Decision for dispute CAC-UDRP-108725

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

HONDA is registered worldwide under numerous word and figurative trademark registrations, including the following:

• The European Union word trademark no. 004715025 for HONDA, registered on 11 December 2006, for goods and services of classes 1, 2, 3, 8, 15, 20, 22, 29, 30, 31, 32, 33, 35, 36, 37, 38, 39, 40,41, 42,43, 44 and 45;

• The European Union figurative trademark no. 000012393 for, registered on 1 December 1998, for goods and services of classes 4, 7, 9, 11, 12, 25, 28 and 37;

• The international WIPO figurative trademark no. 1391311 for, registered on 27 October 2016, for goods and services of classes 1,2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45.

FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:

The Complainant, Honda Motor Co., Ltd. ("Honda") is the owner of the famous brand Honda, a Japanese manufacturer globally recognized for its automobiles, motorcycles, and power equipment. Founded in 1948 by Soichiro Honda in Hamamatsu, the company quickly became a leading innovator in mobility technologies, earning a longstanding reputation for engineering quality and reliability.

Today, Honda offers a wide range of vehicles and power products marketed through its official website honda.com, a domain it has held since 1998. The company operates internationally, with a strong presence across Asia, North America, and Europe, and remains a prominent actor in the global mobility sector due to its heritage and continued commitment to innovation. 

The Respondent registered <hondagifciler.com> on 8 January 2019.

PARTIES' CONTENTIONS: 

COMPLAINANT
Complainant contends that the requirements of the Policy have been met and that the disputed domain name should be transferred to it.

In specific:

1. Respondent has registered a domain name which contain the Honda Trademarks in its entirety in combination with a common surname.
2. Given the global distinction of the HONDA Trademarks and the obvious reference to automotive spare parts in the disputed domain name, any use of this domain without authorization would, by its nature, mislead the public and infringe Honda's rights.
3. The Respondent based in Türkiye is not an authorised agent or distributor of Honda products.
4. Its commercial behavior constitutes a clear case of free-riding, whereby the Respondent is exploiting the international fame and goodwill of the HONDA Trademarks for unauthorized commercial gain. Such exploitation is, by its nature, incompatible with a bona fide offering of goods or services and ultimately, any deficiency or negative consumer experience regarding the products or services offered on the Respondents website will damage the reputation and goodwill that HONDA has built over many decades.
5. The Complainant also notes in this connection that the Respondent is using the website to which the domain name resolves to sell not only the Complainant's products but also products of other producers, but gives no notice on the website disclosing the Respondent's relationship with the Complainant as required under the test often applied in relation to authorised resellers, repairers or distributors.

RESPONDENT

The Respondent has not appeared formally or informally to controvert the evidence submitted by the Complainant. 

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

Paragraph 15(a) of the Rules for the UDRP ('the Policy') instructs this Panel to "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." 

Pursuant to Paragraph 4(a) of the Policy the Complainant is required to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

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

In view of the Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations and adduced proof pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint and annexes as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., Forum Clain No. FA00060000 95095 (holding that the respondent's failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, WIPO Case No. D2000-0009 ("In the absence of a response, it is appropriate to accept as true all [reasonable] allegations of the Complaint.").

1. Identical or Confusingly Similar to a Mark in which Complainant has a Right:

To succeed under the first element, a complainant must pass a two-part test by first establishing that it has rights, and if it does it must then show that the disputed domain name is either identical or confusingly similar to the mark. The first element of a UDRP complaint “serves essentially as a standing requirement.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, 3.1, section 1.7. 

Here, the Complainant has established that it has rights in the word mark HONDA by providing the Panel with evidence that it has a registered mark for that term in numerous national jurisdictions. The consensus view which the Panel adopts is that a national or an international trademark registration is sufficient to establish rights in that mark. As such, the Panel finds that the Complainant has established that it has a right in the word mark HONDA. 

The second part of the test calls for comparing the Complainant’s mark with the disputed domain name. It entails “a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark." WIPO Overview 3.1, supra.   

Here, it is evident that the second level of the disputed domain name <hondagifcilercom> incorporates the Complainant’s HONDA trademark together with a personal name. The inclusion of other words is of no account where the trademark is recognisable within the domain name. If the “relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, mean-ingless, or otherwise) does not prevent a finding of confusing similarity under the first element,” Bloomberg Finance L.P. v. Nexperian Holding Limited, Forum Claim No. FA1782013; also WIPO Overview 3.1, sec. 1.8 ("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.").  

With regard to the top level, it is typically disregarded. See for example Arla Foods Amba v. Otoniel Reyes, CAC 107933 ("It is well established that the specific top level of a domain name such as ".network" does not affect the domain name for the purpose of determining whether it is identical or confusingly similar. The disputed domain name is therefore considered identical to the Complainant's trademark ARLA." WIPO Overview, 3.1 supra. Section 1.11: “The applicable Top Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element [identical or] confusing similarity test. 

Accordingly, Complainant has satisfied Paragraph 4(a)(i) of the Policy.

2. Rights and legitimate interests, Para. 4(a)(ii)

Under paragraph 4(a)(ii) of the Policy, a complainant has the burden of establishing that a respondent lacks rights or legitimate interests in respect of the disputed domain name, but this burden is light. It is sufficient in the first instance for Complainant to allege a prima facie case, and if the evidence presented is conclusive or yields a positive inference that Respondent lacks rights or legitimate interests, the burden shifts to Respondent to rebut the allegations.

This concept of shifting burdens is clearly explained in Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case Number D2003-0455 in which the Panel held that "[s]ince it is difficult to prove a negative ... especially where the Respondent, rather than complainant, would be best placed to have specific knowledge of such rights or interests—and since Paragraph 4(c) describes how a Respondent can demonstrate rights and legitimate interests, a Complainant's burden of proof on this element is light."

