WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Honda Motor Co. Ltd. v. Gustavo Rodrigues

Case No. D2017-2391

1. The Parties

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

The Respondent is Gustavo Rodrigues of São Paulo, Brazil.

2. The Domain Name and Registrar

The Disputed Domain Name <queimatotalhonda2017.net> (the “Disputed Domain Name”) is registered with Hostinger, UAB (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 4, 2017. On December 5, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 5, 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 January 2, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 22, 2018. The Center sent notice of the proceeding via email and courier. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on February 2, 2018.

The Center appointed Lynda M. Braun as the sole panelist in this matter on February 19, 2018. 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 a Japanese multinational company primarily known as a manufacturer of automobiles and other vehicles. The Complainant was founded in Japan in 1948, with subsidiaries and affiliates established all over the world, including in Brazil. The Complainant owns numerous trademark registrations for HONDA in many jurisdictions worldwide, including in Brazil, where the Respondent resides (the “HONDA Mark”). The earliest trademark registration was in 1964 (see Brazilian trademark no. 004023080, registered on April 15, 1964) and the word mark HONDA was registered in 1978, where it has been considered a highly-reputed mark by the Brazilian Trademark Office since 2015.

The Complainant promotes its goods and services through its official website at “www.honda.com” and its Brazilian counterpart “www.honda.com.br”.

The Respondent registered the Disputed Domain Name on October 3, 2017, long after the Complainant began to use the HONDA Mark in commerce.¹ The Disputed Domain Name is currently inactive.

Prior to the commencement of this proceeding, the Complainant’s counsel sent a cease and desist letter to the Respondent, but received no answer.

5. Parties’ Contentions

A. Complainant

The following are the Complainant’s contentions:

- The Disputed Domain Name is confusingly similar to the Complainant’s Mark.

- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

- The Respondent registered and is using the Disputed Domain Name in bad faith.

- The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.

B. Respondent

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

6. Discussion and Findings

In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)):

(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 was registered and is being used in bad faith.

A. Identical or Confusingly Similar

This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.

The Panel finds that the Complainant has established rights in its HONDA Mark based on its longstanding use as well as its trademark registrations for the HONDA Mark in Brazil and other jurisdictions worldwide. The Disputed Domain Name consists of the HONDA Mark in its entirety preceded by the descriptive phrase “queimatotal”, which translates to “clearance sale” or “mega sale” in Portuguese, followed by the term “2017” and the generic Top-Level Domain (“gTLD”) “.net”. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a descriptive word or phrase. As stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795; see also Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923.

This is especially true where, as here, the added terms are directly related to the Complainant’s business, increasing the possibility of confusion among consumers who might believe that the Respondent’s website promotes discounts of the Complainant’s products. See, e.g., Gateway Inc. v. Domaincar, WIPO Case No. D2006-0604 (finding the domain name <gatewaycomputers.com> confusingly similar to the trademark GATEWAY because the domain name contained “the central element of the Complainant’s GATEWAY marks, plus the descriptive word for the line of goods and services in which the Complainant conducts its business”).

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 gTLD, as it is viewed as a standard registration requirement.

See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.

Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.

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 of the dispute, the respondent’s 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) The respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) The respondent is 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.

The Panel finds that there is no evidence of the existence of any of the above circumstances.

Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the Disputed Domain Name. Once such a prima facie case is made, the respondent carries the burden of production to demonstrate rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.

In this case, the Respondent has failed to submit any arguments or evidence to rebut the Complainant’s prima facie case. There is no evidence that the Respondent was authorized, licensed or otherwise permitted to use the Complainant’s mark, nor is there evidence of any type of business relationship between the Complainant and the Respondent. The name of the Respondent has no apparent connection to the Disputed Domain Name that would suggest that it is related to a trademark or trade name in which the Respondent has rights. Based on the use made of the Disputed Domain Name, the Panel finds that the Respondent is not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name.

Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.

C. Registered and Used in Bad Faith

This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.

First, the Panel finds that the Respondent attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s HONDA Mark. The use of a domain name to intentionally attract Internet users to a registrant’s website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website for commercial gain demonstrates registration and use in bad faith.

As discussed above, the Disputed Domain Name initially resolved to an online store that was identical to the Complainant’s official website in an attempt to mislead Internet users into thinking that they arrived at a website seemingly advertising and selling the Complainant’s genuine goods. Such use created the impression that the Respondent’s website was sponsored, affiliated and/or endorsed by the Complainant and demonstrates the Respondent’s bad faith use and registration of the Disputed Domain Name.

Second, the Panel finds that the Respondent had actual knowledge of the Complainant’s rights in its widely-used HONDA Mark when registering the Disputed Domain Name. The Respondent’s actual knowledge of the Complainant’s rights can be inferred from the Respondent’s use of the HONDA Mark to create a website that displayed and offered for sale goods to convince customers that the website was affiliated with the Complainant.

Third, the Respondent’s registration and use of the Disputed Domain Name that is confusingly similar to the Complainant’s well-known trademark is sufficient evidence of bad faith registration and use. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with such a well-known service and product by someone with no connection to the service and product suggests opportunistic bad faith).

Finally, the Respondent has exhibited a pattern of bad faith registration and use of domain names that contain well-known trademarks. The Panel conducted a reverse WhoIs search and found that the Respondent has registered hundreds of such domain names. The Respondent has also been party to prior UDRP proceedings in which the domain names at issue contained the HONDA Mark and were ordered transferred to the complainant. See Honda Motor Co., Ltd. v. Gustavo Henrique Rodrigues Pacheco, Producoes, WIPO Case No. D2017-1770. This pattern of cybersquatting is strong evidence of bad faith.

Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.

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, <queimatotalhonda2017.net>, be transferred to the Complainant.

Lynda M. Braun
Sole Panelist
Date: March 2, 2018

¹ The Disputed Domain Name initially resolved to a website that was an online store that displayed, advertised and seemingly sold HONDA automobiles at a discount. The website was almost identical to the HONDA official website except that the contact telephone and WhatsApp numbers on the Respondent’s website did not belong to the Complainant. In other words, the Respondent appeared to be eliciting contact information and sales from customers by deceiving Internet users presumably looking for the Complainant and its products.