WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Honda Motor Co., Ltd. v. Privacy Protect, LLC (PrivacyProtect.org) / Richard Monteiro Fernandes

Case No. D2017-1886

1. The Parties

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

Respondent is Privacy Protect, LLC (PrivacyProtect.org) of Burlington, Massachusetts, United States of America / Richard Monteiro Fernandes of São Paulo, Brazil.

2. The Domain Name and Registrar

The disputed domain name <queimatotalhonda2017.com> 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 27, 2017. On September 28, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 29, 2017, 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 Complainant on September 29, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 29, 2017.

The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on October 3, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 23, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 27, 2017.

The Center appointed Roberto Bianchi as the sole panelist in this matter on November 7, 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

Complainant is established in Japan since 1948. Complainant is primarily known as a manufacturer of automobiles and other vehicles. Several affiliates and subsidiaries were established in numerous other countries, including in Brazil.

Complainant owns the following registrations with the Brazilian Patent and Trademark Office (“INPI”):

On March 20, 2015, the Brazilian INPI considered Brazilian trademark registration No. 007041799 a “highly reputed mark”.

The disputed domain name was registered on September 8, 2017. Evidence submitted by Complainant indicates that the disputed domain name previously resolved to a website replicating the website of Complainant. Presently, the website at the disputed domain name is inactive.

5. Parties’ Contentions

A. Complainant

Complainant contends as follows:

The disputed domain name is confusingly similar to Complainant’s HONDA trademark. Complainant (and other companies of the Honda Group) is the owner of trademark registrations in several countries for HONDA, which was recognized in Brazil as a highly reputed trademark. The disputed domain name is using the trademark HONDA with the addition of generic terms such as “queima total” and “2017”. In Portuguese, “queima total” means “clearance sale”. Thus, the added terms are directly related to sales and to a certain period, increasing the possibility of confusion among the consumers, who might believe that Respondent’s website promotes sales of Complainant’s products / services. As already decided by previous UDRP panels, the addition of other terms is not sufficient to avoid the confusing similarity between the Complainant’s trademarks and the disputed domain name.

Respondent has no rights or legitimate interests in respect of the disputed domain name. It is undisputed that Complainant has rights over the expression “Honda”, which is a registered and a highly reputed trademark in Brazil, while the disputed domain name was only registered on September 8, 2017. Respondent has not been authorized or licensed to use the Complainant’s trademark. Complainant has no agreement, license or affiliation with Respondent. Respondent is a private individual that apparently does not develop any activity related to motor vehicles and its related activities. Respondent’s lack of rights or legitimate interests in the disputed domain name can be easily demonstrated by the analysis of the content of its website at the disputed domain name, which is a brazen reproduction of Complainant’s website “www.honda.com.br”. See Annex 8 to the Complaint. In addition, the main element of the disputed domain name does not correspond to Respondent’s name and there is no evidence that it is commonly known by such element. There is no evidence that the Respondent is making any legitimate fair use of the domain name.

The fact that the website at the disputed domain name was reproducing the content of Complainant’s website (see Annex 8), not only demonstrates Respondent’s lack of rights or legitimate interests in the disputed domain name, but also constitutes an undisputable evidence of its bad faith. By reproducing exactly the same content of Complainant’s website – except for the contact information, in which Respondent provided different telephone numbers and email address, so that consumers could reach Respondent instead of Complainant –Respondent’s intent to divert and mislead consumers is undeniable, evidencing its bad faith in registering and using the disputed domain name. Prior UDRP panels have decided that a respondent’s bad faith is demonstrated when a copy of the content of the complainant’s official website is made by the respondent’s website. See Migros-Genossenschafts-Bund (Federation of Migros Cooperatives) v. Pengjie Jiang, WIPO Case No. D2015-0326; Virgin Enterprises Limited v. Isabelle Gillard, WIPO Case No. D2015-0244; Confédération Nationale du Crédit Mutuel v. Nicolas Pete, WIPO Case No. DBZ2009-0001; Marian Sandu, Silver Peach Marketing (Pty) Limited t/a Africa Stay v. Thi Cam, Tran Thi Cam, WIPO Case No. D2008-1763. Moreover, in Asia Pacific Resources International Holdings Ltd. v. Boeang Maulana, WIPO Case No. D2014-1649, in which the Respondent’s website was also a copy of the Complainant’s website except for the information contact provided, the panel stated, “It is difficult to find any other reason why the Respondent registered the Domain Name that is virtually identical to the Complainant’s mark, copied the Complainant website’s content, and included the Respondent’s contact information unless the Respondent attempted to trade on the Complainant’s goodwill. The Panel, therefore, is satisfied that the Domain Name was used in bad faith.” Finally, it is important to mention that in prior cases involving the Complainant (See Honda Motor Co., Ltd. v. Lucio Jose De Souza, WIPO Case No. D2017-1221; and Honda Motor co., Ltd v. Domains By Proxy, LLC, Domains By Proxy, LLC / Antonio rocha jesus, WIPO Case No. D2017-1377) and third parties that were copying its website through the domain names <hondamotorsbrasil.com> and <hondamotorbrasil.com>, the Panel stated that: “In addition to the above, the Complainant showed evidence that the disputed domain name was used by the Respondent to mislead users into believing that the corresponding website was related to the Complainant, by reproducing the content of the Complainant’s website ‘www.honda.com.br’, only changing the contact information such as telephone numbers and email address. Therefore, this Panel finds that the Respondent has intentionally attempted to cause confusion with the Complainant’s trademark by Internet users to believe that its website belongs to or is associated with the Complainant.” (Honda Motor co., Ltd v. Domains By Proxy, LLC, Domains By Proxy, LLC / Antonio rocha jesus, supra).

