WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Honda Motor Company Limited v. LOKITA Enterprises
Case No. D2003-0507
1. The Parties
The Complainant is Honda Motor Company Limited of Tokyo, Japan, represented by Mr. S. D. Ahuja of Calcutta, India.
The Respondent is LOKITA Enterprises of Tallahassee, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <hondaindia.com> is registered with Register.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 26, 2003. On June 27, 2003, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On June 27, 2003, Register.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, technical and zone contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 July 3, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was July 23, 2003. The Response was filed with the Center on July 17, 2003.
The Center appointed Peter G. Nitter as the sole panelist in this matter on August 1, 2003. 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
In 1948, the Complainant was incorporated with the name HONDA as the key and principal feature of its business name and also as its trade mark since its inception. The Complainant gave its business an international dimension and started exporting its motorcycles under the trade mark HONDA to the United States of America in 1959.
The Complainant is one of the twelve largest producers of automobiles in the world. The Complainant has over 100 production facilities in 39 countries of the world, including Italy, France, Spain, United Kingdom, United States of America and India. The products of the Complainant are sold in more than 160 countries. The mark/name HONDA of the Complainant is registered as a trade mark, inter alia, in the following countries: Afghanistan, Albania, Algeria, Argentina, Armenia, Aruba, Australia, Benelux, Bermuda, Bolivia, France, Italy, Israel, Libya, Iraq, Ireland, India, Jamaica, United States of America, United Kingdom, Macedonia, Madagascar, Peru, Poland, Syria, Taiwan etc. In India, the trade marks of the Complainant are registered under registration numbers 201233 in class 12, 225243 in class 07, 422777 in class 07 and 393803 in class 12.
Complainant hosts and maintains a large number of web sites throughout the world, with domain names consisting of ‘honda’ and ‘honda’ in combination with various business related or geographic suffixes, including the domain name <hondacarindia.com>.
Respondent has registered the domain name <hondaindia.com>.
5. Parties’ Contentions
The domain name is identical to the trade mark of the Complainant. The word ‘honda’ forms an essential part of the domain name <hondaindia.com> of the Respondent. The said domain name is intended to project a message to the surfer/consumers that the Respondent is a subsidiary and/or associate company of the Complainant in India.
The Respondent has no rights or legitimate interests in respect of the domain name.
The Respondent has no trade mark rights or legitimate interests in respect of the domain name at issue due to the Complainant's long prior use of its mark. HONDA is not the legal name of the Respondent and the Respondent is not doing any business under that name. Moreover, the Respondent is based in America and appears to have no connection with India or business in India.
Hence, the use of the domain name <hondaindia.com> by the Respondent would invariably lead a surfer to believe that the said domain name belongs to the Complainant and represents the web site of the Complainant for the India region.
The domain name was registered and is being used in bad faith.
The Respondent has not established a web site accessible via the domain name <hondaindia.com>. The Respondent first registered the domain name in October, 1999. If the Respondent had a bona fide reason to register the said domain name, it would have proceeded to activate the web site at the said domain name address. The fact that the Respondent has chosen not to do so implies mala fide intentions on its behalf to sell the name to a third party or to use the said domain name for some fraudulent purpose.
The Respondent is deliberately and intentionally attempting to create a likelihood of confusion for the Internet users as to the source, sponsorship, affiliation and endorsement to get financial gains. The Respondent has also deliberately misappropriated and traded upon the Complainant's considerable goodwill and reputation. The Respondent appears to have made false representations to the Registrar that his registration of the domain name will not infringe or violate the trade mark rights of any third party. The Respondent has registered the domain name for sale or to prevent the Complainant reflecting its name in a corresponding domain name.
The domain name has been registered and used in bad faith. If the Respondent or any third party were to activate a web site via the said domain name, this would cause confusion among Internet users who would be misled into believing that there is some connection between the web site and the Complainant. It is submitted that the Respondent is preventing the Complainant from making legitimate use of its trademark on the Internet.
The Respondent registered the disputed domain name on October 5, 1999. This was nineteen days before the Uniform Domain Name Dispute Resolution Policy (Policy) was approved by the Internet Corporation for Assigned Names and Numbers (ICANN). ICANN approved the policy on October 24, 1999.
Respondent states that he has registered the domain name at issue for his future use. Respondent is planning to go back to India permanently in the year 2005, and start a non-profit charity organization with the sole purpose of helping the poor and neglected kids who are the future citizens of modern India by providing them with food, shelter and good education. Respondent’s plans are to extend the charity work for helping battered women, helping the poor and neglected senior citizens, open hospitals for poor people etc.
