WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Honda Motor Co., Ltd. v. Gustavo Henrique Rodrigues Pacheco, Producoes
Case No. D2017-1770
1. The Parties
The Complainant is Honda Motor Co., Ltd. of Tokyo, Japan, represented by Kasznar Leonardos Advogados, Brazil.
The Respondent is Gustavo Henrique Rodrigues Pacheco of Uberaba, Brazil.
2. The Domain Name and Registrar
The disputed domain name <hondaofertaslimitadas.online> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 13, 2017. On September 14, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 15, 2017, 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 September 22, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 12, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 16, 2017.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on October 20, 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 company founded in the year 1948, with several affiliates and subsidiaries all over the world.
The Complainant owns several trademark registrations in many jurisdictions around the world for the trademark HONDA, including Brazil. The earliest Brazilian HONDA trademark was registered on May 5, 1978. The trademark has been considered a highly reputed trademark by the Brazilian Trademark Office, according to a decision dated April 7, 2015.
The disputed domain name was registered on June 9, 2017.
Although the disputed domain name is currently inactive, according to the evidence submitted in the Complaint, it previously resolved to a website apparently with identical content to the Complainant’s Brazilian website located at “www.honda.com.br”.
5. Parties’ Contentions
The Complainant argues that the Respondent registered the disputed domain name without its authorization and that the disputed domain name combines the highly reputed trademark HONDA with the generic terms “ofertas” and “limitadas”.
The Complainant alleges that the addition of the above terms “ofertas” and “limitadas” 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 there is no evidence that the Respondent is commonly known by the disputed domain name. In addition, the Complainant states that the Respondent is a private individual that apparently does not develop any activity related to motor vehicles and its related activities.
In addition, the Complainant argues that the disputed domain name was reproducing the content of the Complainant’s website located at “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. The Respondent also did not respond to the cease and desist letter sent by the Complainant.
According to the Complainant, the Respondent reproduced the exact content of its website, except for the contact information to mislead consumers,since the Respondent provided different a Whatsapp and telephone number.
Finally, the Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements which a complainant must satisfy in order to succeed. The complainant must satisfy that:
(i) the 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 respect of such domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has established its trademark rights in HONDA as evidenced by the trademark registrations submitted with the Complaint, as mentioned above.
The Panel is also prepared to find that the disputed domain name is confusingly similar to the Complainant’s trademark HONDA.
The HONDA trademark is clearly the dominant element of the disputed domain name. The Panel has had little difficulty in finding that the disputed domain name is confusingly similar to the trademark HONDA, as the additional terms “ofertas” and “limitadas” are merely descriptive and do not avoid such a finding.
For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) as it is viewed as a standard registration requirement.
The Panel finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the disputed domain name or to use its trademarks. The Complainant has prior rights in the trademarks which precede the Respondent’s registration of the disputed domain name. The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“Wipo Overview 3.0”), section 2.1.
The Respondent has failed to show that it has acquired any trademark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services or with a legitimate noncommercial or fair use.
To the contrary, the evidence shows that the disputed domain name reproduced the exact content of the Complainant’s Brazilian website, except for the contact information in order to mislead consumers, since the Respondent provided a different Whatsapp number and telephone number. Thus the content of the disputed domain names shows that the Respondent was using the disputed domain name to attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the website, as explained in the next section.
Therefore, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
To succeed under the Policy, a complainant must show that the disputed domain name has been registered and is being used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Complainant’s trade mark when it registered the disputed domain name. It is implausible that it was unaware of the Complainant when it registered the disputed domain name. The Complainant’s trademarks are considered well known by the Brazilian Trademark Office. The primary significance of the trademark is its reference to the Complainant’s trademark and company name.
With respect to use in bad faith of the disputed domain name, it has been demonstrated by the screenshots included in the Complaint that the disputed domain name reproduced in its entirety the content of the Complainant’s website for consumers from Brazil (located at “www.honda.com.br”). It is the view of the Panel that this is evidence of bad faith since it means that the Respondent knew of the existence of the Complainant and its trademarks (see Molinos Río De La Plata S.A., Molinos IP S.A. v. Ipecsa, WIPO Case No. D2009-1384; Asia Pacific Resources International Holdings Ltd. v. Boeang Maulana, WIPO Case No. D2014-1649; Honda Motor co., Ltd v. Domains By Proxy, LLC, Domains By Proxy, LLC / Antonio rocha jesus, WIPO Case No. D2017-1377).
Therefore, the 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. 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.
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 <hondaofertaslimitadas.online> be transferred to the Complainant.
Pablo A. Palazzi
Date: October 30, 2017