Therefore, Respondent’s conduct clearly proves its bad faith as provided in paragraphs 4(a)(iii) and 4(b) of the Policy.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

By listing its Brazilian registrations for the HONDA trademark, Complainant has evidenced to the satisfaction of the Panel that it has trademark rights in the HONDA mark.

The Panel notes that the disputed domain name incorporates this mark in the composite expression “queima total Honda 2017”, and that the Portuguese terms “queima total” mean, “total burning” or “total clearance sale”.¹ Thus, the disputed domain name means “2017 HONDA Total Clearance Sale”. Since “2017”, “total”, “clearance” and sale” are descriptive terms, while the HONDA mark is clearly recognizable in the disputed domain name, the Panel finds that the disputed domain name is confusingly similar to Complainant’s HONDA mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 (“Is a domain name consisting of a trademark and a descriptive or geographical term confusingly similar to a complainant’s trademark? […] 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”).

B. Rights or Legitimate Interests

Complainant contends that it has rights in the highly-reputed trademark HONDA in Brazil, while the disputed domain name was registered on September 8, 2017. Complainant says that Respondent has not been authorized or licensed to use the Complainant’s trademark, and that Complainant has no agreement, license or affiliation with Respondent. Respondent is a private individual that apparently does not develop any activity related to motor vehicles or related activities. Complainant argues that the content of Respondent`s website “www.queimatotalhonda2017.com” is a brazen reproduction of Complainant’s website “honda.com.br”. Complainant also notes that the main element of the disputed domain name does not correspond to Respondent’s name, and there is no evidence that it is commonly known by such element. Lastly, Complainant contends that there is no evidence that the Respondent is making any legitimate fair use of the domain name.

In the Panel’s opinion, the evidence on record supports Complainant’s contentions. In the first place, according to the WhoIs data provided by the Registrar, Respondent’s name is “Richard Monteiro Fernandes”, and there is no allegation or available evidence that this individual is known, commonly or otherwise, by the disputed domain name pursuant to Policy, paragraph 4(c)(ii). Secondly, as shown by Complainant by providing captures of the corresponding webpages, the website at the disputed domain name is a copy of various elements of Complainant’s Brazilian official website “www.honda.com.br”, with the main difference that the contact telephone and WhatsApp numbers on Respondent’s website do not belong to Complainant. In other words, Respondent appears to be eliciting contact information by deceiving Internet users presumably looking for Complainant and its HONDA products. Whatever the purpose of this conduct, it clearly is an attempt to gather and profit from valuable personal information of Internet users, by deceptive means, if it is not plain impersonation. In the opinion of the Panel this conduct does not constitute a bona fide use of the disputed domain name under Policy, paragraph 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers pursuant to Policy, paragraph 4(c)(iii). These allegations and evidence suffice to Complainant to make a prima facie case that Respondent lacks rights or legitimate interests in respect of the disputed domain name.

The Panel notes that Respondent failed to respond to Complainant’s contentions and evidence above, and to provide any explanations for his reasons for registering the disputed domain name. Accordingly, the Panel finds that Respondent lacks any rights or legitimate interests in respect of the disputed domain name. See WIPO Overview 3.0, section 2.1 (“How do panels assess whether a respondent lacks rights or legitimate interests in a domain name? […]While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights 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, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on 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”).

The second element of the Policy is thus met.

C. Registered and Used in Bad Faith

Complainant has shown that it owns numerous trademarks registrations in Brazil for the mark HONDA, all of which predate the registration of the disputed domain name in September 2017. In particular, the Panel notes that the first of Complainant’s Brazilian registrations for HONDA dates from 1970, while the Brazilizan Trademark Registration No. 007041799, registered in 1979, was declared a “highly reputed mark” by the Brazilian INPI. In addition, the website at the disputed domain name displays slavish copies of various elements of Complainant’s official website in Brazil. From these facts and circumstances, the Panel concludes that Respondent knew of, and had Complainant’s mark and products in mind when he registered the disputed domain name and did so in bad faith.

On the website at the disputed domain name, Respondent imitates Complainant’s official website in an apparent attempt of impersonation. Thus, Respondent is deceiving Internet users presumably looking for Complainant’s well-known mark and its official website, and eliciting valuable personal and/or contact information from them. See AB Gustaf Kähr v. Prasanth sp, inet, WIPO Case No. D2011-1455 (“Respondent […] is […] trying to elicit personal information from Internet users presumably looking for Complainant and its […] mark. The purposes for this behavior were neither stated on Respondent’s website nor elsewhere explained by Respondent, but it is rather obvious that personal information obtained from Internet users is a valuable commodity in an age of marketing through massive emailing. Given the renown of Complainant’s [ …] mark and products, it is evident that Respondent has availed itself of this renown to elicit these data”).

In the opinion of the Panel, by using the disputed domain name in this manner, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his website. This is a circumstance of registration and use of the disputed domain name in bad faith pursuant to Policy, paragraph 4(b)(iv). .

The Panel concludes that the disputed domain name was registered and is being used in bad faith. The third requisite of the Policy is also met.

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.com>, be transferred to Complainant.

Roberto Bianchi
Sole Panelist
Date: November 20, 2017

¹ See Collins Portuguese Dictionary 2nd. Edition 2001 (English Reverso Dictionary) at “http://dictionary.reverso.net/portuguese-english/queima” (visited on November 15, 2017).