[Indexed as: Hero Honda Motors Limited v. Rao Tella]
[Indexed as: HEROHONDA.com]
WIPO Arbitration and Mediation Centre
Administrative Panel Decision
Case No. D2000-0365
Commenced: May 29, 2000
Judgment: July 16, 2000
Presiding Panelist: James Bridgeman
Domain name Domain name dispute resolution policy Identical Bad faith registration Indian Registered Trademarks Uncompleted Fansite Could have Chosen a More Descriptive Name for Fansite.
Complainant was registrant of three Indian trademarks related to containing the words HERO HONDA. Respondent registered the domain name, herohonda.com
Held, Name Transferred to Complainant.
It is clear that the domain name
is identical to Complainants trademark. Respondent has no rights
or legitimate interest in the domain name.
Respondents claim that he has
the domain name for the establishment of an Internet fan club for Honda
motorcars does not, without steps to actually establish the fan club, create
a legitimate non-commercial or fair use of the domain name.
Respondent has not made any demonstrable
preparations to use the domain name in connection with a bona fide offering
of goods or services, and does not claim to be commonly known by the domain
name. Therefore, respondent has not shown rights or legitimate interests
in the domain name.
There is bad faith use by Respondent,
who should, as a Honda fan, have been aware of the complainant company
and their trademark. Thus, even if Complainant registered the domain
name for a fan club, choosing the Complainants trademark name constitutes
bad faith. The words hero honda, and the chosen word order, are
not descriptive of a fan club. Respondents failure to establish a www
site accessible via said domain name since 1998 also shows bad faith.
Policies referred to
Uniform Domain Name Dispute Resolution
Policy, adopted August 26, 1999.
Registration Agreements referred
to
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Cases referred to
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Panel Decision referred to
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Bridgeman, Panelist:
1. The Parties
The Complainant is Hero Honda Motors
Limited having its principal office at 34, Basant Lok, Vasant Vihar, New
Delhi, 110 057, India.
The Respondent is Mr. Rao Tella,
of 2277, Boulder Ridge Blvd., Ann Arbor, MI 48103, USA.
2. The Domain Name(s) and Registrar(s)
The Domain Name in issue is "herohonda.com".
The Registrar with which the domain name is registered is Network Solutions
Inc. ("the Registrar")
3. Procedural History
The Complaint was received by the
WIPO Arbitration and Mediation Center ("the Center") on May 2, 2000, by
e-mail and on May 9, 2000, in hard copy, and complied with the requirements
of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules")
and the WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("the
Supplemental Rules"). The appropriate fees were paid by the Complainant.
On May 14, 2000, the Center sent
an Acknowledgement of Receipt of Complaint to the authorized representative
of the Complainant by e-mail and at the same time notified the Respondent
by e-mail.
The Registrar confirmed to the Center
that it had received the Complaint from the Complainant, that the Registrar
is the registrar of the said domain name, that the Respondent is the current
registrant of the said domain name, that the Network Soluctions 4.0 Service
Agreement is in effect, and that the said domain name is in "active" status.
The Center reviewed the Complaint
and was satisfied that it complied with the formal requirements.
On May 28, 2000, the Center sent
a Notification of Complaint and Commencement of Administrative Proceeding
to the Respondent by Post/Courier (with enclosures) and by e-mail. A copy
of said Notification was sent to the Complainant by e-mail. Further copies
of said Notification were sent to the Internet Corporation for Assigned
Names and Numbers ("ICANN") and to the Registrar.
Said Notification of Complaint and
Commencement of Administrative Proceeding inter alia advised the Respondent
that the administrative proceedings had commenced on May 29, 2000, and
that the Respondent was required to submit a Response to the Center on
or before June 17, 2000.
On June 14, 2000, the Respondent
applied by e-mail for an extension of time within which to file a Response.
On the same date the Center granted the Respondent an extension of time
of 10 days and advised the Respondent by e-mail that the deadline for filing
a Response had been extended to June 27, 2000.
On June 22, 2000, the Center received
the Response and sent an acknowledgement of same to the Respondent by e-mail.
A copy of said Acknowledgement was sent to the authorised representative
of the Complainant by e-mail.
On June 30, 2000, James Bridgeman
was invited by the Center to serve as Administrative Panelist in the administrative
proceedings. Having received a Statement of Acceptance and Declaration
of Impartiality from the said James Bridgeman in accordance with paragraph
7 of the Rules, the Center proceeded to appoint this Administrative Panel
consisting of a single member was appointed On July 3, 2000, in accordance
with paragraph 6(b) of the Rules.
On June 3, 2000, the case file was
transferred to the Administrative Panel. Subsequent to the said transfer,
the Complainant applied to the Center for liberty to make further submissions.
