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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Honda Motor co., Ltd v. Domains By Proxy, LLC, Domains By Proxy, LLC / Antonio rocha jesus

Case No. D2017-1377

1. The Parties

The Complainant is Honda Motor co., Ltd of Tokyo, Japan, represented by Kasznar Leonardos Advogados, Brazil.

The Respondent is Domains By Proxy, LLC, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Antonio rocha jesus of Sao Paulo, Brazil.

2. The Domain Name and Registrar

The disputed domain name <hondamotorbrasil.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 July 18, 2017. On July 19, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 19, 2017, 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 July 20, 2017 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 amended Complaint on July 21, 2017.

The Center verified that the Complaint together with the amended 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 27, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 16, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 19, 2017.

The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on August 24, 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 is Honda Motor co., Ltd, a Japanese multinational founded in 1948, with several affiliates and subsidiaries all over the world, including Brazil.

The Complainant owns several trademark registrations in many jurisdictions for the trademark HONDA, especially in Brazil, including the trademark registrations dated from 1964 in class 07.60 (registration No. 004023080, granted on March 12, 1970) and from 1978 in class 07.20/25/40 (registration No. 007041799, granted on December 25, 1979), the latter considered a highly reputed trademark by the Brazilian Trademark Office, according to publication of April 7, 2015.

The disputed domain name was registered on June 10, 2017. Although the disputed domain name is currently inactive, according to the evidence submitted with the Complaint it previously resolved to a website apparently identical to the Complainant’s website “www.honda.com.br”.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the Respondent registered the disputed domain name on June 10, 2017, without its authorization and that the disputed domain name combines the highly reputed trademark HONDA with the dictionary and geographical terms “motor” and “brasil”. The Complainant also says that its trade name is Honda Motor co. Ltd., composed by the term “motor”, which is a denomination indicative of its business.

The Complainant alleges that the addition of the above terms “motor” and “brasil” to the disputed domain name is not sufficient to avoid the confusing similarity with the Complainant’s trademarks.

The Complainant mentions that the Respondent was not authorized to use the mark HONDA and has no agreement, license or affiliation with the Complainant, and that it cannot assert that the Respondent is commonly known by the disputed domain name.

In addition, the Complainant argues that the disputed domain name was previously active to point to a website reproducing the content of the Complainant’s website “www.honda.com.br”, which confirms the Respondent’s lack of rights or legitimate interests in the disputed domain name, as well as its registration and use in bad faith. According to the Complainant, the Respondent reproduced the exact content of its website, except for the information contact to mislead consumers, since the Respondent provided different telephone numbers and email address.

Finally, the Complainant requests the transferred of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

As per paragraph 4(a) of the Policy, the Complainant must prove that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(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

The evidence demonstrates that the Complainant is the owner of several trademark registrations for HONDA in, inter alia, Brazil, and that HONDA was considered by the Brazilian Trademark Office as a highly reputed trademark.

The disputed domain name incorporates the Complainant’s trademark HONDA in its entirety. Indeed, the addition of the dictionary and geographical terms “motor” and “brasil” does not avoid a finding of confusing similarity between the disputed domain name and the Complainant’s trademarks. In this regard, it is the general view among UDRP panels that the addition of merely dictionary, descriptive or geographical words to a trademark in a domain name is normally insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP (for example, Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd, WIPO Case No. D2001-0110).

The Panel finds that paragraph 4(a)(i) of the Policy has been proved by the Complainant, i.e., the disputed domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

The Respondent has not submitted a response to the Complaint.

There is no evidence that the Respondent has any authorization to use the Complainant’s trademark or to register domain names containing the Complainant’s trademark HONDA.

There is no evidence that the Respondent is commonly known by the disputed domain name.

There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name or that before any notice of the dispute the Respondent has made use of, or demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. Instead, the Complainant showed evidence that the disputed domain name was being used to mislead users, since the Respondent reproduced without authorization the content of the Complainant’s website “www.honda.com.br”.

The Panel finds that the use of the disputed domain name, which incorporates the Complainant’s trademark, does not correspond to a bona fide use of the disputed domain name under the Policy.

For the above reasons, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied, i.e., the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The trademark HONDA is registered by the Complainant in several jurisdictions, including Brazil, and has been used since a long time. The disputed domain name incorporates the Complainant’s trademark HONDA and the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant’s HONDA mark is distinctive, widely known and has also considered a highly reputed trademark in Brazil. Thus, a domain name that comprises such a well-known mark is suggestive of the registrant’s bad faith. In addition, the Panel notes that the disputed domain name includes the dictionary and geographical terms “motor” and “brasil”, which in this case may serve as an additional evidence of the registration of the disputed domain name in bad faith, especially considering that the Complainant’s trade name is Honda Motor Co. Ltd. and it is operating in Brazil.

In addition to the above, the Complainant showed evidence that the disputed domain name was used by the Respondent to mislead users into believing that the corresponding website was related to the Complainant, by reproducing the content of the Complainant’s website “www.honda.com.br”, only changing the contact information such as telephone numbers and email address.

Therefore, this Panel finds that the Respondent has intentionally attempted to cause confusion with the Complainant’s trademark by misleading Internet users to believe that its website belongs to or is associated with the Complainant.

This Panel finds that the Respondent’s attempt of taking undue advantage of the trademark HONDA for commercial gain as described in paragraph 4(b)(iv) of the Policy has been demonstrated.

For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, i.e., the disputed domain name has been registered and is being used 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, <hondamotorbrasil.com>, be transferred to the Complainant.

Mario Soerensen Garcia
Sole Panelist
Date: September 1, 2017

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