WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hero MotoCorp Limited v. Domains By Proxy, LLC, DomainsByProxy.com / Moien Ali
Case No. D2018-1744
1. The Parties
The Complainant is Hero MotoCorp Limited of New Delhi, India, internally represented.
The Respondent is Domains By Proxy, LLC, DomainsByProxy.com of Scottsdale, Arizona, United States of America (“United States”) / Moien Ali of Gandhi Nagar, India.
2. The Domain Name and Registrar
The disputed domain name <herodealership.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 August 1, 2018. On August 1, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 1, 2018, 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 August 7, 2018, 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 August 20, 2018. On August 28, 2018, the Complainant submitted a second amended Complaint to correct an administrative formality.
The Center verified that the Complaint together with the amended Complaints 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 August 30, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 19, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 20, 2018.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on October 1, 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 leading manufacturer of two-wheeler automobiles and related products and uses the trademark HERO to market its products. The Complainant inter alia owns registered trademarks in India for the HERO marks, some of these are: HERO word mark, bearing registration number 605248 under class 6 dated August 26, 1993; HERO word mark, bearing registration number 605247 under class 7 dated August 26, 1993; and HERO word mark, registration number 235780 under class 12, dated June 13,1966. The Complainant also owns registered trademarks for the HERO “H” device mark and for the HERO MOTO CORP mark and operates its official website from the domain name <heromotocorp.com>.
The Respondent registered the disputed domain name on July 15, 2018, as per the WhoIs records. No active website functions from the disputed domain name presently. It resolves to a website stating “this account has been suspended”. The Panel notes that the disputed domain name was reproducing the “look and feel” of the Complainant’s website with reference to the HERO trademark at the time the Complaint was filed.
5. Parties’ Contentions
The Complainant states it is part of the Hero group of companies that was established in the 1950s to manufacture and sell bicycle and bicycle parts. On January 19,1984, the Complainant states it became an incorporated body. The Complainant claims that it is currently the largest manufacturer of motorcycles and scooters with cumulative sales of more than 84 million two-wheelers since its inception. The Complainant states that it is ranked as number one among two-wheeler manufacturers of the world for the past sixteen consecutive years. The Complainant adds that it has a global presence in about 35 countries. In the domestic market it has 36.9 % share of the two-wheeler market and 51.1 % of the motorcycles market. The Complainant states it has an extensive sales and marketing network of over 6,000 customer touch points.
The Complainant alleges that the HERO mark was adopted in the year 1950 by the Hero group of companies and the Complainant has used the brand name Hero since 1984. The HERO trademark has been registered in 122 countries and the Complainant asserts it is a globally well-known mark. The Complainant adds that considerable amounts are spent on promotion and publicity of products sold under the mark, consequently the mark has acquired goodwill and reputation. The Complainant has filed as further evidence of reputation acquired by the mark, a list of several awards and accolades that it received.
The Complainant states its official website attracts a high volume of visitors. The website also provides an online interface for prospective dealers looking for dealership with the Complainant. The Complainant states the Respondent has without authorization used its HERO mark in the disputed domain name and has copied page by page the Complainant’s official website with minor alternations. The Complainant submits the website linked to the disputed domain name has an identical interface, layout, description, logo, address and information which is likely to mislead the public to believing the website is an official domain name / website of the Complainant. The Complainant argues the Respondent has an intention of launching a cyber-attack on its group and is attempting to cheat and extort persons looking for dealership with Complainant.
The Complainant requests for transfer of the disputed domain name based on the three elements of paragraph 4(a) of the Policy: that the disputed domain name is identical or confusing similar to a mark in which the Complainant has rights, the Respondent has no rights or legitimate interests in the disputed domain name and the disputed domain name has been registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Complainant is required to establish the three elements under paragraph 4(a) of the Policy to obtain the transfer of the disputed domain name, these are:
(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 lacks rights or legitimate interests in the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith by the Respondent.
A. Identical or Confusingly Similar
The first element requires the Complainant to establish the disputed domain name is identical or confusingly similar to a trademark or a service mark in which it has rights.
The Complainant has provided evidence of its registered trademarks in India that establish its ownership and its rights in the HERO trademark. The disputed domain name incorporates the HERO trademark with the word “dealership”.
In view of the reputation and fame associated with the HERO mark, the Panel finds incorporating the mark in the disputed domain name meets the threshold requirement to find confusing similarity between the disputed domain name and the mark. The Respondent’s choice of incorporating the HERO trademark in the disputed domain name with the term “dealership”, in the Panel’s view, does not lessen the prominence of the trademark or lessen the confusing similarity with the mark.
The Panel finds the disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant has accordingly established the first requirement under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The second element under paragraph 4(a) of the Policy requires the Complainant to make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has the opportunity to rebut the Complainant’s contentions and demonstrate rights or legitimate interests in the disputed domain name.
The Complainant has submitted that the Respondent lacks rights and legitimate interests in the disputed domain name and has argued that the Respondent has registered the disputed domain name for purposes of misleading and diverting Internet users. In this context, the Complainant has submitted screenshots of the webpages as evidence. The screenshots show the disputed domain name resolves to a webpage that has copied the content and the layout of the Complainant’s official website. The Panel finds the Respondent’s webpages also display an online application form for dealership that solicits payments from prospective applicants. Furthermore, the Panel notes that the Respondent has set up two email accounts: “[...]@herodealership.com” and “[...]@herodealership.com” that are connected to the disputed domain name.
