H-D Michigan, LLC v. Diamond Point Enterprises Limited
Claim Number: FA1206001451106
Complainant is H-D Michigan, LLC (“Complainant”), represented by David M. Kelly of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., Washington, D.C., USA Respondent is Diamond Point Enterprises Limited (“Respondent”), Antigua & Barbuda.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <harleydavidsoncredit.com>, registered with Fabulous.com Pty Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 28, 2012; the National Arbitration Forum received payment on June 28, 2012.
On June 29, 2012, Fabulous.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <harleydavidsoncredit.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 July 10, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 30, 2012 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@harleydavidsoncredit.com. Also on July 10, 2012, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 6, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco as Panelist.
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" 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 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant H-D is a Michigan Limited Liability Company with a principal place of business located in Ann Arbor, Michigan. Complainant owns and licenses, directly and indirectly, intellectual property to various Harley-Davidson companies, including Harley-Davidson Motor Company Group, LLC
Since 1903, Harley-Davidson has manufactured, advertised, and sold motorcycles under the HARLEY-DAVIDSON trademark and trade name. Harley-Davidson has also used the HARLEY-DAVIDSON mark since 1912 for the manufacture, advertising, and sale of motorcycles through a network of authorized dealers. In addition, Harley-Davidson has offered motorcycle parts and accessories, motorcycle clothing, and various other products and services under the HARLEY-DAVIDSON mark for many decades. Harley-Davidson has offered financial services under the mark HARLEY-DAVIDSON since at least as early as 1992.
Complainant registered the HARLEY-DAVIDSON mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 526,750 registered June 27, 1950).
The HARLEY-DAVIDSON mark has long been one of the most recognized and famous brands in the world.
Respondent registered or acquired the Domain Name in May 2010.
Respondent’s <harleydavidsoncredit.com> domain name is confusingly similar to Complainant’s HARLEY-DAVIDSON mark.
Respondent is not and has not been commonly known by the disputed domain name.
Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
Respondent resolves the disputed domain name to a website that offers links to third parties, many of which are Complainant’s competitors.
Respondent has been subject to multiple prior adverse UDRP proceedings.
Respondent’s disputed domain name disrupts Complainant’s business.
Respondent is intentionally attempting to confuse Internet users into patronizing its website for Respondent’s own commercial gain.
Respondent was well-aware of Complainant and Complainant’s rights in the HARLEY-DAVIDSON mark when it registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in the HARLEY-DAVIDSON mark through registration of the mark with the USPTO and otherwise.
Complainant’s HARLEY‑DAVIDSON mark is a famous trademark.
Respondent registered the at‑issue domain name subsequent to Complainant acquiring rights in the HARLEY‑DAVIDSON mark.
Respondent’s activities have been the subject of at least seven adverse UDRP decisions.
The at‑issue domain name references a website that offers links to third parties, many of which are Complainant’s competitors. Respondent uses the links to attempt to generate revenue.
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(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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
By showing the Panel that it registered the HARLEY‑DAVIDSON trademark with the USPTO, Complainant thereby establishes its rights in a mark under Policy ¶ 4(a)(i). See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).
The at‑issue domain name includes nearly the entire HARLEY-DAVIDSON trademark, omitting only the hyphen while adding the descriptive term “credit” and appending the generic top-level domain, “.com.” The sum of these alterations to Complainant’s trademark is insufficient to differentiate the <harleydavidsoncredit.com> domain name from Complainant’s trademark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel finds that <harleydavidsoncredit.com> domain name is confusingly similar to Complainant’s HARLEY-DAVIDSON mark. See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark); 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 Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).
Respondent lacks rights and legitimate interests in respect of the <harleydavidsoncredit.com> domain name.
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 the at‑issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Complainant has not authorized Respondent to use its HARLEY‑DAVISON trademark and, as discussed below, there is no circumstance present that might demonstrate that Respondent has rights or interests in respect of the domain name pursuant Policy ¶4(c).
With regard to Policy ¶4(c)(ii), Respondent fails to offer any evidence to support a finding that it is commonly known by the disputed domain name and WHOIS information for the at‑issue domain name identifies the registrant as “Diamond Point Enterprises Limited.” These findings urge that Respondent is not commonly known by the at‑issue domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
With regard to Policy ¶¶4(c)(i), 4(c)(iii), the at‑issue domain name references a website offering links to multiple third parties, including competing companies offering financing services for Complainant’s products. These circumstances indicate that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the at‑issue domain name under Policy ¶ 4(c)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
In light of the uncontroverted evidence, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
Respondent registered and uses the at-issue domain names in bad faith.
First, Respondent’s <harleydavisoncredit.com> website displays links to Complainant’s competitors. It is also more likely than not that Respondent generates click-through fees by and through such links. The links all display the “Harley” name, notwithstanding that they actually reference different third party companies. Therefore, the Panel concludes that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Second, as mentioned above, the at‑issue domain name resolves to a website offering links to third parties that offer competing services. Internet users may be diverted to these competing websites and then purchase services from a competitor rather than from Complainant. Pursuant to Policy ¶ 4(b)(iii), using a domain name in this manner demonstrates that Respondent registered and is using the disputed domain name in bad faith. See, H-D Michigan v. Martin (NAF FA0909001286735) (holding respondent used the domain names <officialharleydavidsonlive.com> and <darkcustom.com> in bad faith because “[r]espondent intended to disrupt Complainant’s business and take advantage of Complainant’s goodwill surrounding its marks by displaying third-party links to Complainant’s competitors in the motorcycle and motorcycle accessory industry.”); see also Diners Club International v. Value-Domain Com (NAF FA0911001296220) (holding respondent’s use of the <dinersclubcard.net> to operate a click-through website in competition with complainant constitutes a disruption of complainant’s business and constitutes bad faith under Section ¶ 4(b)(iii)) .
Third, Respondent has been a respondent in multiple adverse UDRP proceedings resulting in more than seven adverse decisions concerning the registration and use of domain names that are identical or confusingly similar to another’s trademark. See KOHL'S v. Diamond Point Enters. Ltd., FA 1435989 (Nat. Arb. Forum May 4, 2012); see also Enterprise Holdings v. Diamong Point Enters. Ltd., FA 1398860 (Nat. Arb. Forum Aug. 26, 2011); see also Priceline.com v. Diamond Point Enters. Ltd., FA 1303915 (Nat. Arb. Forum Mar. 4, 2010); see also Charlotte Russe v. Diamond Point Enters. Ltd. FA 1301277 (Nat. Arb. Forum Feb. 27, 2010); see also National Westminster Bank v. Diamond Point Enters. Ltd., FA 1292095 (Nat. Arb. Forum Dec. 12, 2009); see also Kershaw Shoes v. Diamond Point Enters. Ltd., FA 1288799 (Nat. Arb. Forum Nov. 30, 2009); see also Ashley Furniture v. Diamond Point Enters. Ltd., FA 1227724 (Nat. Arb. Forum Nov. 12, 2008). Respondent’s losing UDRP record shows a pattern of disregard for the trademark rights of others and urges that the Panel find bad faith registration and use under 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).
Finally, the fame of Complaint’s trademark and the manner of Respondent’s use of the domain name together, and separately, indicate that Respondent was aware of Complainant and its HARLEY-DAVIDSON trademark when Respondent registered and began using the at‑issue domain name to reference Respondent’s <harleydavidsoncredit.com> website. Therefore, under Policy ¶ 4(a)(iii), Respondent registered the disputed domain name in bad faith. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <harleydavidsoncredit.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: August 6, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page