Once the complainant makes such a prima facie showing, "the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence rebutting the prima facie case or showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP," Malayan Banking Berhad v. Beauty, Success & Truth International, Case No. D2008-1393. Finally, "in the absence of direct evidence, complainant and the panel must resort to reasonable inferences from whatever evidence is in the record," Euromarket Designs, Inc. v. Domain For Sale VMI, Case No. D2000-1195. In this case, Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name, because the Respondent has no permission to use the HONDA trademark and in fact is using the disputed domain name without permissions to resolve to an active website offering HONDA products as well as products from other producers.

The Panel finds that the Complainant has set forth a prima facie case. Hence, the burden shifts to the Respondent. It has the opportunity of demonstrating its right or legitimate interest by showing the existence of any of the following nonexclusive circumstances:

(i) before any notice to you [respondent] 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 [respondent] (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 [respondent] 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.

If a respondent proves any of these circumstances or indeed anything else that shows it has a right or legitimate interest in the domain name, the complainant will have failed to discharge its onus and the respondent must succeed. However, where, as here, respondent fails to respond and is silent on any rights or legitimate interests, the Panel must assess the record before it.

First, the evidence in the record before me is conclusive that Complainant has not granted Respondent GOKHAN CIFCI any permission or consent to use the HONDA trademark, nor is the Respondent commonly known under the disputed domain name. See CAC Case No. 103030: "The Respondent has no rights or legitimate interests in the disputed domain name, since the Respondent is not a licensee of the Complainant nor has the Complainant granted any permission or consent to the Respondent to use its trademarks or designations confusingly similar to its trademarks. Furthermore, the Respondent has no rights or legitimate interests in the disputed domain name, since there is no indication that the Respondent is commonly known by the name 'YALE' or 'YALEWINDOWS' or that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services.”); also.Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Chad Moston / Elite Media Group, Case Number Forum Case No. FA1804001781783 ("Here, the WHOIS information of record identifies Respondent as “Chad Moston / Elite Media Group.”. As the disputed domain name resolves to an active website offering Honda products, it is also clear that the Respondent is not making any legitimate noncommercial or fair use of the domain name (Para. 4(c)(iii)). This follows because the Respondent's intent is for commercial gain, in this instance "to misleadingly divert consumers or to tarnish the trademark or service mark at issue."

Second, unquestioningly, the choice of the domain name is confusingly similar to the trademark. The Respondent simply adds its personal name to the HONDA trademark. Therefore, Respondent's default and its failure to rebut Complainant's evidence is particularly telling. Since there is no proof otherwise, the record supports the conclusion that Respondent lacks any right or legitimate interest as measured by the three circumstances of paragraph 4(c). See Deutsche Telekom AG v. Britt Cordon, WIPO Case No. D2004-0487 (holding that "once a complainant establishes a prima facie case that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent. If the respondent cannot do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP). Similarly in Malayan Banking Berhad, supra. (holding that "[i]f the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.").

Accordingly, as the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name, Complainant has satisfied Paragraph §4(a)(ii) of the Policy.

3. Registered and Used in Bad Faith, §4(a)(iii)

Having determined that Respondent lacks rights or legitimate interests, the Complainant must then prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith. The consensus expressed in WIPO Overview 3.1, section 3.1.4. is that "the mere registration of a domain name that is identical or confusingly similar... to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith." The presumption of bad faith is realized in this case, in which the Respondent’s domain name pretends to a relationship with the Complainant that it does not have and this impersonation has further consequences as the Complainant points out to reputational harm.

Of the four circumstances set forth in Para. 4(b), subsection (iv) is most apt. The Subsection reads: “by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's website or other on-line 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 site or location.” See National Football League v. Thomas Trainer, WIPO Case No. D2006-1440 holding that "when a registrant, such as respondent here, obtains a domain name that is [identical or confusingly similar to a] famous mark, with no apparent rights or legitimate interests in the name, and then fails to respond to infringement claims and a UDRP Complaint, an inference of bad faith is warranted."

Particularly probative in this case is that there is no mistaking that the disputed domain name conveys to consumers a contractual relationship with the Complainant which as noted in the previous section the Complainant denies. The Panel finds that the present case is one in which the presumption of bad faith is satisfied. It is further strengthened by the Respondent's use of the HONDA mark on the resolving domain name which implies actual knowledge of Complainant and its HONDA trademark and of its obvious intention to convey a relationship that does not exist. 

Where the facts demonstrate an intent to capitalize on an owner's mark in the manner in which Complainant describes and which is supported by proof in the record, the registration is presumptively abusive. See Crédit Industriel et Commercial v. Domains By Proxy LLC / Stefano Claudio Pier, WIPO Case No. D2021-4323. Further with regard to the content of the resolving website, while the Complainant is correct in arguing that the Respondent has no nominative fair use right, it is unnecessary to dissect Oki Data Americas, Inc. v. ASD, Inc, WIPO Case No. D2001-0903 as this test is an affirmative defense for the Respondent to make. Its failure to make or establish such a defense is conclusive against it.  

The Panel finds that the Complainant has shown that the Respondent registered and is using the disputed domain name in bad faith both in general and in particular because the Respondent's conduct puts the case squarely within paragraph 4(b)(iv) as well as within the larger notion of abusive conduct. The Panel finds that Complainant has adduced more than sufficient evidence to prove Respondent's bad faith based on the foregoing considerations.

Accordingly, the Panel finds that Respondent has satisfied 4(a)(iii) of the Policy.