WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hero MotoCorp Limited v. Domain by Proxy, LLC / Marrie Clark
Case No. D2018-2903
1. The Parties
The Complainant is Hero MotoCorp Limited of New Delhi, India, represented internally.
The Respondent is Domain by Proxy, LLC of Scottsdale, Arizona, United States of America (“United States”) / Marrie Clark of Andaman and Nicobar Islands, India.
2. The Domain Name and Registrar
The disputed domain name <hmcldealership.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 December 20, 2018. On December 20, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 21, 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 January 4, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint, to which the Complainant did not respond.
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 16, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 5, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 6, 2019.
The Center appointed Dr. Vinod K. Agarwal as the sole panelist in this matter on February 8, 2019. 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
Hero InvestCorp Private Limited is a company organized and existing under the provisions of the Companies Act, 1956 of India and is a part of the Hero group of companies. Some of the companies within the Hero group were established as early as the 1950s for the manufacture and sale of bicycles and parts thereof.
All of the Hero member companies, including the Complainant, Hero MotoCorp Limited, use the mark HERO with the permission/authority/license of Hero InvestCorp Private Limited along withother words/devices/logos including the trademarks. Such trademarks include, for example, Indian registration number 605248 for HERO, registered August 26, 1993 and Indian registration number 2146781 for HERO MOTOCORP, registered May 19, 2011. While the Complainant does not hold registered trademark rights to the term “HMCL”, the Complaint notes in recent years the Complainant has become popularly known by the acronym of its corporate name, “HMCL”.
According to the Complaint, presently, the Hero group of companies are engaged in diverse business activities including the manufacture and sale of automobiles (two wheelers) and their parts and fittings, financial solutions, insurance, investments, planning, advisory, execution, and monitoring investments. The Complainant is also engaged in the manufacture of motorcycles and scooters having cumulative sales of over 87 million two wheelers since its inception.
As per the WhoIs information available at Annexure 1 to the Complaint, and confirmed by the Registrar, the Respondent registered the disputed domain name <hmcldealership.com> on December 6, 2018.
The website at the disputed domain name currently indicates the “account has been suspended”. Prior to filing, the disputed domain name resolved to a website reproducing the HERO trademarks and information from Complainant’s own website as to how to procure a franchise/dealership arrangement with Hero MotoCorp Limited.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are applicable to the present dispute.
In relation to element (i), the Complainant contends that the name of the Complainant is Hero MotoCorp Limited and the abbreviated form of this name is “HMCL”. It has been used by the Complainant continuously and uninterruptedly over the past several years. Further, the Complainant is also using the word “Hero” as its trade name and trademark. The trademark HERO has acquired distinctiveness and is a well-known trademark associated solely and exclusively with the Complainant and its business and is identified by the purchasing public exclusively with the Complainant.
According to the Complaint, the trademark HERO was adopted in the year 1950 by the Hero group of companies. The Complainant has been using the trademark HERO since 1984. The trademark HERO is registered globally in around 122 countries. In India, the trademark HERO was registered for the first time in August 1993. The details of the countries where the Complainant has obtained registration of the trademark HERO are given in Annexure VI to the Complaint.
In India, the Complainant is authorized to use the trademark HERO, HERO MOTOCORP, and H devices by Hero InvestCorp Private Limited. The Complainant owns several domain names with the word “hmcl”. Some such examples are <hmclconnect.co>, <heromotocorp.com>, etc. They are used for the purposes of giving greater public access, showcasing information about the products and services, advertising and promotion of the Complainant.
The use by any other person of the trademark HERO or any other phonetically, visually or deceptively similar mark would not only result in immense confusion and deception but would also be in violation of the Complainant’s rights in the said trademark. The services rendered by the Complainant under the trademark HERO have acquired formidable goodwill and enviable reputation amongst the members of the trade, consumers and the public.
The Complainant has contended that the Respondent has dishonestly, malafidely, and unauthorizedly registered the disputed domain name <hmcldealership.com> wherein the well-known mark HERO is used and forms the most distinguishing feature of the said domain name. The content at the disputed domain name contains the Complainant’s trademark H device and the registered trademark HERO MOTOCORP as well as the corporate name of the Complainant Hero MotoCorp Limited, without any authorization.
The registration of the disputed domain name <hmcldealership.com> by the Respondent is confusing inasmuch as it causes the public to believe that the Respondent is associated with the Complainant and also violates the Complainant’s trademark rights. Thus, the intention of the Respondent is to create confusion in the commercial market and cause financial losses to the Complainant.
The Complainant has further contended that the addition or suffix of words such as “dealership” in the disputed domain name will not make any difference. It is not sufficient to distinguish and differentiate the disputed domain name with the registered trademark of the Complainant. It adds to the confusion.
Therefore, the disputed domain name <hmcldealership.com> registered by the Respondent is identical or confusingly similar to the trademark HERO in which the Complainant has rights. .
In relation to element (ii), the Complainant contends that its trademarks HERO and HERO MOTOCORP have become highly distinctive of the goods and services of the Complainant on account of extensive use, viewership and promotion. Furthermore, the Respondent has no connection with the Complainant or any associated company of the Complainant. The Respondent is not commonly known by the disputed domain name or trademark, and the Respondent was not and is not authorized by the Complainant to register, hold or use the disputed domain name.
The Complainant further contends that it has not licensed or otherwise permitted or granted to the Respondent an authorization or a right to use their trademark or to apply for or use the disputed domain name incorporating the mark. No one would use the term “HMCL” unless seeking to create an impression of an association with the Complainant.