The Administrative Panel took the view that there was sufficient information
in the Complaint and Response to enable the Administrative Panel to properly
make a decision and refused the Complainants application.
In the view of the Administrative
Panel, the proper procedures were followed and the panel was properly constituted.
4. Factual Background
The Complainant is a joint venture
company incorporated on January 19, 1984, under the Indian Companies Act.
The Complainant has carried on business of manufacture and sale of motor
sales under the trademark "HERO HONDA" since April 9,1985. The Complainant
has also engaged in the manufacture and sale of ready-made garments, hosiery,
gloves and other products since the year 1989.
The Indian partner in the said joint
venture company is the Hero Group which has been dealing mainly in the
manufacture of cycles and cycle parts under the trademark "HERO" . The
Japanese partner in the said joint venture is an internationally renowned
company manufacturing a range of vehicles and velocipedes under the trademark
"HONDA". The said Japanese partner is the thirtieth largest corporation
in the world and is ranked as the sixth largest Japanese corporation.
When the Complainant was established
to give effect to the said joint venture, it was decided that the Complainant
would trade under a hybrid trademark "HERO HONDA". The Complainant is the
owner of said trademark "HERO HONDA" and is the owner of the following
Indian Registered Trademarks:
Trademark registration number 419115,
dated March 13, 1984, "HERO HONDA", registered in class 12 in respects
of goods in that class including motor cycles and parts thereof;
Trademark registration number 468820,
dated March 6,1987, "HERO HONDA" registered in class 25 in respect of goods
in that class including readymade garments and hosiery.
Trademark registration number 513474,
dated July 17, 1989, "HERO HONDA (with logo)" registered in class 12 and
trademark registration number 473792, dated June 16, 1987, "HERO HONDA"
and registered in class 9.
The Respondent is a software developer
and has been engaged in www site development and maintenance since 1997.
Inter alia the Respondent has developed a www site at the domain name address
"sapfans.com" which is described as a fan club and user forum for people
interested in SAP software.
5. Parties Contentions
A. Complainant
The Complainant has requested this
Administrative Panel to issue a decision that the contested domain name
"herohonda.com" be transferred to the Complainant.
The Complainant submits
a. That the domain name "herohonda.com"
is identical and confusingly similar to the trademark "HERO HONDA" in which
the Complainant has a statutory rights as well as a rights at common law,
by virtue of long and continuous user and being the registered proprietor
thereof;
b. That the Respondent has no right
or legitimate interest in support of the said domain name;
c. That the said domain name was
registered and is being used in bad faith.
In support of its submissions, the
Complainant has furnished this Administrative Panel with copies of the
registration certificates and extracts from the Indian trademarks Journal
in respect of the Claimants above referenced registered trademarks and
submits that on account of said registrations and on account of priority
in adoption and use of the said trademark "HERO HONDA", the Complainant
has exclusive rights both under statute and under common law to said trademark.
The Complainant submits that the trademarks "HERO" and "HONDA" are both
highly distinctive marks not only on account of their inherent distinctiveness
but equally on account of their acquired strength due to extensive use.
The Complainant further argues that
the trademark "HERO HONDA" is even more distinctive since distinctiveness
increases with the number of distinctive elements.
The Complainant has also submitted
evidence of its reputation in the marketplace and has illustrated this
by reference to awards for excellence with which it has been conferred.
Since adoption of the said trademark "HERO HONDA" by the Complainant, in
1984, the Complainant submits that it has continuously used the said trademark
as its trademark and trade name in relation to high quality goods. The
Complainant has supported this submission by providing detailed sales figures
for its extensive sales from May 1, 1985 to March 30, 2000.
It is argued that the trademarks
"HERO" and "HONDA", both of which make up the hybrid trademark "HERO HONDA"
represent the Complainants reputation for excellence. This reputation
has been enhanced among the purchasing public and the trade, by extensive
advertising of the said mark and by the inherently strong nature of the
"HERO HONDA" mark. In this regard the Complainant has submitted that it
has spent enormous sums of money in promoting its products under the "HERO
HONDA" trademark. Advertisements pertaining to the said "HERO HONDA" trademark
have appeared regularly in various newspapers and magazines having widespread
reach and circulation besides also appearing on the electronic media including
satellite television.
It is further submitted that the
said trademark "HERO HONDA" has been used by the Complainant in relation
to all its stationery articles including letterheads, visiting cards, order
forms, bill books, envelopes etc. and in relation to sales promotional
materials such as brochures, catalogues and price lists.
It is submitted that in registering
said domain name "herohonda.com" the Respondent has unlawfully and without
authority, misappropriated the said trademark "HERO HONDA". It is submitted
that said domain name is identical to the trademark owned by the Complainant.
