H-D U.S.A., LLC v. Jeremy Coons / Lucky U Cycles
Claim Number: FA2111001973928
Complainant is H-D U.S.A., LLC (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is Jeremy Coons / Lucky U Cycles (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <hd1marketplace.com>, <hdonemarketplace.com>, <hdmarketplace.co>, <crystalhd.com>, <crystalriverhd.com>, <floridacustomharley.com>, <floridaharleydavidson.com>, <floridausedharley.com>, <harleyofocala.com>, <harleyoforlando.com>, <harleyorlando.com>, <jacksonvillehd.com>, <miamiusedharley.com>, <ocalaharley.com>, <orlandousedharley.com>, and <villagesharleydavidson.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 18, 2021; the Forum received payment on November 18, 2021.
On November 19, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <hd1marketplace.com>, <hdonemarketplace.com>, <hdmarketplace.co>, <crystalhd.com>, <crystalriverhd.com>, <floridacustomharley.com>, <floridaharleydavidson.com>, <floridausedharley.com>, <harleyofocala.com>, <harleyoforlando.com>, <harleyorlando.com>, <jacksonvillehd.com>, <miamiusedharley.com>, <ocalaharley.com>, <orlandousedharley.com>, and <villagesharleydavidson.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 22, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 13, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@hd1marketplace.com, postmaster@hdonemarketplace.com, postmaster@hdmarketplace.co, postmaster@crystalhd.com, postmaster@crystalriverhd.com, postmaster@floridacustomharley.com, postmaster@floridaharleydavidson.com, postmaster@floridausedharley.com, postmaster@harleyofocala.com, postmaster@harleyoforlando.com, postmaster@harleyorlando.com, postmaster@jacksonvillehd.com, postmaster@miamiusedharley.com, postmaster@ocalaharley.com, postmaster@orlandousedharley.com, postmaster@villagesharleydavidson.com. Also on November 22, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On December 20, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: PURPORTED CONSENT TO TRANSFER
On November 29, 2021, Respondent sent an email communication to the Forum stating that “I have no argument if they want domains.”
On December 8, 2021, Respondent sent a further email communication to the Forum with a copy to Complainant’s counsel consenting to the transfer the domain names to Complainant.
In substance, Respondent has thus purported to give a form of consent to the transfer of the <hd1marketplace.com>, <hdonemarketplace.com>, <hdmarketplace.co>, <crystalhd.com>, <crystalriverhd.com>, <floridacustomharley.com>, <floridaharleydavidson.com>, <floridausedharley.com>, <harleyofocala.com>, <harleyoforlando.com>, <harleyorlando.com>, <jacksonvillehd.com>, <miamiusedharley.com>, <ocalaharley.com>, <orlandousedharley.com>, and <villagesharleydavidson.com> domain names to Complainant.
It is therefore open to the Panel to acknowledge and act on that correspondence and to make appropriate orders for the transfer of the domain names to Complainant without the regular examination of the issues set out in the Policy which a Complainant must usually satisfy before a domain name is transferred to it. A Panel may therefore in appropriate circumstances forego the traditional UDRP analysis and order an immediate transfer of the domain names to Complainant. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
However, there may also be circumstances that militate against the Panel taking that course. For example, the Panel may find that the consent to the transfer is not unqualified or unconditional and therefore should not be acted upon.
In the present case, Respondent has said in its correspondence that it has “established relationships with Harley-Davidson dealerships” and that there had been no intention on its part to act in bad faith. If a consent order is made for transfer of the domain names, it might subsequently be said that Respondent’s consent had therefore been subject to those two conditions which gave it some sort of right to the domain names. Moreover, the Panel is struck by the circumstance that whatever it was that motivated Respondent to register these domain names, incorporating as they did the HD, HARLEY-DAVIDSON, and HARLEY marks, seems to have influenced it sixteen times, which shows that it was not done simply on a passing whim but as part of a calculated exercise. Moreover, the terms of the domain names suggest that Respondent wanted to cast a wide net, as some of them expressly invoke Florida, Orlando, Ocala and Jacksonville and were registered over a time span from May 25, 2016 through July 22, 2019 and July 1, 2021. Finally, it must be remembered in this case that the evidence shows it is not one concerning an isolated incident but, rather, one that shows a wide spread and extensive practice. In particular, the evidence shows that, in effect, Respondent was using Complainant’s HD trademarks to sell Woolf, Can-Am, Polaris, Indian, Honda, Suzuki, Yamah, Ducati and Kawasaki products, presumably for profit and where the profit would go to Respondent. Accordingly, in all the circumstances the Panel finds that it is appropriate not to make a consent order but to analyze the elements set out in the Policy and to make whatever order is appropriate in the light of the evidence. That is what the Panel will do.
