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and Mediation Center
Honda Giken Kogyo Kabushiki Kaisha v. Ryan Kelly
Case No. D2006-0190
1. The Parties
The Complainant is Honda Giken Kogyo Kabushiki Kaisha, Tokyo, Japan, represented by Mitscherlich & Partner, Munich, Germany.
The Respondent is Ryan Kelly, Belize City, Belize.
2. The Domain Name and Registrar
The disputed domain name <honda-worldwide.org> is registered with CSL Computer
Service Langenbach GmbH dba Joker.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 13, 2006. On February 15, 2006, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba Joker.com a request for registrar verification in connection with the domain name at issue. On February 16, 2006, CSL Computer Service Langenbach GmbH dba Joker.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 27, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March 19, 2006. The Respondent was informed that if his response was not received by that date, he would be considered in default. The Center would still appoint a Panel to review the facts of the dispute and to decide the case. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 20, 2006.
The Center appointed Vinod K. Agarwal as the Sole
Panelist in this matter on April 6, 2006. 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
From the Complaint and the various annexures to it, the Panel has found the following facts:
The Complainant is one of the world’s largest manufacturers of cars and car products. The Complainant is the owner of 30 trademark registrations in Germany and 25 registrations for community trademarks (“ctm”) each of which includes the word HONDA. All of these trademarks and community trademarks are registered for machines, especially vehicles. The Complainant has not mentioned detailed activities of the Complainant in the Complaint.
The Respondent did not reply to the Complainant’s
5. Parties Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are applicable to this dispute.
In relation to element (i), the Complainant contends that HONDA is its trademark. The addition of the word “worldwide” will not make it different and avoid similarity. The word “worldwide” is only descriptive and does not contain any distinctive character. The Complainant’s consumers, who are well aware of its trademark HONDA, will immediately presume that the domain name <honda-worldwide.org> belongs to the Complainant. Therefore, the said domain name is confusingly similar to the trademark of the Complainant.
In relation to element (ii), the Complainant contends that the Respondent (as an individual, business, or other organization) has not been commonly known by the name “Honda.” Further, the Respondent is not making a legitimate or fair use of the said domain name for offering goods and services. The Respondent registered the domain name for the sole purpose of creating confusion and misleading the general public and the customers of the Complainant. Thus, it is contended that the Respondent has no rights or legitimate interests in the domain name.
Regarding element (iii), the Complainant contends that the Respondent’s main purpose in registering the domain name < honda-worldwide.org > was to earn profit and to mislead the general public and the customers of the Complainant. The Complainant has stated that 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.
The Respondent did not reply to the Complainant’s
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; and
(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 present dispute pertains to the domain name <honda-worldwide.org>. The name of the Complainant is Honda Giken Kogyo Kabushiki Kaisha. The Complainant is the owner of 30 trademark registrations in Germany, all including the word “HONDA”. Some of these are HONDA, HONDA AMIGO, HONDA CIVIC, HONDA EURO SERVICE, HONDA LEAD, HONDA SCOOPY, HRC HONDA RACING CORPORATION, DAX HONDA, DUAL CBS HONDA DUAL COMBINED BRAKE SYSTEM, HONDA INTELLIGENT CARD SYSTEM, DAX HONDA, etc.
In an analogous domain name dispute with the Center
against the domain names <honda-worldwide.com> and <honda-worldwide.net>
(Honda Giken Kogyo Kabushiki Kaisha v. James Harris, WIPO
Case No. D2005-1069), the panelist decided that the said domain names were
confusingly similar to the Complainant’s trademark.
Thus, the Panel finds that the domain names are confusingly similar to the registered trademark 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 interests 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 non-commercial 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. There is no evidence to suggest that the Respondent has become known by
the disputed domain name anywhere in the world. The Respondent is known by the
name of Ryan Kelly in Belize City. Based on the default and the evidence in
the Complaint, it is presumed that the above circumstances do not exist in this
case and that the Respondent has no rights or legitimate interests in the disputed
domain name. See also Pavillion Agency Inc. Cliff Greenhouse and Keith
Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse,
WIPO Case No. D2000-1221. “HONDA”
is the name and mark of the Complainant. Further, in view of the fact that the
Complainant has not licensed or otherwise permitted the Respondent to use its
name or trademark or to apply for or use a domain name incorporating said name
or trademark and that nobody would use the word “HONDA” unless seeking
to create an impression of an association with the Complainant, the Panel finds
that the Respondent has no rights or legitimate interests in the 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 or 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 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 its website or location.
The contention of the Complainant is that the present case is covered by the second and fourth circumstances. The Complainant has furnished evidence of the fact that the disputed domain name is being used by the Respondent for fraud and money laundering, exploiting the consumer’s trust in the Complainant’s reputation and goodwill. Under the said domain name, the Respondent has made fake job offers for so-called “financial managers”. These fake job offers are used to make contact with persons who are willing to make money transfers from their own bank account to the fake accounts of the Respondent. Such money is subsequently withdrawn by the Respondent. Further, no official Honda dealer exists in Hanover, Germany at the address given in the website “www.honda.worldwide.org”. The address given is that of a private residential house.
This and other information submitted by the Complainant
leads to the presumption that the domain name in dispute was registered and
used by the Respondent in bad faith. The Panel agrees with the said contention
of the Complainant and concludes that the registration of the domain name amounts
to the registration and use of the domain name in bad faith.
In light of the foregoing findings, namely, that the domain name is confusingly similar to a mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name, and that the domain name was registered in bad faith and is being used in bad faith, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <honda-worldwide.org> be transferred to the Complainant.
Dr. V. K. Agarwal
Dated: April 20, 2006