It is submitted by the Complainant
that the Respondent has not established a www site accessible via domain
name. The Complainant argues that if the Respondent had a bona fide reason
to register the said domain name, it would have proceeded to activate a
www site at said domain name address. The fact that the Respondent has
chosen not to do so implies mala fide intention on its behalf to sell the
same to a third party or to use the said domain name for some fraudulent
purpose.
The Complainant argues further that
if the Respondent or any third party were to activate a www site accessible
via said domain name, this would cause a confusion among internet users
who would be misled into believing that there is some connection between
the www site and the Complainant. Furthermore the Complainant argues that
the Respondent has misappropriated the Complainants trademark in order
to pass off its goods and services as and for those of the Complainant
and the Respondents actions are aimed at diverting the business of the
Complainant. It is further argued that the Respondent is preventing the
Complainant from making legitimate use of its trademark on the internet.
The Complainant concludes its submissions
by alleging that the above fact clearly demonstrate that the Respondent
has no rights or legitimate interest in the said domain name "herohonda.com"
and that the said domain name has been registered and is being used in
bad faith.
B. The Respondent
The Respondent submits that the
Complainant is engaged in Reverse Domain Name Hijacking and is using the
Policy in bad faith to attempt to take away the Respondents domain name.
The Respondent submits that he has
been engaged in www site development since 1997. In that time he has established
a number of fan club www sites. In February 1998, he established the SAP
Fan Club and User Forum at "sapfans.com". This site is dedicated to SAP
software and is visited by users of SAP software from all over the world
each day to interact with each other and solve their problems.
Encouraged by the success of the
"sapfans.com" www site, the Respondent established similar sites for other
software and has built www sites at "oraclefans.com" "erpfans.com", "baanfans.com"
and "peoplesoftfans.com".
The Respondent claims to be a great
fan of Honda motor cars. Based on the success of software fan clubs, the
Respondent wanted to build a fan club www site for Honda motor cars. In
mid 1998 the Respondent tried to register the domain name "hondafans.com"
but it was not available during that time. He then tried to register the
domain name "hondaclub.com" but this was not available either. Hence, the
Respondent registered "herohonda.com" as he considers "Honda as the Hero
of all the cars."
The Respondent claims to have carried
out searches prior to registering said domain name and to have found no
registered trademarks in the USA conflicting with the said domain name.
The Respondent has submitted a printout from the USPTO database search
against the words "HEROHONDA" and "HERO-HONDA" which shows that these marks
have a zero occurrence.
As regards the Complainants point
that he has failed to activate the www site at the said domain name, the
Respondent states that he wanted to build up the www site accessible via
this domain name immediately after registration of the said domain name
but he had no time to establish or develop the www site as he was busy
with other www sites.
The Respondent also registered other
domain names such as "internetfans.com", "computerfans.com", "softwarefans.com",
and "wirelessfans.com" in 1998 but has not had the opportunity to activate
or develop these www sites either for the same reason. He submits that
he remains interested in developing www sites at all these domain names
that are not currently active and intends to use them all in the near future.
The Respondent points out that he
has not attempted to sell any of these domain names. Neither has he registered
any of these domain names for the purpose of re-sale. In each case he registered
the domain names for the purpose of establishing a fan club. This is also
the case with the domain name "herohonda.com".
The Respondent submits that he was
not aware of the Complainants business when he registered said domain
name. He further points out that the Complainant and the Respondent are
not competitors. They are each engaged in business in different parts of
the world.
He submits he is not preventing
the Complainant from access to the internet using its own name. The Complainant
has a www site at the domain name "herogroup.com" and that the Complainant
also owns the www site "herohondamotors.com" which is not active. The Respondent
submits that the Complainant can have access to the internet and operate
a www site at either of these addresses.
The Respondent submits that both
"herohonda.net" and "herohonda.org" are both available and that the Complainant
would have registered these domain names if it was interested in "herohonda.com".
6. Discussion and Findings
In accordance with paragraph 4(a)
of the Policy the Complainant bears the onus of satisfying a three part
test.
(i) that the domain name registered
by the Respondent is identical or confusingly similar to a trademark or
service mark in which the Complainant has rights;
(ii) that the Respondent has no
rights or legitimate interests in respect of the domain name;
(iii) that the domain name has been
registered and used in bad faith.
The Complainants Trademark Rights
As to whether the domain name registered
by the Respondent is identical or confusingly similar to a trademark or
service mark in which the Complainant has rights, it is clear that the
Complainant has established that it is the owner of a number of registrations
of the trademark "HERO HONDA" and in addition would appear to have built
up substantial common law rights in this trademark in India and probably
beyond.
It is also clear that the said domain
name "herohonda.com" is identical or confusingly similar to the Complainants
trademark.
