Complainant is Honda Motor Co. Ltd. of Tokyo, Japan, represented by Brights Consulting Inc., Japan.
Respondent is Import 3000, Oscar Alberto Garcia Sandez of Barcelona, Spain.
The disputed domain name is <hondageneradores.com> which is registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 2, 2010. On June 3, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On June 3, 2010, eNom transmitted by email to the Center its verification response confirming that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 8, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 28, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on June 30, 2010.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on July 9, 2010. 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.
Pursuant to paragraph 11 of the Rules, the language of the proceedings shall be English.
Complainant is a Japanese company established since 1948, engaged in the production of motorcycles, cars, general purpose engines, electric generators, scooters, etc., and was ranked 51 among the Fortune Global 500 in 2009.
Complainant has rights over the trademark HONDA, which has registered in numerous jurisdictions around the world, including the following: registration N° 0746293 with the Japan Patent Office, registered in 1967; registration N° 762837 with the World Intellectual Property Organization, registered in 2001; and registration N° 4715025 with The Trade Marks and Designs Registration Office of the European Union, registered in 2006.
The disputed domain name was created on October 26, 2009.
Complainant's assertions may be summarized as follows:
Complainant is a Japanese company established since 1948 and now is the largest motorcycle producer and one of the largest auto producers in the world, developing and producing a wide range of products such as small general purpose engines, electric generators, scooters and sport cars. Complainant has more than 124 production bases in 28 countries outside Japan, being an internationally well-established company. In terms of its world-wide fame, Complainant was ranked 51 among the Fortune Global 500 in 2009.
Complainant is the owner of a substantial number of trademark registrations for the name HONDA all over the world. The HONDA name has been protected as a trademark in Japan since 1963.
The products sold under the HONDA trademark are available worldwide. Complainant has spent large sums of money for advertising purposes, making the trademark recognizable for an ever-increasing number of consumers. As a result of Complainant's longstanding and extensive use of the unique HONDA mark throughout the world, the HONDA trademark has indisputably become one of the world's most recognizable trademarks.
Complainant is the exclusive owner of several domain names, such as <honda.co.jp>, <world.honda.com>, <honda.es> and <hondaencasa.com>.
Part of the disputed domain name is identical to numerous trademarks owned by Complainant, trademarks that are valid, amongst others, in Spain where Respondent is located.
The disputed domain name consists of Complainant's trademark HONDA, and the word “generadores” (in English, “generators”) which is a descriptive word of the goods offered by Complainant, and thus the disputed domain name could be mistaken for an official website of Complainant's generators. The disputed domain name and Complainant's mark are confusingly similar.
Respondent is not licensed to use Complainant's trademarks, nor is Respondent in any way associated with Complainant's group of companies. Investigations show that Respondent is not commonly known by the disputed domain name, and that Respondent has no trademark registrations for HONDA.
The website associated with the disputed domain name displays a series of pages related to electric generators which eventually link to third party sites connected with a wide range of activities including online selling of generators, pumps and other electronic equipments.
Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, nor is Respondent's use a legitimate noncommercial or fair use.
Respondent has no rights or legitimate interests in respect of the disputed domain name.
It is impossible to consider that Respondent was unaware of the existence of the HONDA trademark at the time the disputed domain name was registered. It is evident that the disputed domain name was registered in order to take unfair advantage of the well-known character of Complainant's trademark.
By the use of the HONDA mark in the disputed domain name, Respondent intentionally attempted (and continues to attempt) to use the reputation of Complainant to unfairly obtain financial benefits and also to forward users to other websites not owned or authorised by Complainant.
Respondent is interrupting Complainant's business by directing potential customers to competitors or falsely making those customers believe there is an association between Respondent and Complainant.
Respondent's registration and use of the disputed domain name are in bad faith since Respondent intentionally attempted to attract members of the public who had an interest in purchasing or obtaining additional information about Complainant's generators.
It is Complainant's conviction that the disputed domain name was registered and is being used in bad faith.
Complainant requests that the disputed domain name be transferred to Complainant.
Respondent did not reply to Complainant's contentions.
Paragraph 15(a) of the Rules instructs the 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”.
