H-D Michigan Inc. v. Registrant
Claim Number: FA0711001109413
Complainant is H-D Michigan Inc. (“Complainant”), represented by David
M. Kelly, of Finnegan Henderson Farabow Garrett &
Dunner L.L.P.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <harley-davidsonchina.com>, <harley-davidsonshanghai.com>, and <harlrydavidson.com> registered with Enom, Inc., and <barnettharleydavidson.com> registered with Onlinenic, Inc.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On
On November 21, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 11, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@harley-davidsonchina.com, postmaster@harley-davidsonshanghai.com, postmaster@harlrydavidson.com, and postmaster@barnettharleydavidson.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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.
A. Complainant makes the following assertions:
1. Respondent’s <harley-davidsonchina.com>, <harley-davidsonshanghai.com>, <harlrydavidson.com>, and <barnettharleydavidson.com> domain names are confusingly similar to Complainant’s HARLEY-DAVIDSON mark.
2. Respondent does not have any rights or legitimate interests in the <harley-davidsonchina.com>, <harley-davidsonshanghai.com>, <harlrydavidson.com>, and <barnettharleydavidson.com> domain names.
3. Respondent registered and used the <harley-davidsonchina.com>, <harley-davidsonshanghai.com>, <harlrydavidson.com>, and <barnettharleydavidson.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, H-D Michigan, Inc., has manufactured,
advertised, and sold motorcycles under the HARLEY-DAVIDSON mark since
1903. Complainant has also sold
motorcycle parts and accessories, motorcycle clothing, and various other
products and services under the HARLEY-DAVIDSON mark. Complainant registered the HARLEY-DAVIDSON
mark with the United States Patent and Trademark Office (“USPTO”) on
Respondent registered the <barnettharleydavidson.com> domain name on
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."
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(e), 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 as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (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, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant has registered the HARLEY-DAVIDSON mark with the
USPTO and the State Intellectual Property Office of the People’s Republic of
The <harley-davidsonshanghai.com> and <harley-davidsonchina.com> domain names are confusingly similar to Complainant’s HARLEY-DAVIDSON mark because the domain names both include Complainant’s entire mark and include geographic terms, “shanghai” and “china.” Combining Complainant’s mark with a geographic term is insufficient to distinguish the disputed domain names from the HARLEY DAVIDSON mark. Furthermore, the addition of the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain names from the HARLEY-DAVIDSON mark because all domain names are required to have a top-level domain. The Panel finds that the <harley-davidsonshanghai.com> and <harley-davidsonchina.com> domain names are confusingly similar to Complainant’s HARLEY-DAVIDSON mark under Policy ¶ 4(a)(i). See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) ( “[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that the respondent’s domain name <net2phone-europe.com> is confusingly similar to the complainant’s mark because “the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar").
The <harlrydavidson.com> and <barnettharleydavidson.com> domain
names are also confusingly similar to the HARLEY DAVIDSON mark pursuant to
Policy ¶ 4(a)(i). Regarding the <harlrydavidson.com>
domain name, substituting the “e”
for an “r” does not sufficiently distinguish the disputed domain name because
it is a mere misspelling of the registered mark. The <barnettharleydavidson.com> is
confusingly similar to the registered mark because it combines the entire mark
with the name of an authorized dealer “barnett.” The term “barnett” describes Complainant’s
business, and therefore does not distinguish the disputed domain name from the
registered mark. And, the removal of the
hyphen between the individual terms of the mark is also insufficient to
distinguish the disputed domain names from the HARLEY-DAVIDSON mark. Finally, because all domain names are
required to have a top-level domain, Respondent’s addition of the generic
top-level domain (“gTLD”) “.com” to all of the disputed domain names does not
distinguish them from the HARLEY-DAVIDSON mark.
The Panel finds that the <harlrydavidson.com> and <barnettharleydavidson.com>
domain names are confusingly similar to Complainant’s HARLEY-DAVIDSON mark
under Policy ¶ 4(a)(i). See Rollerblade,
Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the
top level of the domain name such as “.net” or “.com” does not affect the
domain name for the purpose of determining whether it is identical or
confusingly similar); see also Nat’l Cable Satellite
Corp. v. Black Sun Surf Co., FA
94738 (Nat. Arb. Forum June 19, 2000) (holding that the domain name
<cspan.net>, which omitted the hyphen from the trademark spelling, C-SPAN,
is confusingly similar to the complainant's mark); see also Belkin Components v. Gallant, FA 97075 (Nat.
Arb. Forum May 29, 2001) (finding the <belken.com> domain name
confusingly similar to the complainant's BELKIN mark because the name merely
replaced the letter “i” in the complainant's mark with the letter “e”); see also Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat.
Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,”
to the complainant’s AIG mark failed to sufficiently differentiate the name
from the mark under Policy ¶ 4(a)(i) because the appended term related directly
to the complainant’s business).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent has neither rights nor legitimate interests in the disputed domain names. Complainant must first present a prima facie case establishing that Respondent lacks all rights and legitimate interests in the disputed domain names. Once Complainant has met the burden and made a prima facie case supporting the assertion that Respondent lacks rights and legitimate interests, the burden shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain names. The Panel finds that Complainant has demonstrated that Respondent lacks rights and legitimate interests, and thus made a prima facie case pursuant to Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
The Panel presumes that Respondent lacks all rights and legitimate interests in the disputed domain names because Respondent failed to answer the Complaint. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). However, the Panel will examine all evidence in the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant asserts that Respondent has never been authorized to use the HARLEY-DAVIDSON mark, and is not commonly known by the disputed domain names. Moreover, the WHOIS information does not indicate that Respondent is commonly known by the disputed domain names. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Respondent is currently using the disputed domain names to advertise links to competing
and unrelated products. The Panel finds
that Respondent’s use is not 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). See WeddingChannel.com
Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that
the respondent’s use of the disputed domain name to
redirect Internet users to websites unrelated to the complainant’s mark,
websites where the respondent presumably receives a referral fee for each
misdirected Internet user, was not a bona fide offering of goods or
services as contemplated by the Policy);
see also DLJ Long Term Inv. Corp. v.
BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002)
(“Respondent is not using the disputed domain name in connection with a bona
fide offering of goods and services because Respondent is using the domain name
to divert Internet users to <visual.com>, where services that compete
with Complainant are advertised.”).
The <harlrydavidson.com> domain name is a mere misspelling of the
HARLEY-DAVIDSON mark. The Panel finds
that Respondent has no rights or legitimate interests in the disputed domain
name under Policy ¶ 4(a)(ii) when redirecting Internet users by
typosquatting. See IndyMac Bank
F.S.B. v. Ebeyer, FA 175292
(Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and
legitimate interests in the disputed domain names because it “engaged
in the practice of typosquatting by taking advantage of Internet users who
attempt to access Complainant's <indymac.com> website but mistakenly
misspell Complainant's mark by typing the letter ‘x’ instead of the letter
‘c’”); see also Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini,
D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … as a means of redirecting
consumers against their will to another site, does not qualify as a bona fide
offering of goods or services, whatever may be the goods or services offered at
that site.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using its <harley-davidsonchina.com>, <harley-davidsonshanghai.com>,
<harlrydavidson.com>, and <barnettharleydavidson.com>
domain names to attract Internet users to its websites for commercial gain by
creating a likelihood of confusion with Complainant as to the source,
sponsorship, affiliation, or endorsement of the websites that resolve from the
disputed domain names. The websites that
resolve from the disputed domain names advertise links to both competing and unrelated
websites, and Complainant asserts that Respondent is benefiting by receiving
click-through fees. The Panel finds that
Respondent is using the disputed domain names in bad faith pursuant to Policy ¶
4(b)(iv). See Associated
Newspapers Ltd. v. Domain Manager, FA
201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the
<mailonsunday.com> domain name is evidence of bad faith pursuant to
Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's
competitors and Respondent presumably commercially benefited from the
misleading domain name by receiving ‘click-through-fees.’”); see also G.D. Searle & Co. v.
Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that
the respondent registered and used the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar
domain name to attract Internet users to its commercial website).
Moreover, the Panel finds that Respondent’s use of the
disputed domain names to advertise competing products evidences Respondent’s
registration of the disputed domain names with the intent of disrupting
Complainant’s business. This conduct
demonstrates bad faith registration and use under Policy ¶ 4(b)(iii). See S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the
respondent acted in bad faith by attracting Internet users to a website that
competes with the complainant’s business); see
also Disney Enters., Inc.
v. Noel, FA 198805 (Nat. Arb. Forum Nov.
11, 2003) (“Respondent registered a domain name confusingly similar to
Complainant's mark to divert Internet users to a competitor's website. It is a
reasonable inference that Respondent's purpose of registration and use was to
either disrupt or create confusion for Complainant's business in bad faith
pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
Regarding Respondent’s
use of the <harlrydavidson.com> domain name, the Panel finds that typosquatting is evidence of bad faith
registration and use under Policy ¶ 4(a)(iii). See Nat’l Ass’n of Prof’l Baseball League, Inc. v.
Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the
intentional misspelling of words with [the] intent to intercept and siphon off
traffic from its intended destination, by preying on Internauts who make common
typing errors. Typosquatting is
inherently parasitic and of itself evidence of bad faith.”); see also Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s
registration and use of [the <zonelarm.com> domain name] that capitalizes
on the typographical error of an Internet user is considered typosquatting.
Typosquatting, itself is evidence of bad faith registration and use pursuant to
Policy ¶ 4(a)(iii).”).
Finally, Respondent
has registered domain names incorporating others’ famous names and marks, and
has been the respondent in several UDRP decisions in which the disputed domain
names were transferred from Respondent to the complainant in those cases. See
Chantecaille Beaute, Inc. & Parfum de Chantecaille, Inc. v. Registrant,
FA 964325 (Nat. Arb. Forum May 29, 2007); see
also Robin Reigi Inc. v. Registrant info@fashionid.com +1.25255572, FA 1065185
(Nat. Arb. Forum Oct. 9, 2007). The Panel finds that this pattern of behavior
is further evidence of Respondent’s registration and use in bad faith pursuant
to Policy ¶ 4(b)(ii). See Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad
faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the
complainant from reflecting its mark in a domain name and the respondent had
several adverse decisions against it in previous UDRP proceedings, which
established a pattern of cybersquatting); see also Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept.
8, 2000) (finding that one instance of registration of several infringing
domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the Respondent’s <harley-davidsonchina.com>, <harley-davidsonshanghai.com>, <harlrydavidson.com>, and <barnettharleydavidson.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: December 27, 2007
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