Rights or Legitimate Interests of
the Respondent
As regards the Respondents rights
or legitimate interest, Paragraph 4(c) of the Policy provides that any
of the following circumstances, in particular but without limitation, if
found by the Panel to be proved based on its evaluation of all evidence
presented, shall demonstrate the Respondents rights or legitimate interests
to the domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) that before any notice to the
Respondent of the dispute, the Respondents 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) that the Respondent (as an
individual, business, or other organisation) has been commonly known by
the domain name, even if the Respondent has acquired no trademark or service
mark rights; or
(iii) that 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 Complainant has established
a prima facie case that the combination of the words "HERO" and "HONDA"
is very distinctive as it comprises of the established trademarks of the
two partners in the joint venture which created the Complainant. The "HONDA"
element of the name is world wide in reputation and while the evidence
submitted by the Complainant essentially relates to its goodwill and reputation
in India, it seems clear that it has a reputation beyond the physical limits
of that jurisdiction.
The Respondent on the other hand
claims to have had no knowledge whatsoever of the said name prior to registration
of the said domain name. He claims to have hit upon the name when he discovered
that other names were not available. He chose the name because in his view,
"Honda as the Hero of all the cars."
He claims to have a legitimate interest
in the said name because he is interested in establishing an internet fan
club for Honda motor cars. In the view of this Administrative Panel, these
plans, without more, would not give the Respondent any right or legitimate
interest in the name. Although he submits that he has intentions so to
do, the Respondent has not done anything to establish this fan club.
It is clear that the Respondent
has not made any use of or made any 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. The Respondent does not claim
to have been commonly known by the domain name.
Furthermore since the Respondent
has not taken any steps whatsoever to establish his fan club www site it
cannot be successfully argued that he 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.
This Administrative Panel is satisfied
that on the balance of the evidence submitted by both Parties the Complainant
has established that the Respondent has no rights or legitimate interest
in the said domain name.
Bad Faith
Paragraph 4(b) of the Uniform Policy
provides that for the purposes of paragraph 4(a)(iii) of the Uniform Policy,
"the following circumstances, in particular but without limitation, if
found by the Panel to be present, shall be evidence of the registration
and use of a domain name in bad faith:
(i) circumstances indicating that
the Respondent has registered or has 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 your documented out-of-pocket costs directly related to the
domain name; or
(ii) that 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 the Respondent has engaged in a pattern of such conduct; or
(iii) that the Respondent has registered
the domain name primarily for the purpose of disrupting the business of
a competitor; or
(iv) that by using the domain name,
the Respondent has intentionally attempted to attract, for commercial gain,
Internet users to the Respondents web site or other on-line location,
by creating a likelihood of confusion with the complainants mark as to
the source, sponsorship, affiliation, or endorsement of the Respondents
web site or location or of a product or service on the Respondents web
site or location.
The Respondent describes himself
as a "great fan" of Honda motor cars. It is perhaps possible, but unlikely,
that someone with a great interest in such motor cars would have no knowledge
of a company with a similar name which has over 40% of the Indian market
in motorcycles. The Respondent has submitted that he hit upon "herohonda.com"
as his choice of domain name when he discovered that "hondafans.com" and
"hondaclub.com" were not available for his fan club.
On balance, this Administrative
Panel concludes that it is likely that someone who is a great fan of Honda
motor cars would be aware of the Complainant company and would be aware
that he was registering a domain name containing the principal elements
in the Complainants business name, and which was identical or confusingly
similar to the Complainants trademark.
The Complainant has made many unsubstantiated
allegations as to the reasons why the Respondent registered this domain
name. This Administrative Panel must accept that the Respondent registered
the domain name for the purposes of establishing a www fan club.
Nonetheless, this Administrative
Panel concludes that even if the Complainant registered the said domain
name for the purposes of a fan club site, in choosing the Complainants
distinctive trademark and the principal element of the Complainants business
name as the domain name, and in registering this distinctive trademark
as a domain name, the Respondent acted in bad faith. Unlike "honda fans"
and even "honda club" the words "hero honda" are not descriptive words
for a fan club. This Administrative Panel is further convinced of this
because the Respondent chose to put the "hero" element before the "honda"
element.
Furthermore the fact that the Respondent
has not since 1998 established a www site accessible via said domain name
permits this Administrative Panel to make the inference that the Respondent
registered and is using the said domain name in bad faith.
7. Decision
The Administrative Panel decides
that the Respondent has registered the domain name "herohonda.com" identical
or confusingly similar to the Complainants trademark, that the Respondent
has no rights or legitimate interest in respect of said domain name and
that the Respondent has registered and is using said domain name in bad
faith. Accordingly, this Administrative Panel decides that said domain
name "herohonda.com" should be transferred to the Complainant.
Domain Name Transferred