H-D Michigan, LLC v. Myra Bennie
Claim Number: FA1212001475519
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 Myra Bennie (“Respondent”), New Hampshire, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <harleydavidsonus.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 12, 2012; the National Arbitration Forum received payment on December 12, 2012.
On December 12, 2012, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <harleydavidsonus.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. 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 December 12, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 2, 2013 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@harleydavidsonus.com. Also on December 12, 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 January 9, 2013, 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 owns the HARLEY-DAVIDSON mark, which is registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,078,871 registered December 6, 1977). Complainant has operated since 1903 in the industry of motorcycle manufacturing, and has used the HARLEY-DAVIDSON mark since 1912 to advertise its products. Complainant offers motorcycle parts and accessories, clothing and other related products and services. Complainant advertises and sells its products on its website, and has substantial monthly traffic to its site.
Respondent registered the <harleydavidsonus.com> domain name on October 11, 2012 and uses the domain name to host a commercial website that offers counterfeit products that use the HARLEY-DAVIDSON mark.
Respondent is not authorized to use the HARLEY-DAVIDSON mark in any way. Respondent displays Complainant’s mark on its products without permission, and the resolving website is virtually identical to another website that also contained Complainant’s trademark, was subject to a prior UDRP and found to be counterfeit.
The <harleydavidsonus.com> domain name is confusingly similar to Complainant’s HARLEY-DAVIDSON mark.
Respondent has no rights or legitimate interests in the disputed domain name, as Respondent’s use of the domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use, and Respondent is not commonly known by the domain name.
Respondent registered and uses the <harleydavidsonus.com> domain name in bad faith by attempting to attract Internet users to its resolving website for commercial gain by causing confusion between the website’s domain name and Complainant’s mark, and by unfairly competing with Complainant’s business, causing disruption.
Respondent’s sale of counterfeit goods is further evidence of its bad faith registration and use, and Respondent had actual and constructive knowledge of Complainant’s rights in the mark.
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-DAVISON mark is a famous trademark.
Respondent registered the at-issue domain name subsequent to Complainant acquiring rights in the HARLEY-DAVIDSON mark.
The at-issue domain name addresses a website which offers counterfeit and/or unauthorized goods of Complainant.
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 is confusingly similar to Complainant’s HARLEY-DAVIDSON trademark. The domain name includes nearly the entire HARLEY-DAVIDSON trademark, omitting only the hyphen while adding the geographically descriptive term “us” and appending the generic top-level domain, “.com.” The sum of these alterations to Complainant’s trademark is insufficient to differentiate the <harleydavidsus.com> domain name from Complainant’s trademark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel finds that <harleydavidsonus.com> domain name is confusingly similar to Complainant’s HARLEY-DAVIDSON mark. See H-D Michigan v. Hog Heaven Motorcycles (NAF FA0603000659657) (finding “Respondent’s domain name [<columbusharley.com>] features Complainant’s entire HARLEY mark and adds the geographic term ‘Columbus.’ … [T]he addition of a geographic term to a mark is insufficient to properly distinguish Respondent’s domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also H-D Michigan v. Bingham (NAF FA0902001248203) (finding the domain name <hawaiiharleydavidson.com> confusingly similar to Complainant’s HARLEY-DAVIDSON mark and noting “previous UDRP Panels have held that the addition of a geographic term to a mark in a domain name does not distinguish the domain name from that mark, including a number of cases involving Complainant’s trademarks.”);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 both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue 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 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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent is not known by the <harleydavidsonus.com> domain name as no evidence supports otherwise, including the WHOIS information. The WHOIS information identifies “Myra Bennie” as the registrant. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Respondent uses the <harleydavidsonus.com> domain name to offer counterfeits of Complainant’s products using the HARLEY-DAVIDSON mark. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use under Policy ¶4(c)(iii). See H-D Michigan v. Private Whois Service, FA1328876 (Nat. Arb Forum July 7, 2006) (finding no legitimate interest of respondent in the domain name <harleydavidsonmotorcyclejackets.com> because “The Panel finds that [r]espondent’s appropriation of Complainant’s mark to compete with Complainant and mar the reputation of Complainant’s mark through the practice of selling counterfeit merchandise is not a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶¶ 4(c)(i) or 4(c)(iii).”); See also H-D Michigan v. Huang Gui, FA1433033 (Nat. Arb. Forum April 19, 2012) (finding no legitimate rights or interest because respondent’s use of the domain name <soman-harley.com> “abets the foul purpose” of respondent’s sale of counterfeit merchandise at respondent’s <myhdjacket.com> website).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, multiple Policy ¶4(b) bad faith circumstance are present and there is also non-Policy ¶4(b) evidence from which the Panel also concludes that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Respondent’s sale of counterfeit products at the <harleydavidsonus.com> website unfairly competes with Complainant’s business, disrupts it, and thereby demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Louis Vuitton Malletier S.A., L.L.C. v. David, FA1138296 (Nat. Arb. Forum Mar. 5, 2008) (concluding that the complainant’s business is disrupted by the respondent’s registration and use of the disputed domain name for the purpose of selling counterfeit products); see also Juicy Couture, Inc. v. Chinasupply, FA 1222544 (Nat. Arb. Forum Oct. 13, 2008) (holding that the selling of counterfeit versions of a complainant’s products disrupted the complainant’s business and is evidence of bad faith registration and use).
Additionally, Respondent’s registration and use of the at-issue domain name demonstrates bad faith under Paragraph 4(b)(iv) of the Policy. In selling counterfeit goods on its <harleydavidsonus.com> website Respondent uses the at-issue domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant and its HARLEY-DAVIDSON mark as to the source, sponsorship, affiliation, and/or endorsement of Respondent’s website. See H-D Michigan v. Private Whois Service, FA1328876 (Nat. Arb. Forum April 19, 2012) (holding respondent’s use of the domain name <harleydavidsonmotorcyclejackets.com> for a website offering counterfeit HARLEY-DAVIDSON jackets and vests constitutes bad faith because “Respondent’s clear intent to attract and mislead Complainant’s consumers for Respondent’s own commercial gain demonstrates bad faith registration and use under Policy ¶ 4(b)(iv).”).
Finally, considering the fame associated with Complainant’s mark and Respondent’s use of the domain name to sell counterfeit products, Respondent undoubtedly had actual knowledge of Complainant’s rights in the HARLEY-DAVIDSON trademark when it registered the domain name. Respondent’s prior knowledge of Complainant’s trademark demonstrates bad faith registration and use of the domain name under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <harleydavidsonus.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: January 11, 2013
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