WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Honda Motor Co., LTD v. Jose Teixeira De Moura Neto

Case No. D2017-2390

1. The Parties

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

The Respondent is Jose Teixeira De Moura Neto of Sao Paulo, Brazil.

2. The Domain Name and Registrar

The disputed domain name <grandefeiraohonda.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 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 6, 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 2, 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 January 2 and 3, 2018.

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 the Respondent of the Complaint, and the proceedings commenced on January 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 24, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 25, 2018.

The Center appointed Nuno Cruz as the sole panelist in this matter on February 9, 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 company founded in the year 1948, with several affiliates and subsidiaries all over the world, including Brazil.

The Complainant owns several trademark registrations in many jurisdictions around the world for the trademark HONDA, including Brazil. The earliest Brazilian word mark HONDA, No. 004023080, was registered on April 15, 1964. The Brazilian word mark HONDA, No. 007041799, registered on July 13, 1973, was considered a highly reputed mark by the Brazilian Trademark Office, according to a decision published on April 7, 2015.

The disputed domain name was registered on October 19, 2017.

Presently, the website at the disputed domain name is inactive.

Although the website at disputed domain name is currently inactive, according to the evidence submitted in the Complaint, it previously resolved to a website with a layout and content similar in every way to the layout and content of the Complainant’s Brazilian website “www.honda.com.br”. In particular, the website at the disputed domain name reproduces in the top central part the figurative mark HONDA of the Complainant, as well as the icon “TENHO INTERESSE” (“I am interested”) in the top right-hand corner.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is using the highly reputed trademark HONDA with the addition of generic terms such as “grande feirão” (in Portuguese, “grande feirão” means “great big fair”), which are directly related to sales and commercial offers, increasing the possibility of confusion among the consumers, who might believe that the Respondent’s website promotes sales of the Complainant’s products and services.

The Complainant contends that it has not authorized the Respondent to use the trademark HONDA and has no agreement, license or affiliation with the Respondent. The Complainant also claims that the Respondent is not commonly known by the disputed domain name, there is no evidence that the Respondent is making any legitimate or fair use of the disputed domain name, and concludes that the Respondent lacks rights or legitimate interests in the disputed domain name.

Moreover, the Complainant contends that it sent a cease and desist letter to the Respondent to which it did not answer, and that such failure demonstrates bad faith. The Complainant also alleges that the disputed domain name was previously active to point to a website reproducing the content of the Complainant’s website “www.honda.com.br” - except for the information contact, in which the Respondent provided different telephone numbers and email address, so that consumers could reach them instead of contacting the Complainant - which confirms the Respondent registered and is using the disputed domain name in bad faith.

Finally, the Complainant requests the transfer of the domain name <grandefeiraohonda.com>.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements which a complainant must satisfy in order to succeed.

The complainant must satisfy that:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of such domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The evidence submitted by the Complainant demonstrates that is the owner of several trademark registrations for HONDA in Brazil, and that HONDA was considered by the Brazilian Trademark Office as a highly reputed trademark.

The Panel also finds that the disputed domain name is confusingly similar to the Complainant’s trademark HONDA. In fact, the disputed domain name incorporates the Complainant’s trademark HONDA. The HONDA trademark is clearly the dominant element of the disputed domain name, as the additional terms “grande feirão” (which means “big fair/sale”) are merely descriptive and do not avoid such a finding. In this regard, it is the general view among UDRP panels that the addition of merely dictionary, descriptive or geographical words to a trademark in a domain name is normally insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP (see for example, Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd, WIPO Case No. D2001-0110).

Furthermore, the addition of the generic Top-Level Domain suffix “.com” to the disputed domain name is for Internet registration purposes only, being a requirement of the domain naming system, and does not serve as a distinguishing feature for trademark purposes under the Policy (See, The Bank of the Pacific v. Digi Real Estate Foundation, WIPO Case No. D2006-1112 and Alliant Credit Union v. Mark Andreev, WIPO Case No. D2007-1085).

The Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.

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 to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain
name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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.”

By not submitting a response, the Respondent failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name or to rebut the Complainant’s prima facie case that it lacks rights or legitimate interests.

The evidence provided in the Complaint shows that the layout and the content displayed on the website at the disputed domain name are similar to the Complainant’s website, except for the contact information. In this regard, the website displays a telephone number and Whatsapp number different from the Complainant’s contact information, which may mislead customers. Thus, the content of the website, to which the disputed domain name resolves, shows that the Respondent was using the disputed domain name in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the website, as explained in the next section.

Therefore, the Panel finds that the second element of the Policy has been established.

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 a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant (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) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that 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 Panel considers that the Respondent must have been aware of the Complainant’s trademark when it registered the disputed domain name, especially because the Complainant’s trademark HONDA is considered as well-known by the Brazilian Trademark Office.

With respect to use in bad faith of the disputed domain name, it has been demonstrated by the screenshots included in the Complaint that the disputed domain name has a content which is very similar to the content of the Complainant’s website for consumers from Brazil (“www.honda.com.br”). It is the view of the Panel that this is evidence of bad faith since it means that the Respondent knew of the existence of the Complainant and its trademarks and website (see Molinos Río De La Plata S.A., Molinos IP S.A. v. Ipecsa, WIPO Case No. D2009-1384; Asia Pacific Resources International Holdings Ltd. v. Boeang Maulana, WIPO Case No. D2014-1649; Honda Motor co., Ltd v. Domains By Proxy, LLC, Domains By Proxy, LLC /Antonio rocha jesus, WIPO Case No. D2017-1377). Therefore, the Panel finds that the Respondent has intentionally attempted to cause confusion with the Complainant’s trademark by misleading Internet users to believe that the disputed domain name belongs to or is associated with the Complainant.

The Respondent’s attempt of taking undue advantage of the trademark HONDA for commercial gain as described in paragraph 4(b)(iv) of the Policy has been demonstrated.

For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, i.e., the disputed domain name has been registered and is being used in bad faith.

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 <grandefeiraohonda.com> be transferred to the Complainant.

Nuno Cruz
Sole Panelist
Date: February 26, 2018