WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Honda Motor Co. Ltd. v. Jonas Guimarães
Case No. D2018-0199
1. The Parties
The Complainant is Honda Motor Co. Ltd. of Tokyo, Japan, represented by Kasznar Leonardos Advogados, Brazil.
The Respondent is Jonas Guimarães of São Paulo, Brazil.
2. The Domain Name and Registrar
The disputed domain name <hondaautomoveis.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 January 31, 2018. On January 31, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 1, 2018, 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 February 14, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 6, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 7, 2018.
The Center appointed Enrique Ochoa de González Argüelles as the sole panelist in this matter on March 16, 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 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 (hereinafter HONDA trademarks) 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 above has been asserted in Honda Motor co., Ltd v. Domains By Proxy, LLc, Domains By Proxy, LLC / Antonio rocha jesus, WIPO Case No. D2017-1377 and Honda Motor Co., Ltd. v. Guilherme Simões Diniz de Oliveira, WIPO Case No. DBR2017-0015.
The disputed domain name was registered on May 19, 2017.
The disputed domain name resolves to a site which has no current use and apparently no prior use in terms of the search carried out at “www.archive.org”.
5. Parties’ Contentions
The Complainant argues that the disputed domain name <hondaautomoveis.com> is identical or confusingly similar to the HONDA trademarks in which the Complainant has rights. Moreover, the Complainant states that the disputed domain name is comprised by the well-known mark HONDA and the word “automoveis”, Portuguese word for automobiles, which is directly related to one of the goods offered by the Complainant.
In line with the above, the Complainant also alleges that the Respondent has no rights or legitimate interests in respect to the disputed domain name <hondaautomoveis.com>. Furthermore, the Complainant sets forth that the disputed domain name was recently registered; that the Respondent is not a licensor or affiliated of the Complainant; that the Respondent is an individual that apparently does not develop any activity related to motor vehicles; that the Respondent is not commonly known as “Honda Automoveis” and that there is no evidence that the Respondent is making any legitimate fair use of the domain name.
Finally, the Complainant argues that the disputed domain name <hondaautomoveis.com> was registered and is being used in bad faith. Additionally, the Complainant makes reference to a cease and desist letter sent to the Respondent and Registrar on January 24, 2018; that the disputed domain name is not actively used; that HONDA’s distinctiveness and reputation is unquestionable; that no good faith use by the Respondent can be expected from the disputed domain name <hondaautomoveis.com> and that it is undisputed that Respondent could not use (in good faith) the disputed domain name <hondaautomoveis.com> to offer products/services related to automobiles.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
As referred to above, the Respondent failed to produce a response in these UDRP proceedings. Therefore, the Panel – in terms of paragraph 14(b) of the Rules and having regard to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) – “shall draw inferences therefrom as it considers appropriate” and “where a particular conclusion is prima facie obvious, where an explanation by the Respondent is called for but is not forthcoming, or where no other plausible conclusion is apparent”.
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
Unchallenged evidence by the Complainant illustrates that the latter is the holder of several HONDA trademarks in Brazil and in other jurisdictions throughout the world and same are – in some countries like Brazil – well-known trademarks.
The disputed domain name is comprised by the HONDA word mark and the dictionary word in Portuguese “automoveis” which refers to automobiles.
Likewise, section 1.8 of WIPO Overview 3.0 sets forth: “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. The nature of such additional term(s) may however bear on assessment of the second and third elements.”
It has also been well established in prior UDRP cases that indicators of generic Top-Level Domains (“gTLDs”) or country code Top-Level Domains (“ccTLDs”) are typically irrelevant for the assessment of identity or confusing similarity. See Graftex Prodcom SRL and Graffitti - 94 R.B.I. Prodcom S.R.L. v. Piazza Affari srl, Michele Dinoia, WIPO Case No. D2017-0148.
In view of the above, the Panel finds that the disputed domain name is confusingly similar to the HONDA trademarks, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Respondent has not submitted a response to the Complaint. On such regard, section 2.1 of WIPO Overview 3.0 sets forth: “while the overall burden of proof in UDRP proceedings in on the complaint, panels have recognized that proving a respondent lacks right or legitimate interests in a domain name may result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge or control of the Respondent. As such, when a complainant makes out a prima facie case that the Respondent lacks rights or legitimate interests, the burden of production of 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”.
It is worth mentioning that – prima facie – the Complainant has evidenced:
- The existence of the well-known HONDA trademarks, specifically Brazilian trademark registration No. 007041799 in terms of Brazilian law and in compliance with Article 6 Bis of the Paris Convention for the Protection of Industrial Property.
- The lack of rights or legitimate interests of the Respondent in the disputed domain name.
And since, the Respondent did not produce a response to evidence the use of the disputed domain name in connection with a bona fide offering of goods or services; that the Respondent is not commonly known by the disputed domain name or any acquired right on such domain name and / nor is the Respondent making a legitimate noncommercial or fair use of the disputed domain name, this Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
As mentioned previously, the Complainant is the holder of well-known HONDA trademarks worldwide, including in Brazil and has – prima facie – evidenced that a cease and desist letter had been sent to the Respondent prior to the filing of the Complaint in these UDRP proceedings; that the disputed domain name is comprised by the work mark HONDA and the dictionary word in Portuguese language “automoveis” which refers to automobiles; and that the disputed domain name is not actively used (passive holding of domain name).
In view of all of the above, the Panel considers that the lack of response to the cease and desist letters of January 24, 2018 and to this Complaint (see Carrefour v. Jan Everno, The Management Group II, WIPO Case No. D2017-0586); the composition of domain the disputed domain name (word mark HONDA and dictionary Portuguese word for “automobiles”) and the “passive holding” circumstance (see section 3.3 of WIPO Overview 3.0) leads to the consideration of registration and use in bad faith of the disputed domain name.
Consequently, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied.
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 <hondaautomoveis.com> be transferred to the Complainant.
Enrique Ochoa de González Argüelles
Date: March 29, 2018