WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hero Honda Motors Limited v. Rao Tella
Case No. D2000-0365
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 Complainantís 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. Partiesí Contentions
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 Claimantís 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 Complainantís 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 Complainantís trademark in order to pass off its goods and services as and for those of the Complainant and the Respondentís 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 Respondentís 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 Complainantís 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 Respondentís 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 Respondentís 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 Respondentís 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.
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 Respondentís web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of the Respondentís web site or location or of a product or service on the Respondentís 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 Complainantís business name, and which was identical or confusingly similar to the Complainantís 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 Complainantís distinctive trademark and the principal element of the Complainantís 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.
The Administrative Panel decides that the Respondent has registered the domain name "herohonda.com" identical or confusingly similar to the Complainantís 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.
Dated: July 16, 2000