WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Honda Motor Co., Ltd. v. James Hazelwood
Case No. D2017-1185
1. The Parties
The Complainant is Honda Motor Co., Ltd. of Tokyo 107-8556, Japan, represented by Kasznar Leonardos Advogados, Brazil.
The Respondent is James Hazelwood of Smyrna, Georgia, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <bancohonda.com> is registered with GoDaddy.com, LLC. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 16, 2017. On June 19, 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 June 22, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 12, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 13, 2017.
The Center appointed Marilena Comanescu as the sole panelist in this matter on July 17, 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.
The language of the proceeding is English.
4. Factual Background
The Complainant is Honda Motor Co., Ltd., one of the largest manufacturers of automobiles, motorcycles and engines in the world, established in 1948 in Japan and extended worldwide via affiliates and subsidiaries including in the United States of America (“United States”) since 1958.
Previous UDRP panels have found that the Complainant’s trademark HONDA is distinctive and famous worldwide. See for example American Honda Motor Co., Inc. v. Brendan Bellefeuille, Stressx, WIPO Case No. D2016-1023; American Honda Motor Co., Inc. v. Jeff Randall, WIPO Case No. D2015-1631; American Honda Motor Co., Inc. v. Domain Administrator - WhoIs Watchdog / Honda Automobile Customer Service - American Honda Motor Co., Inc., WIPO Case No. D2015-0559; American Honda Motor Co., Inc. v. Domain Administrator, Private Registrations Aktien Gesellschaft, WIPO Case No. D2012-2185; or American Honda Motor Co., Inc. v. Honda Automobile Company, WIPO Case No. D2007-1558.
Inter alia, the Complainant holds registrations in Brazil for the trademarks HONDA with registration number 004023080, registered on March 12, 1970 and BANCO HONDA with registration numbers 824505387, registered on April 24, 2007 for services in International Class 36, and 822768534, registered on April 29, 2008.
The Complainant operates under the main website “www.honda.com” and holds the website “www.bancohonda.com.br” since February 21, 2000.
The disputed domain name <bancohonda.com> was registered on January 6, 2017. At the time of filing the Complaint it was used for a website depicting images of characters from a Science fiction movie. When the Panel visited the webpage corresponding to the disputed domain name, the content was changed to a website promoting architectural services without however containing any references to the word(s) contained in the disputed domain name.
The Respondent remained silent in the present procedure. However, prior to commencing the UDRP dispute, on April 11, 2017, the Complainant sent the Respondent a cease and desist letter, presented as Annex 7 to Complaint. The Respondent replied on April 17, 2017 through the law firm King, Yaklin, & Wilkins, LLP from the United States, stating the following:
“Mr. Hazelwood is not, has not, and will not violate any intellectual property rights of your clients. While there may be incidental use of the website in Brazil, my client is a US Citizen and business person. He has no intentional conduct or business in Brazil. Further, from your letter, it is apparent that his website does not and cannot interfere with any intellectual property rights of your client.
Extrapolating from US law, our clients are unrelated. There is no possibility of confusion or possible confusion in the marketplace. Further, my client does not believe his website could interfere or harm your clients.
In an effort to avoid any further dispute, my client will consider renaming his domain and transferring ownership.”
To the Complainant’s request, the Respondent’s attorney replied on April 17, 2017 that “my client would consider a fair offer for his property” and on May 10, 2017 in another communication the Respondent’s attorney writes “before my clients invests additional time and resources into his website, please advise whether your client would like to acquire the site, and if so, on what terms.”
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical to its trademark BANCO HONDA, the Respondent has no rights or legitimate interests in the disputed domain name and the Respondent registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In view of the Respondent’s default, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:
(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 the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel will further analyze the potential concurrence of the above circumstances.
A. Identical or Confusingly Similar
The Complainant holds trademark registrations for BANCO HONDA since 2007.
The disputed domain name <bancohonda.com> incorporates the Complainant’s trademark in its entirety and with correct spelling.
It is well established in decisions under the UDRP that the presence or absence of spaces, characters (e.g., hyphens, dots) in a domain name and indicators for generic Top-Level Domains (e.g., “.com”, “.biz”, “.net”, “.org”) are typically irrelevant to the consideration of confusing similarity between a trademark and a domain name.
Given the above, the Panel finds that the disputed domain name <bancohonda.com> is virtually identical to the Complainant’s mark BANCO HONDA, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Complainant asserts that it has given no license or other right to use or register its trademark to the Respondent, that the Respondent is not commonly known by the disputed domain name and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods and services.
Under the Policy, “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”. See section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Respondent has not replied to the Complainant’s contentions and has not come forward with relevant evidence to rebut the Complainant’s prima facie case.
There is nothing in record suggesting that the Respondent has ever been commonly known by the disputed domain name.
To the Complainant’s initial approach before commencing the present UDRP procedure, the Respondent’s attorney replied by asserting that there is no infringement of intellectual property rights without providing any relevant evidence to support its claims and asked for a financial offer to transfer the disputed domain name. However, there was no explanation with regard to the choice in the words comprising the disputed domain name and such use of the disputed domain name, which, together with the rest of the evidence in this present case, does not fall within the noncommercial or fair use principles.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The Complainant’s HONDA trademark is used in commerce since 1948 and has become famous worldwide. Furthermore, the Complainant holds trademark registrations for BANCO HONDA in Brazil.
The disputed domain name was registered in 2017 and incorporates the HONDA mark together with the term “banco”, the Spanish or Portuguese word for “bank”.
In the present case, particularly given the distinctiveness and worldwide fame of the mark HONDA, this Panel considers irrelevant if trademark registrations for variations thereof, i.e. for BANCO HONDA exist at all, and if so, if such registrations are made in other jurisdictions than those in which the Respondent is located.
For the above, the Panel finds that the disputed domain name was registered in bad faith, knowing the Complainant and targeting its trademark.
According to the case file evidence, at the time of filing the Complaint the disputed domain name <bancohonda.com> was used to depict images of characters from a Science fiction movie.
The Respondent is using the Complainant’s distinctive and worldwide famous trademark without permission in order to get traffic on its web portal and to likely obtain commercial gain from the false impression created for the Internet users with regard to a potential affiliation/connection with the Complainant. Paragraph 4(b)(iv) of the Policy provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location” is evidence of registration and use in bad faith.
The Internet users searching for the Complainant would acces the website corresponding to the disputed domain name considering it belongs or is somehow associated with or endorsed by the Complainant.
Further, the Respondent chose not to participate in these proceedings and has not contested any of the allegations made by the Complainant, and did not provide any evidence whatsoever. Such passive attitude of the Respondent can be considered further evidence of bad faith. See also Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Kabushiki Kaisha Toshiba v. Shan Computers, WIPO Case No. D2000-0325; Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.
In the procedures initiated by the Complainant prior to commencing the UDRP procedures, the Respondent’s attorney claimed there was no intellectual property infringement due to different jurisdictions, ignoring the fame of the HONDA mark worldwide, including in the United States and the general principles of law. Furthermore, it requested a “fair offer” to transfer the disputed domain name to the Complainant. In this Panel’s view, this is a bad faith conduct.
For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name <bancohonda.com> in bad faith, pursuant to the Policy, paragraph 4(a)(iii).
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 <bancohonda.com> be transferred to the Complainant.
Date: July 28, 2017