A. Complainant
Complainant made the following contentions.
Complainant, H-D U.S.A., LLC, owns and licenses, directly and indirectly, intellectual property to various Harley-Davidson companies, including Harley-Davidson Motor Company Group, LLC. Complainant has rights in the HARLEY-DAVIDSON, HARLEY, and HD marks based on registration of the marks with the United States Patent and Trademark Office (“USPTO”) (e.g., HARLEY-DAVIDSON - Reg. No. 1,078,871, registered Dec. 6, 1977; HARLEY - Reg. No. 1,352,679, registered Aug. 6, 1985; HD - Reg. No. 2,315,877, registered Feb. 8, 2000) (hereinafter the “HD marks”). See Compl. Ex. 10. Respondent’s <hd1marketplace.com>, <hdonemarketplace.com>, <hdmarketplace.co>, <crystalhd.com>, <crystalriverhd.com>, <floridacustomharley.com>, <floridaharleydavidson.com>, <floridausedharley.com>, <harleyofocala.com>, <harleyoforlando.com>, <harleyorlando.com>, <jacksonvillehd.com>, <miamiusedharley.com>, <ocalaharley.com>, <orlandousedharley.com>, and <villagesharleydavidson.com> domain names (hereinafter “the disputed domain names”) are confusingly similar to Complainant’s marks as they all incorporate the HD marks and simply add the terms 1, one, marketplace, crystal, river, Florida, custom, used, of, Ocala, Orlando, Jacksonville, Miami, and/or villages, along with either the “.com” generic top level domain (“gTLD”) or the “.co” country-code top level domain (“ccTLD”) to form the domain names.
Respondent does not have rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names and Complainant has not authorized Respondent to use the HD marks. Additionally, Respondent does not use the disputed domains for any bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses fifteen of the domains to redirect users to competing motorcycle goods and inactively holds one of the domains.
Respondent registered and uses the disputed domain names in bad faith. Respondent engages in a pattern of bad faith. Additionally, Respondent uses the domain names to attract users for commercial gain and to disrupt Complainant’s business by redirecting users to competing goods. Additionally, Respondent fails to make active use of one of the domain names. Finally, Respondent had actual knowledge of Complainant’s rights in the HD marks based on the fame of the marks, Respondent’s use of the domain names to redirect users to competing goods, and the fact that Respondent is a former employee of an authorized distributor of Complainant’s products.
B. Respondent
Respondent did not file a formal and compliant response in this proceeding. However, on November 29, 2021, Respondent sent an email communication to the Forum stating that “I have no argument if they want domains.”
On December 8, 2021, Respondent sent a further email communication to the Forum with a copy to Complainant’s counsel consenting to transfer the domain names to Complainant.
The correspondence just referred to is not considered a formal, compliant response under the Policy and the Rules and it will be seen that the Panel has determined that it is more appropriate to dispose of this proceeding by means of the regular analysis of the elements set out in the Policy and not by making a consent order.
1. Complainant is a United States company that owns and licenses, directly and indirectly, intellectual property to the famous Harley-Davidson companies, including Harley-Davidson Motor Company Group, LLC.