According to the Respondent, the word "honda" in the domain name <hondaindia>stands for:
o- Organization for helping
n- Neglected kids and
d- Develop their
The statement by the Complainant that Respondent’s sole purpose in registering the domain name is to deceive the Honda Company is totally false. Since Respondent has registered the domain name with the sole purpose of using it in the future for his charity work, he is not currently using the web site.
All the statements by Honda Motor company in the Complaint, that Respondent is using the web site for gain, are false.
6. Discussion and Findings
Respondent has asserted that his registration of the contested domain name took place before the Uniform Domain Name Dispute Resolution Policy was approved by the Internet Corporation for Assigned Names and Numbers.
Previous decisions under the UDRP have decided that Respondents implicitly have consented to the UDRP through the renewal of domain name registrations. In the present case, the registrar Register.com has, through its Registrar Verification, also confirmed that the UDRP applies.
A. Identical or Confusingly Similar
The addition of the name of a geographical suffix to a trademark, such as the addition of "India" to HONDA, is a common way of indicating subdivisions of global enterprises, or the geographical area that goods are offered under a trade mark. Complainant, itself, has evidenced that it uses the domain name <hondacarsindia.com> in connection with the offering of goods and services in India.
Complainant’s trade mark is famous around the globe. The addition of a geographical suffix, therefore, does not sufficiently alter the underlying mark to which it is added. A user of the Internet is, in the Panel’s opinion, likely to assume that Complainant is the sponsor of, or is associated with, the web site identified by the disputed domain name with the addition of the geographical suffix ‘india.’ The elimination of the space between "honda" and a country name is dictated by technical factors and customary practice among domain name registrants, and is without legal significance from the standpoint of comparing Complainant’s trademark and the contested domain name.
Hence, Complainant has met its burden of proving that the domain name at issue is confusingly similar to Complainant’s trade mark, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
Respondent has furnished no evidence of use of the domain name at issue. Respondent has asserted an intent to establish a non-profit charity organization. Paragraph 4(c) of the Policy does not contemplate the attribution of rights based on the abbreviation of the name of a hypothetical future non-profit charity organization.
Respondent has not used the name in connection with a bona fide offering of goods or services; has not been commonly known by the domain name, nor is it making legitimate noncommercial or fair use of the name.
The Panel, therefore, finds that Respondent has no rights or legitimate interests in the domain name at issue.
C. Registered and Used in Bad Faith
Respondent has not established a web site corresponding to the domain name at issue, the domain name is inactive. According to previous Panel decisions under the UDRP, this does not, however, necessarily prevent that the domain name has been registered and used in bad faith, see WIPO Case No. D2000-0003, Telstra Corporation v. Nuclear Marshmallows, where the Panel states with regard to non-use of the contested domain name:
"This fact does not, however, resolve the question. As discussed in paragraph 7.6, the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. The distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one. The significance of the distinction is that the concept of a domain name "being used in bad faith" is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith. "
Hence, Respondent’s passive holding of a domain name, without putting it to any use will have to be considered in conjunction with the other circumstances of the case. The question is whether an assessment of the totality of the case supports a finding of bad faith.
Pursuant to the Policy, paragraph 2, Respondent represents and warrants that his registration of the domain name will not infringe upon or otherwise violate the rights of any third party. Despite the above, Respondent has registered a domain name containing in its entirety the trademark HONDA, which, in the Panel’s opinion, must have been known to Respondent due to its worldwide fame.
Bearing in mind that Respondent must have been aware of Complainant’s trademark when deciding to register the disputed domain name, the Panel also find Respondent’s explanation that HONDA is an acronym for "Humble Organization for helping Neglected kids and Develop their Abilities" unlikely. In the Panel’s opinion, the explanation appears to be designed to circumvent the provisions of the Policy.
In its response, Respondent claims compensation for:
" the projected loss I am incurring (for shattering my hopes of owning this dream website (I had spent lot of time in coming up with this Acronym), spread the message of their cause and raise the money for helping those poor & neglected kids in India)."
In light of the Panel’s above findings, the Panel regards this as a circumstance that indicates that the domain name at issue was registered in an attempt to transfer the domain name registration to Complainant for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name, pursuant to the Policy, paragraph 4(b)(i).
The Panel therefore finds that Respondent has registered and used the domain name in bad faith.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <hondaindia.com>, be transferred to the Complainant.
Peter G. Nitter
Dated: August 8, 2003