The lack of response from Respondent does not automatically result in a favorable decision for Complainant1. The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that 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.
As past decisions have demonstrated, it is not enough to merely rely on the international recognition of a trademark and the products covered thereby2. In examining the Complaint and its annexes, this Panel considers that Complainant could have put forward stronger arguments and more conclusive evidence3.
It is undisputed that Complainant is the holder of many HONDA trademark registrations in numerous jurisdictions around the world, and that Complainant's products are well-known internationally under such trademark.
The disputed domain name entirely incorporates the HONDA trademark, adding the word “generadores”. The addition of such generic word is not enough to avoid similarity, nor does it add anything to avoid confusion. Prior panel decisions support this Panel's view (Cfr. Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent, WIPO Case No. D2004-0481; Nokia Corporation v. Nokiagirls.com a.k.a. IBCC, WIPO Case No. D2000-0102).
Therefore, this Panel finds that the disputed domain name is confusingly similar to Complainant's HONDA trademark.
Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant asserts that it has no relationship with Respondent, and that it has never licensed to Respondent the use of the HONDA trademark. Likewise, Complainant asserts that Respondent has never been known by the HONDA trademark.
Respondent is using the website associated with the disputed domain name to show products competing with those of Complainant under Complainant's HONDA trademark, and to show links to other websites where competing products are offered for sale, with the clear purpose of diverting Internet users through such links to other websites unrelated to Complainant's official website. In fact, this Panel visited the website associated to the disputed domain name, which shows at the top a legend stating “Generadores Honda, fabricantes de generadores y grupos electrogenos Honda entre otros artículos” (in English “Honda Generators, manufacturers of Honda generators and generating sets among other articles”). As established in prior cases, such use is not a bona fide offering of products or services4.
Given the longstanding and extensive use and exposure of the HONDA trademark, and in the absence of any explanation from Respondent as to why it might consider it has a right or legitimate interest in using the word “Honda”, albeit with a descriptive part or element, this Panel considers that Complainant has established prima facie that Respondent has no rights or legitimate interests in the disputed domain name5.
Based on the aforesaid, this Panel concludes that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant contends that Respondent's registration and use of the disputed domain name is in bad faith.
Taking into consideration the registration of the HONDA trademark around the world, the nature of Complainant's products and the prolonged use and exposure of the HONDA trademark, it is clear that Respondent should have been fully aware of the existence of Complainant's trademark at the time it obtained the registration of the disputed domain name.
The use of the disputed domain name for a website that is used to market products of Complainant's competitors constitutes an improper use of Complainant's mark and is evidence of Respondent's bad faith6.
In light of the above, it is found that the registration of the disputed domain name was, on the face of it, made in bad faith and it is being used in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the disputed domain name <hondageneradores.com> be transferred to Complainant.
Dated: July 22, 2010
1 See Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465, where it is established: “the panel finds that as a result of the default, [r]espondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by [c]omplainant. The panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented by [c]omplainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence”.
2 See GA Modefine S.A. v. Sparco P/L, WIPO Case No. D2000-0419.
3 See The Skin Store, Inc. v. eSkinStore.com, WIPO Case No. D2004-0661, where it is established: “The [p]anel suspects from looking at the Complainant's homepage at “www.skinstore.com” that further evidence could have been produced, but it is not the job of the [p]anel to hunt it out”.
4 See Pfizer Inc v. The Magic Islands, WIPO Case No. D2003-0870.
5 See Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467: “For methodical reasons it is very hard for the Complainant to actually prove that Respondent does not have rights or legitimate interests in respect of the domain name, since there is no strict logical means of verifying that a fact is not given... Many legal systems therefore rely on the principle negativa non sunt probanda. If a rule contains a negative element it is generally understood to be sufficient that the complainant, by asserting that the negative element is not given, provides prima facie evidence for this negative fact. The burden of proof then shifts to the respondent to rebut the complainant's assertion”.
6 See Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946: “Respondent is not confining his use of the disputed domain name to the resale of [c]omplainant's cigarettes by reference to [c]omplainant's mark. He is trading on the fame of [c]omplainant's mark to sell, inter alia, the products of [c]omplainant's competitors”.