The act of the Respondent constitutes infringement/passing off of the trademark of the Complainant. The Respondent registered the disputed domain name for the sole purpose of creating confusion and misleading the general public and the customers of the Complainant. Thus, it is contended the Respondent has no rights or legitimate interests in the disputed domain name.
Regarding element (iii), the Complainant contends that the Respondent has registered and/or acquired the impugned domain name in bad faith and has created an identical website with identical layout and appearance of the official website of the Complainant with a dishonest intent to:
(a) defraud and cheat the customers, dealers and other relevant stakeholders of the Complainant.
(b) mislead and/or divert the customers/trade channels and the public at large or to sell the said disputed domain name to the Complainant for profit.
(c) range a cyber-attack on the Complainant in a bid to extort monetary benefit from its illegal and unethical activities.
(d) disrupt the business of the Complainant and/or to sell the said disputed domain name to the Complainant for profit.
(e) gain commercial benefit illegally.
Further to that, the disputed domain name was registered using a privacy service in order to conceal the identity of the true Registrant and to ensure that the Complainant cannot identify the actual entity and/or individual behind the disputed domain name. The disputed domain name was registered by the Respondent in bad faith and with an ill motive to gain unfair commercial advantage at the expense of the Complainant. The trademark HERO and the Complainant’s popularly known acronym “HMCL” has been used extensively in relation to the business of the Complainant and has acquired distinctiveness and is understood and associated by consumers all around the world as the mark of the Complainant denoting its goods, services and business. The Respondent is only trying to usurp the reputation and goodwill of the Complainant’s trademark HERO and corporate name through the disputed domain name. The Respondent has not made any legitimate offering of goods or services through the disputed domain name. Therefore, the Respondent is using the disputed domain name in bad faith.
In support of its contentions, the Complainant has relied on a number of decisions of various UDRP panels. They have been duly considered while preparing this decision.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel as to the principles the Panel is to use in rendering its decision. It says that, “A panelist shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The 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 domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant is a company incorporated in India with the name of Hero MotoCorp Limited. The acronym of the said corporate name is “HMCL”.
According to the information submitted by the Complainant, in India the name HERO MOTOCORP is registered as a trademark on nine occasions, the earliest registration being in May 2011. The Complainant’s corporate name abbreviation “HMCL” is not specifically registered as a trademark.
The present dispute pertains to the domain name <hmcldealership.com>. The Complainant possess a number of other domain names incorporating the term “HMCL”, as indicated above in section 5A. Most of these domain names and all of the relied upon trademarks were created or registered by the Complainant long before the date of creation of the disputed domain name by the Respondent. The Panel notes that the disputed domain name resolved to a website reproducing the HERO trademarks and information from the Complainant’s own website, which supports a finding of confusing similarity. Given the Respondent’s website replicated material from the Complainant’s own website instructing users on the dealership/franchise process, the Panel can assume the disputed domain name is intended to play off of the confusing similarity of the disputed domain name with the Complainant’s mark and indicates targeting of the Complainant’s mark. In addition, disputed domain name is very much similar or identical to other domain names and the trademarks of the Complainant.
Given the circumstances of this case, the Panel finds that the disputed domain name <hmcldealership.com> is confusingly similar to the trademarks of the Complainant.
B. Rights or Legitimate Interests
According to Paragraph 4(c) of the Policy, the Respondent may demonstrate its rights to or legitimate interest in the domain name by proving any of the following circumstances:
(i) before any notice to the Respondent 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 Respondent has not filed any response in this case. The Respondent is not, as either an individual, business, or other organization commonly known by the disputed domain name anywhere in the world. The Respondent, as disclosed by the Registrar, is known by the name of Marrie Clark. The Complainant has not authorized the Respondent to use its trademark. Further, no information is available regarding whether the Respondent has filed any application for the registration of the mark HERO or HERO MOTOCORP or HMCL anywhere in the world.
It is evident that the Respondent can have no rights or legitimate interests in the disputed domain name. Further, in view of the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark or the disputed domain name incorporating a known abbreviation of its trademark and company name, the Panel concludes it unlikely that Respondent would use the term “HMCL” unless seeking to create an impression of an association with the Complainant. Further, the Respondent’s display of the webpage when considered in its entirety does not constitute a bona fide offering of goods and services.
The disputed domain name as used by the Respondent does not amount to the bona fide offering of goods or services. Based on the Respondent’s failure to submit a response and the evidence in the Complaint, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of the domain name in bad faith:
(i) Circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) The Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, the Respondent 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 its website or location.
The Complainant contends that the disputed domain name was registered or acquired primarily for the purpose of misleading the customers of the Complainant and to cash-in on the reputation of the Complainant. The Respondent is not making a noncommercial or fair use of the disputed domain name.
The adoption of the disputed domain name fully incorporating the abbreviation of the Complainant’s name clearly shows that the Respondent has in bad faith obtained the registration for the disputed domain name for the purpose of illegal trading and marketing. This and other information submitted by the Complainant leads to the presumption that the disputed domain name was registered and used by the Respondent in bad faith.
The use of a domain name that appropriates a well-known trademark to promote competing or infringing products cannot be considered a “bona fide offering of goods and services”.
Therefore, given the above, the Panel agrees with the said contention of the Complainant and concludes that the registration and use of the disputed domain name <hmcldealership.com> amounts to the registration and use of the disputed domain name in “bad faith”. Paragraph 4(a)(iii) of the Policy is satisfied.
For the foregoing reasons, namely, that the disputed domain name is confusingly similar to the mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered and used in bad faith, in accordance with Paragraphs 4(i) of the Policy and Rule 15 of the Rules, the Panel orders that the disputed domain name <hmcldealership.com> be transferred to the Complainant.
Vinod K. Agarwal
Date: February 21, 2019