2. Complainant has established its trademark rights in the HARLEY-DAVIDSON, HARLEY, and HD marks based on registration of the marks with the United States Patent and Trademark Office (“USPTO”) (e.g., HARLEY-DAVIDSON - Reg. No. 1,078,871, registered Dec. 6, 1977; HARLEY - Reg. No. 1,352,679, registered Aug. 6, 1985; HD - Reg. No. 2,315,877, registered Feb. 8, 2000) (hereinafter the “HD marks”)
3. Respondent registered the disputed domain names on the following dates: on
July 1, 2021, it registered the <hd1marketplace.com>, <hdonemarketplace.com>, and <hdmarketplace.co> domain names; on July 22, 2019 it registered the <harleyofocala.com> and <ocalaharley.com> domain names; and on May 25, 2016 it registered the <crystalhd.com>, <crystalriverhd.com>, <floridacustomharley.com>, <floridaharleydavidson.com>, <floridausedharley.com>, <harleyoforlando.com>, <harleyorlando.com>, <jacksonvillehd.com>, <miamiusedharley.com>, <orlandousedharley.com>, and <villagesharleydavidson.com> domain names.
4. Respondent uses fifteen of the sixteen disputed domain names to redirect users to competing motorcycle goods and inactively holds one of the domain names.
5. The evidence shows that Respondent has no rights or legitimate interests in the disputed domain names and that they were registered and used in bad faith.
Paragraph 15(a) of the Rules 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."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant has rights in the HARLEY-DAVIDSON, HARLEY, and HD marks based on registration of the marks with the USPTO (e.g., HARLEY-DAVIDSON - Reg. No. 1,078,871, registered Dec. 6, 1977; HARLEY - Reg. No. 1,352,679, registered Aug. 6, 1985; HD - Reg. No. 2,315,877, registered Feb. 8, 2000) (hereinafter the “HD marks”). See Compl. Ex. 10. Registration of a mark with the USPTO is a valid showing of rights in a mark. See H-D Michigan, LLC v. Private Whois Service, FA 1006001328876 (Forum July 12, 2010) (finding that “Complainant has sufficiently registered its HARLEY-DAVIDSON mark with the USPTO to prove Complainant’s rights in the mark according to Policy ¶ 4(a)(i), regardless of the fact that Respondent lives or operates outside the United States.”). Since Complainant provides evidence of registration of the HD marks with the USPTO, the Panel finds that Complainant has rights in the marks under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s HD marks. Complainant argues that the disputed domain names are confusingly similar to Complainant’s HD marks as they all incorporate the HD marks and simply add the terms 1, one, marketplace, crystal, river, Florida, custom, used, of, Ocala, Orlando, Jacksonville, Miami, and/or villages, along with either the “.com” gTLD or the “.co” ccTLD to form the domain names. The addition of those terms and a gTLD or ccTLD, and the removal of hyphens, does not negate a finding of confusing similarity between a disputed domain name and a mark under Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also MTD Products Inc. v. ICS Inc., FA 1721505 (Forum Apr. 18, 2017) (holding that “[t]he removal of the hyphen [from complainant’s TROY-BILT mark in the disputed domain name] is, like most all embedded punctuation, insignificant”); see additionally Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”). Thus, the Panel finds that the disputed domain names are confusingly similar to the HD marks under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s HD marks and to use them in its domain names, adding the terms 1, one, marketplace, crystal, river, Florida, custom, used, of, Ocala, Orlando, Jacksonville, Miami, and/or villages;
(b) Respondent registered the disputed domain names on the following dates: on
July 1, 2021, it registered the <hd1marketplace.com>, <hdonemarketplace.com>, and <hdmarketplace.co> domain names; on July 22, 2019 it registered the <harleyofocala.com> and <ocalaharley.com> domain names; and on May 25, 2016 it registered the <crystalhd.com>, <crystalriverhd.com>,<floridacustomharley.com>, <floridaharleydavidson.com>,<floridausedharley.com>, <harleyoforlando.com>, <harleyorlando.com>, <jacksonvillehd.com>, <miamiusedharley.com>,<orlandousedharley.com>,and <villagesharleydavidson.com> domain names;
