H-D U.S.A., LLC v. Viktors Dunajevs
Claim Number: FA1302001486359
Complainant is H-D U.S.A, LLC (“Complainant”), represented by David M. Kelly of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., District of Columbia, USA. Respondent is Viktors Dunajevs (“Respondent”), Latvia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hdclothes.com>, registered with GODADDY.COM, LLC.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 21, 2013; the National Arbitration Forum received payment on February 21, 2013.
On February 25, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <hdclothes.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 February 27, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 19, 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@hdclothes.com. Also on February 27, 2013, 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 March 28, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 makes the following assertions:
1. Respondent’s <hdclothes.com> domain name is confusingly similar to Complainant’s H-D mark.
2. Respondent does not have any rights or legitimate interests in the <hdclothes.com> domain name.
3. Respondent registered and used the <hdclothes.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
The H-D in Complainant’s name stands for Harley-Davidson, in operation since 1903, and using its H-D mark since 1912. Complainant owns trademark Registration No. 1,775,905 for the H-D mark, covering clothing, issued by the U.S. Patent and Trademark Office (“USPTO”) on June 23, 1993.
Respondent registered the <hdclothes.com> domain name on October 8, 2012, and uses it to sell counterfeit H-D goods.
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.”).
Complainant has established its rights in the H-D mark through registration with the USPTO. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Respondent’s <hdclothes.com> domain name is confusingly to Complainant’s H-D mark, as it simply adds the generic word “clothes,” descriptive of goods provided under the H-D mark. Respondent also added the gTLD, and eliminated the hyphen and space between the words. None of these changes distinguish the disputed domain name from Complainant’s mark. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant); see also Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”). Therefore the Panel finds that Respondent’s <hdclothes.com> domain name is confusingly similar to the H-D mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interests in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent is not commonly known by the <hdclothes.com> domain name. The WHOIS records list “Viktors Dunajevs” as the registrant, which is not similar to the disputed domain name. Complainant states that it has not licensed or otherwise authorized Respondent to use its H-D mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). 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).
Complainant argues that using the <hdclothes.com> domain name to sell counterfeit goods in competition with Complainant cannot be a bona fide offering of goods or services. The Panel agrees and finds that Respondent’s use of the disputed domain name is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). See H-D Michigan v. Ross, NAF 0903001250712 (respondent’s use of the domain name <harleydavidson-jacket.com> for a website selling counterfeit versions of complainant’s products fails to constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Complainant also demonstrates that Respondent copies Complainant’s logo and color scheme in the website resolving from the <hdclothes.com> domain name. The Panel finds that this is additional evidence that Respondent has no legitimate claim to the disputed domain name. See Nortel Networks v. Cross, NAF 0405000271182 (holding respondent’s use of complainant’s NORTEL mark in the domain name and its use of the NORTEL design mark on its website “eliminate the possibility that [r]espondent could rely on the provisions of Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) to evidence its rights or legitimate interest in the disputed domain name.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent uses the confusingly similar <hdclothes.com> domain name to divert Internet users seeking Complainant to Respondent’s website, where it sells counterfeit H-D goods. This diverts commercial gain from Complainant to Respondent and disrupts Complainant’s business. Respondent is in clear violation of both Policy ¶ 4(b)(iii) and ¶ 4(b)(iv). See H-D Michigan v. Joseph, NAF 0906001269352, (“The Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iii) by disrupting Complainant’s business through the provision of counterfeit versions of Complainant’s products on the resolving website”); see also H-D Michigan v. Private Whois Service, NAF 1006001328876 (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).)”. In that same UDRP case, the panel noted that the use of Complainant’s logo further compounds the respondent’s bad faith, as it also does in this case.
The Respondent’s use of the disputed domain name to sell counterfeit goods, and copy Complainant’s logo, also demonstrates that Respondent had actual knowledge of Complainant and its rights in the H-D mark, a further indication of bad faith under Policy ¶ 4(a)(iii). See H H-D Michigan v. Zheng, NAF 1110001412105 (“The Panel finds that Respondent offers counterfeit goods of Complainant and thus had actual knowledge of Complainant’s mark and therefore registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hdclothes.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: April 5, 2013
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