The Complainant is American Honda Motor Co., Inc of Torrance, United States of America, represented by Phillips Ryther& Winchester, United States of America.
The Respondent is Milan Kovac of Bratislava, Slovakia / B c/o Privacy Protect of Shanghai, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING (SHANGHAI) CO., LTD dba HebeiD (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 21, 2012. On August 22, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 24, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 27, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on August 28, 2012. The Center sent an email communication to the Parties on August 27, 2012 requesting the Parties to submit their request regarding the language of the proceedings. The Complainant submitted its Language Request on August 28, 2012. No submission was received from the Respondent by September 1, 2012.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 4, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 24, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 26, 2012.
The Center appointed George R. F. Souter as the sole panelist in this matter on October 1, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is a wholly-owned subsidiary of Honda Motor Co., Ltd, of Japan, one of the world’s leading automobile companies, and has the right to use and protect the HONDA trademark. Details of extensive registration of the HONDA trademark have been supplied to the Panel. In UDRP proceedings as early as 2003, in Honda Motor Company Limited v. LOKITA Enterprises,WIPO Case No. D2003-0507, the HONDA trademark was recognized as well known.
The disputed domain name was registered on December 1, 2005 5. Parties’ Contentions A. Complainant
The Complainant alleges that the HONDA trademark is well known, and that the disputed domain name, is confusingly similar to and functionally identical to the HONDA trademark, adding only the geographic qualifier “Bloomfield” to the HONDA mark. The Complainant contends that in determining whether a domain name comprised of a geographic indicator like “Bloomfield” and a mark like HONDA is confusingly similar to the Complainant’s mark, the geographic qualifier or place name is to be omitted and the domain name is to be treated as if it consisted of the mark alone because that is the way the domain name will be comprehended or understood by readers, and has drawn the Panel’s attention to, inter alia, the decision in Playboy Enterprises International Inc. v. Joao Melancia,WIPO Case No.D2006-1106, in which the panel concluded that “the addition of a geographical indicator to a domain name cannot suffice to prevent the respective trademarks from being ‘functionally’ identical. That is because most potential users of the Internet are familiar with the practice of well known businesses using geographical indicators in domain names to direct certain of their goods or services to consumers in particular locations around the world.”
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name and, in particular that the Respondent is not known by the disputed domain name, has not been authorized by the Complainant or its parent company to use the HONDA mark in any way, has no connection or affiliation with the Complainant or its parent company, and has never made any bona fide use of the disputed domain name.
The Complainant alleges that the disputed domain name has been registered and is being used in bad faith. In connection with registration in bad faith, the Complainant contends that, given the strength and fame of the HONDA trademark, the Respondent’s bad faith is established by the fact of registration alone, and has drawn the Panel’s attention to, inter alia, the decision in Playboy Enterprises International, Inc. v. Tamara Pitts, WIPO Case No. D2006-0675, in which the panel decided that the respondent’s registration of a domain name incorporating a very famous mark of which the respondent was clearly aware, without any evident right to do so, can itself be taken as evidence of bad faith.
The Complainant has provided evidence to the Panel that the disputed domain name is being used in a website promoting the sale of automobiles and related goods and services for sale in direct competition with the Complainant and its parent company, and contends that this provides compelling evidence of use of the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
A preliminary matter to be decided is the language of the proceedings. Although the language of the registration agreement is Slovak, the Complainant has requested that the language of the proceedings should be English, and the Respondent did not contest this request. The Complainant has drawn the Panel’s attention to the fact that the Respondent has appeared frequently as respondent in prior UDRP proceedings, and the language of these prior proceedings has invariably been English. In the circumstances of the present case, the Panel sees no reason to disagree with UDRP panels in previous cases, and decides that the language of these proceedings should be English.
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant or be cancelled:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
It is well-established in decisions under the UDRP that generic Top-Level Domain (“gTLD”) indicators (i.e. “.com”, “.info”, “.net”, “.org”) may be considered irrelevant in assessing confusing similarity between a mark and a domain name. The Panel agrees with this view, and, considers these indicators to be irrelevant in the present case.
The Panel accepts that HONDA was a well known mark at the time of the registration of the disputed domain name, and regards HONDA as the predominant element in the disputed domain name, and, in the circumstances of the present case, agrees with the panel in Playboy Enterprises International Inc. v. Joao Melancia (above) that the mere addition of a geographical indicator to a domain name is insufficient to avoid a finding of confusing similarity between the domain name and the respective trademark. Accordingly, the Panel finds that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate interests
Where a respondent has failed to demonstrate rights or legitimate interests in the disputed domain name, it is well established in prior decisions under the UDRP, with which the present Panel agrees, that a prima facie case advanced by the complainant will be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy.
In this case, the Respondent did not take advantage of the opportunity presented in these proceedings to advance any justification of a claim to rights or legitimate interests in the disputed domain name, and the Panel can draw the appropriate conclusion under the Policy. The Panel accepts the Complainant’s contentions (above) under paragraph 4(a)(ii) of the Policy as establishing a prima facie case, and, accordingly, finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Panel agrees with the UDRP panel in Myer Stores Limited v. Mr. David John Singh,WIPO Case No. D2001-0763, that a finding of bad faith may be made where a respondent knew or should have known of the registration and/or use of the complainant’s trademark prior to registering a domain name, and finds, in the circumstances of the present case, that the Respondent either knew or should have known of the Complainant’s trademark, and that the disputed domain name was registered in bad faith.
Following the predominant view of panels in previous UDRP decisions that use of a website operated under a disputed domain name found to have been registered in bad faith to promote competing goods or services to those protected under a complainant’s established trademark rights is clear evidence of use of the disputed domain name in bad faith, the Panel agrees with the Complainant that the use of the disputed domain name by the Respondent in the present case constitutes use in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, be transferred to the Complainant.
George R. F. Souter
Sole Panelist
Date: October 15, 2012
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