is using the domain names in a way likely to confuse internet users into believing that the domain name is connected with the Complainant 

(iv)	is engaged in a pattern of registrations where he is the registrant of domain names which correspond to well known names or trade marks in which he has no apparent rights. (The 2 domain names at issue here make up the claimed pattern.)

The Complainant says that

(v)	the domain names are being used as trading names and that therefore it is not open to the Respondent to defend their registration by claiming that the names are generic or descriptive.

Respondent

In his brief response the Respondent does not seek to address any of these arguments but simply offers to transfer the domain names.

7.	Discussion and Findings

General

To succeed in this complaint the Complainant must prove, on the balance of probabilities, that

-	it has rights in respect of a name or mark which is identical or similar to the domain name; and

-	the domain name, in the hands of the Respondent, is an abusive registration.

Complainant’s Rights

The Complainant has been trading under the name Honda for some 60 years. Given that fact together with its promotional spending on the name, I agree that it has built up goodwill and therefore unregistered rights in the name. In addition to those unregistered rights it has registered rights in the form of UK and European trademarks. 

The Complainant has rights in the name Honda. Ignoring the .co.uk and .org.uk suffixes as simply a generic feature of the Nominet registry, the domain names are hondapetrolgenerators and hondagenerator. Each of them couples the name in which the Complainant has rights with a label for a kind of equipment. I conclude that the Complainant has rights in respect of a name which is similar to each of the domain names.

Abusive Registration

The DRS rules define an abusive registration as a domain name which either

-	was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant’s rights; or

-	has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s rights.

The Policy contains a non-exhaustive list of factors that may point towards an abusive registration. The Complainant reflects many of them in its arguments and I can start by taking those arguments in turn.

The Complainant argues that these domain names are blocking registrations because they prevent it from using them. As a matter of fact the registration of a domain name does block others from registering it but, in my judgement, for this factor to have any weight there needs to be some indication that the Respondent registered the domain names in order to prevent the Complainant from using them. But here there is no indication that - but for the Respondent’s registration – the Complainant would have any interest in these domain names.
This argument does not seem to me to get the Complainant anywhere.

It is on firmer ground when it argues that the Respondent registered the domain names for the purpose of unfairly disrupting the Complainant’s business. As is typical in such cases, direct evidence of intention is difficult to find, but choosing a domain name that incorporates Honda was bound to have some effect on the Complainant’s business. Whether that is disruptive and whether such disruption is fair is for me to decide but my starting point is that in circumstances like this the Respondent is likely to have some explaining to do.

I ought to add that I attach little weight to the evidence that the Respondent is using the metatags ‘honda’, ‘honda generators’ and ‘honda petrol generator’ in the source code for the websites at the domain names. This is a dispute about domain name registrations. The use of the words ‘honda’, ‘generator(s)’ and ‘petrol’ as part of those domain names undeniably helps determine the character of the registration. But the extent to which it does so is not determined by metatags. If a registration is abusive it will be abusive whatever metatags form part of the source code at any web pages at the domain name. Equally, if a registration is not abusive it cannot be rendered abusive by a particular metatag. 

The list of factors in version 2 of the Policy refers to use of a domain name which ‘has confused’ people or businesses. But the Complainant is right to point out that the list is not exhaustive and that experts (including the expert deciding DRS 0205) have readily accepted that likelihood of confusion is a potentially relevant factor. There is nothing about either domain name that puts any distance between the Respondent and the Complainant. Internet users could very easily believe they will be taken to a website run by the Complainant. I agree there is a strong likelihood of confusion.

The Complainant suggests that the Respondent is engaged in a pattern of registrations corresponding to well-known names in which he has no rights and that these domain names are part of that pattern. The significance of this as a factor in the Policy is that it allows the Complainant to look beyond the domain names at issue and put them into a broader context – a context that enables the Complainant to introduce evidence of the Respondent’s registrations beyond those immediately in point. But as here the only evidence it offers of the ‘pattern’ is the pair of domain names presently at issue, that broader context is not established. To my mind that does not advance the Complainant’s case.

Turning to the illustrative list of factors which may be evidence that a domain name is not an abusive registration, the Complainant attempts to pre-empt any defence that the domain names are generic or descriptive. In one sense of course the domain names are both descriptive and generic: they describe a class of things (petrol generators and generators made by Honda). But in the context of a dispute over whether unfair advantage is being taken over rights in a name, ‘generic’ and ‘descriptive’ are labels that signal that names are, at least in principle, capable of being used by anyone – as distinct from names in which one party may have exclusive rights. In that sense, a domain name that includes the Complainant’s own name is arguably neither generic nor descriptive. Asserting that it is either or both simply begs the present question. I agree with the Complainant that this would not help the Respondent.
 
In a DRS context, using someone else’s name in a domain name registration, a name in which that person has rights, has justly been described as high-risk. It has been said that it looks like impersonation - and that that can rarely be fair. The issue here is less clear-cut because the Respondent is not simply using the Complainant’s name. He is incorporating a name in which the Complainant has rights into his domain name. But in my view, to start to argue that this is legitimate, there would have to be something about the domain name that put a degree of distance between the Respondent and the Complainant. Here there is no such distance. The Respondent is using the name Honda as if it were his own to employ freely. He is incorporating it within a trading name (‘HondaPetrolGenerators’) that he is seeking to establish. Even if he were not, both domain names seem to me to imply that they are connected with the Complainant. As a result, the Respondent receives internet traffic on the back of the Complainant’s rights. That takes advantage of those rights and in my view that advantage must be unfair.

My conclusion is that the domain name was registered and has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s rights.

8.	Decision

I find that the Complainant has rights in respect of a name or mark which is similar to the domain names and that each of the domain names, in the hands of the Respondent, is an abusive registration.

In the light of that, I direct that the domain names be transferred to the Complainant.

Mark de Brunner

28 August 2008