(c) Respondent uses fifteen of the sixteen disputed domain names to redirect users to competing motorcycle goods and inactively holds one of the domain names;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent does not have rights or legitimate interests in the disputed domain names because Respondent is not commonly known by the disputed domain names and Complainant has not authorized Respondent to use the HD marks. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization to use a mark constitutes a further showing that a respondent is not commonly known by a disputed domain name. See SPTC, Inc. and Sotheby’s v. Tony Yeh shiun, FA 1810835 (Forum Nov. 13, 2018) (finding no rights or legitimate interests in the <sothebys.email> domain name where the WHOIS identified Respondent as “Tony Yeh shiun,” Complainant never authorized or permitted Respondent to use the SOTHEBY’S mark, and Respondent failed to submit a response.). Here, the WHOIS information identifies “Jeremy Coons / Lucky U Cycles” as the registrant and Complainant submits it has not authorized Respondent to use the HD marks in any way. See Registrar Verification Email. Thus, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the disputed domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses fifteen of the domain names to redirect users to competing motorcycle goods and inactively holds one of the domains. Using a disputed domain name to divert users to competing goods and services does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Likewise, inactively holding a disputed domain name also does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use. See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).”). Here, Complainant provides evidence that 15 of the 16 disputed domain names redirect to Respondent’s competing website and the <harleyorlando.com> domain name redirects to an error message. See Compl. Ex. 11. Thus, the Panel agrees with Complainant and finds that Respondent is not using the domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a formal Response the Panel finds that Respondent does not have a right or legitimate interest in any of the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the disputed domain names in bad faith because Respondent engages in a pattern of bad faith. Registration and use of multiple infringing domain names indicates bad faith under Policy ¶ 4(b)(ii). See United States Postal Service v. Yongkun Wang, FA 1788170 (Forum July 11, 2018) (“Complainant contends that Respondent is a serial cybersquatter as evidenced by its registering four separate domain names all incorporating Complainant’s USPS mark. Therefore, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(ii).”). Here, Respondent registered 16 domain names all incorporating Complainant’s HD marks. Therefore, as the Panel agrees with Complainant, it finds bad faith per Policy ¶ 4(b)(ii).
Secondly, Complainant argues that Respondent uses the domain names to attract users for commercial gain and to disrupt Complainant’s business by redirecting users to competing goods. Using a disputed domain name to divert users to a respondent’s own website where it offers competing goods or services can be evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). The Panel notes that Complainant provides evidence Respondent redirects 15 of the 16 disputed domain names to Respondent’s own website which offers competing motorcycle products for sale. See Compl. Ex. 11. Therefore, the Panel finds bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv).
Fourthly, Complainant contends that Respondent had actual knowledge of Complainant’s rights in the HD marks based on the fame of the marks, Respondent’s use of the domain names to redirect users to competing goods, and the fact that Respondent is a former employee of an authorized distributor of Complainant’s products. Per Policy ¶ 4(a)(iii), actual knowledge of a complainant’s trademark rights is sufficient to establish bad faith and can be demonstrated by the fame of the mark and the use the respondent makes of the domain name. See United States Postal Service v. Yongkun Wang, FA 1788170 (Forum July 11, 2018) (finding Respondent had actual knowledge of Complainant’s rights in the USPS mark “given the widespread use of Complainant’s mark and the fact that Respondent registered four separate domain names all of which include Complainant’s USPS mark in its entirety”); see also Vita-Mix Management Corporation v. OOO "WG-STAHL", FA 1725713 (Forum May 30, 2017) (“Respondent must have had actual knowledge of the VITAMIX mark because Complainant previously authorized Respondent to distribute its product until Complainant terminated the non-exclusive distribution agreement on January 16, 2015.”); see additionally iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Therefore, as the Panel agrees with Complainant and finds Respondent had actual knowledge of Complainant’s rights in the HD marks, the Panel also finds bad faith.
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the HD marks and in view of the conduct that Respondent has engaged in when using the domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hd1marketplace.com>, <hdonemarketplace.com>, <hdmarketplace.co>, <crystalhd.com>, <crystalriverhd.com>, <floridacustomharley.com>, <floridaharleydavidson.com>, <floridausedharley.com>, <harleyofocala.com>, <harleyoforlando.com>, <harleyorlando.com>, <jacksonvillehd.com>, <miamiusedharley.com>, <ocalaharley.com>, <orlandousedharley.com>, and <villagesharleydavidson.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: December 22, 2021
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