The Complainant is Honda Motor Co., Ltd. of Tokyo, Japan, represented by Kasznar Leonardos Advogados, Brazil.
The Respondent is Lucio Jose De Souza of Sao Paulo, Brazil. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 23, 2017. On June 23, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 24, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 27, 2017.
The Center appointed Gonçalo M. C. Da Cunha Ferreira as the sole panelist in this matter on August 3, 2017. 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’s company name is Honda Motor Co., Ltd., a Japanese corporation, well known all over the world and with high reputation. It is undoubtedly one of the most famous companies within the automobile and motorcycle manufacturer industry.
The Complainant owns a significant number of registrations worldwide for the trademark HONDA, specifically in Brazil, the first of it being registered on April 15, 1964. Also in Brazil the word mark HONDA was considered a highly reputed mark by the Brazilian Patent and Trademark Office on April 7, 2015.
Honda’s corporate website in Brazil is displayed at the domain name .
The disputed domain name comprises the trademark HONDA with the addition of the generic term “motors” and the geographical term “brasil”. The generic term “motors” is the plural of the term “motor”, which is part of the Complainant’s company name.
The disputed domain name was registered on May 24, 2017.
The website at the disputed domain name is currently inactive. However, at the time this Complaint was filled, the Complainant declared that the website was active and submitted screenshots showing that the disputed domain name website formerly displayed exactly the same content as the Complainant’s corporate website at the domain name , except for the contact details that were replaced by the Respondent’s telephone and email contact details. 5. Parties’ Contentions A. Complainant
The Complainant contends that the three requirements of paragraph 4(a) of the Policy are met:
1. The disputed domain name is identical to the trademark HONDA in which the Complainant has rights.
The Complainant is the owner of trademark registrations in several countries for the expression “HONDA”, including in Brazil, where HONDA is recognized as a highly reputed trademark. The disputed domain name includes and reproduces in its entirety the highly reputed trademark HONDA, adding the generic term “motors” and the geographical term “brasil”. The Complainant additionally claims that the Complainant’s trade name is composed by the term “motor” and that such term is indicative of the Complainant’s business, and thus the use of the trademark HONDA along with the generic term “motors”, altogether, contributes to strengthen the confusion that arises from the similarity between the disputed domain name and the Complainant’s trademark.
2. The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant states that no authorization has been given to the Respondent in order to use the trademark HONDA and that the Complainant has no agreement, license or affiliation with the Respondent. The Complainant argues that the Respondent is a private individual that apparently does not develop any activity related to motor vehicles and its related activities. Further, the fact that the disputed domain name has been recently registered and used to direct Internet users to a website displaying the exact same content as the Complainant’s corporate website except for the contact details that have been altered, in which the Respondent provided different telephone numbers and email address, clearly demonstrate the lack of legitimate interests. Finally, the Complainant contends that the Respondent has failed to rebut the prima facia case made out by the Complainant.
3. The Respondent has registered and is using the disputed domain name in bad faith. The Complainant claims that the Respondent’s website reproducing the content of the Complainant’s website constitutes an undisputable evidence of its bad faith. Additionally, there is also an undeniable intention to divert and mislead consumers, given that only the contact details shown on the website at the disputed domain name have been altered by the Respondent, providing different telephone numbers and email address, so that consumers could reach the Respondent instead of contacting the Complainant, clearly evidencing the Respondent’s bad faith in obtaining and using the disputed domain name . B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order to obtain the transfer of a domain name, a complainant must prove the three Policy elements, regardless of whether the respondent files a response to the complaint. The first element is that the “domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights”. Policy, paragraph 4(a)(i). The second element a complainant must prove is that the respondent has “no rights or legitimate interests in respect of the domain name”. Policy, paragraph 4(a)(ii). The third element a complainant must establish is that the “domain name has been registered and is being used in bad faith”. Policy, paragraph 4(a)(iii). A. Identical or Confusingly Similar
The Complainant is Honda Motor Co., Ltd., who provided evidence that it has prior registered rights in the HONDA trademark. The Complainant is the owner of several registrations for the trademark HONDA in Brazil, where its trademark is considered to be a highly reputed trademark.