The use or contemplated use of the disputed domain name for manifestly illegitimate activity such as phishing or defrauding unwary people based on the goodwill and reputation of a known trademark does not confer rights or legitimate interests. See section 2.13 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). In the Panel’s view, under the circumstances discussed, it is inconceivable that the Respondent has any use for the disputed domain name other than to profit from the Complainant’s reputation by misleading unsuspecting Internet users. The Panel finds the circumstances and evidence in the present case therefore indicate that the Respondent is seeking to use the goodwill and reputation associated with the HERO mark to obtain information and solicit amounts from unsuspecting persons.
The Respondent has not filed a response or provided any legitimate reasons for the registration or the use of the disputed domain name. The Panel finds from the material on record that the Respondent is not commonly known by the disputed domain name and there is no evidence to show that the Respondent’s name or any business name corresponds to the disputed domain name. Neither is the Respondent using the disputed domain name in connection with a bona fide offering of goods or services. The Respondent clearly has no authorization from the Complainant to use the HERO trademark. The Panel finds based on all that has been discussed, that there is no evidence that supports a finding of rights or legitimate interests in the disputed domain name favoring the Respondent.
The Panel finds that a prima facie case has been made by the Complainant that the Respondent lacks rights and legitimate interests in the disputed domain name, which the Respondent has not rebutted. The Complainant has fulfilled the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The third element requires the Complainant to establish the disputed domain name has been registered and is being used in bad faith by the Respondent.
The Complainant has argued that the disputed domain name has been registered and used by the Respondent to confuse and attract Internet users looking for dealership opportunities with the Complainant. The Complainant has submitted that the Respondent has tried to falsely entice prospective dealers of the Complainant to deposit huge amounts of money as security deposit under pretext of making them the Complainant’s dealer. The Complainant has stated that it has received emails from its prospective dealers who have stated that they have deposited money with the Respondent, and upon contacting the Complainant, have realized that they have been falsely misled by the disputed domain name registered by the Respondent. Such use of the disputed domain name by the Respondent is bad faith, argues the Complainant.
The Panel finds there is weight in the Complainant’s argument based on the facts and circumstances of the case. Internet users are likely to be confused that the disputed domain name originates from the owner of the HERO trademark and is related to the dealership for the Complainant’s products. The Panel finds that although the disputed domain name is currently parked on the Registrar’s landing page, it appears from the screenshots submitted as evidence by the Complainant that the Respondent had previously displayed webpage content that was copied in toto from the Complainant’s official website and the Respondent has set up an online application form titled “Online Application form for Dealership”. These circumstances lead the Panel to believe that the Respondent has targeted the Complainant’s trademark with knowledge.
The Complainant has established in these proceedings that the HERO trademark is a distinctive mark that is associated with the Complainant by virtue of its extensive use by the Complainant for a considerable length of time. The Respondent has registered the disputed domain name recently, which is long after the Complainant has established its rights in the HERO trademark in India. It is reasonable to infer that the Respondent, being located in India, ought to have known of the well-known HERO mark.
The scope of bad faith instances mentioned under paragraph 4(b) of the Policy are not restrictive. The passive holding doctrine was laid down in the case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Telstra case had laid down that where there is non-use or passive holding of a disputed domain name that incorporates a known mark, bad faith registration and use could be found. Passive holding is typically found in circumstances when there is absence of an active website. The classic doctrine of passive holding as laid down in the Telstra case has evolved further with recognizing that in some cases, the facts may show intermittent passive holding by respondents that amounts to bad faith. See Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393, and Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273.
It is increasingly being found in the fact pattern of cases that an absence of an active website need not necessarily be tantamount to finding passive holding of the disputed domain name, particularly when the respondent has created emails in preparation to use or has used the disputed domain name for phishing activities or such similar activities. Such use of the disputed domain name has been held to be active use and is found to be use in bad faith under the Policy. See Tenaris Connections BV v. Whoisguard, Inc. / Eleven Xie, WIPO Case No. D2018-1121, where bad faith was found when the respondent has used the disputed domain name to send fraudulent emails, purporting to be emails from an employee of the complainant group, with a view to obtain substantial amounts by deception. Also see BHP Billiton Innovation Pty Ltd v. Jafam, WIPO Case No. D2018-0362, where use of the disputed domain name in connection with a fraudulent email scheme to solicit job applications from unsuspecting Internet users was found to be bad faith registration and use of the disputed domain name.
In the present case, it is found that although the Respondent is not currently operating an active website, the Respondent has set up emails for use in connection with the disputed domain name. The entire set of circumstances of the case, the Panel finds, indicate that the Respondent created the email accounts for the purpose of trying to solicit Internet users. Given the Complainant’s reputation in the mark and the clear lack of the Respondent’s rights or legitimate interests in the disputed domain name, the combination of trademark with the word “dealership” in the disputed domain name, the online form for dealership registration set up by the Respondent, and the Respondent having created email accounts with the disputed domain name all cumulatively point to the implausibility of any good faith use to which the disputed domain name may be put by the Respondent.
The Respondent’s use or preparation to use the email accounts connected with the disputed domain name for purposes of sending emails for apparent purposes of soliciting payments in connection with a fraudulent scheme based on the goodwill and reputation associated with the Complainant’s mark is recognized as bad faith under the Policy. The Panel finds the Respondent, by using the disputed domain name in the manner discussed, has intentionally attempted to attract, for commercial gain, Internet users to its website or other online 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, which is recognized as bad faith registration and use under paragraph 4(b)(iv) of the Policy.
Furthermore, the Panel notes the previous use of the disputed domain name resolving to a website copying the content of the Complainant’s website, which is further evidence of bad faith use as per paragraph 4(b)(iv) of the Policy.
The Panel finds that the Complainant has successfully established the third element under paragraph 4(a) of the Policy that the disputed domain name was registered and is being used in bad faith. Accordingly, it is found that the Complainant has prevailed on all three elements under paragraph 4(a) of the Policy.
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 <herodealership.com> be transferred to the Complainant.
Date: October 15, 2018