The disputed domain name reproduces in its entirety the trademark HONDA, in which the Complaint has rights, and which constitutes the dominant component of the disputed domain name. The Panel understands that this fact would be enough to consider that the disputed domain name is confusingly similar to the HONDA trademark.
It also comprises the generic term “motors”, which happens to be the plural of the generic term “motor”, as well as the term “brasil”, a country where the Complainant plays a major commercial role on motor engines industries, happens to have its biggest motorcycles production and thus, has strong and important commercial relations with thousands of consumers. In this case, the Panel finds that these terms are insufficient to distinguish the disputed domain name from the Complainant’s trademark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.
Finally, consistent with previous UDRP decisions, the addition of the generic Top-Level Domain (“gTLD”) “.com” should be disregarded in order to distinguish a disputed domain name from a complainant’s mark.
In light of the above, the Panel finds that the first element of the Policy has been satisfied. B. Rights or Legitimate Interests
The Panel accepts that, as stated by the Complainant, the Respondent has acquired no trademark or service mark rights and is not commonly known by the disputed domain name.
The recent registration of the disputed domain name, on May 24, 2017, of which the dominant part is the registered trademark HONDA, well stablished and well known for decades worldwide, and use of the disputed domain name to resolve to a website that copies the Complainant’s website changing the contact details, would per se exclude any possible rights or legitimate interests on the disputed domain name.
Furthermore, the use that the Respondent has made of the disputed domain name, reproducing at the disputed domain name website the exact same content as the Complainant’s website and replacing the Complainant’s contact details by the Respondent’s, is evidence of bad faith.
The Respondent has not presented any relevant evidence that could lead this Panel to conclude that the Respondent could have rights or legitimate interests. Thus, the Panel accepts that the Complainant has made a prima facie case (see, amongst others, Croatia Airlines, d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110) that the Respondent has no rights or legitimate interests in the disputed domain name. In the absence of a Response to the Complaint, the Respondent has failed to rebut the prima facie case.
Therefore, the Panel finds that the second element of the Policy has been satisfied. C. Registered and Used in Bad Faith
The dominant part of the disputed domain name is the trademark HONDA, on which the Complainant has rights. It is a highly reputed trademark, well known for decades worldwide and specifically in Brazil.
The Panel understands that the Respondent registered the disputed domain name being aware that HONDA is a registered trademark and thus knowing that this trademark and its rights belong to its owner (see amongst others Comerica Inc. v. Horoshiy, Inc.,WIPO Case No. D2004-0615; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163). This indicates that the Respondent had knowledge of the Complainant’s business and brand and voluntarily chose to register the disputed domain name. This puts in evidence that the disputed domain name was registered in bad faith.
The Panel considers that for this matter it should be taken into account that the Respondent not only illegitimately used the trademark HONDA, but also linked it to the generic terms “motors” and “brasil”, and that combination contributes to such a high level of similarity with the Complainant brand and business and thus such a high risk of confusion of consumers that it definitely confirms the bad faith of the Respondent at the registration of the disputed domain name.
The Complainant presented evidence that the Respondent used the disputed domain name to resolve to a website that entirely reproduced the content of the Complainant’s corporate website “www.”, changing only the contact details, replacing the Complainant’s email and telephone details for the Respondent’s email and telephone number seeking, through the website at the disputed domain name, to pass itself off as the Complainant.
Although the disputed domain name website is currently inactive, the Panel accepts the evidence that was submitted which reveals an undeniable intention to attract Internet users for commercial gain, creating a likelihood of confusion with the Complainant. This clearly indicates that the Respondent has used the disputed domain name in bad faith (see WIPO Overview 3.0, section 3.1.4).
For the foregoing reasons, this Panel finds that the Complainant has proven that the Respondent registered and used the disputed domain name in bad faith and therefore, the Panel finds that the Complainant has proven the third and final element of the Policy. 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.
Gonçalo M. C. Da Cunha Ferreira
Sole Panelist
Date: August 15, 2017
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