H-D U.S.A., LLC v. Thomas Gulley d/b/a A-Tech Solutions and Harley Goodies
Claim Number: FA1303001488608
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. Respondent is Thomas Gulley d/b/a A-Tech Solutions and Harley Goodies (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <harleygoodies.com>, <harleygoodies.net>, <harleygoodies.mobi>, <harleygoodies.biz>, <harley-goodies.com>, <harley-goodies.net>, <harleygoodys.com>, <harleygoodys.net>, <harleyriders.info>, <harleysolutions.net>, <myharleydealer.com>, <myharleydealer.net>, <ratemyharleystore.com>, <fixmyharley.com>, <fixmyharley.net>, <myhddealer.com>, <ratemyhddealer.com>, <hd-solutions.com>, and <softailsolutions.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.
Jeffrey M. Samuels, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 5, 2013; the National Arbitration Forum received payment on March 5, 2013.
On Mar 6, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <harleygoodies.com>, <harleygoodies.net>, <harleygoodies.mobi>, <harleygoodies.biz>, <harley-goodies.com>, <harley-goodies.net>, <harleygoodys.com>, <harleygoodys.net>, <harleyriders.info>, <harleysolutions.net>, <myharleydealer.com>, <myharleydealer.net>, <ratemyharleystore.com>, <fixmyharley.com>, <fixmyharley.net>, <myhddealer.com>, <ratemyhddealer.com>, <hd-solutions.com>, and <softailsolutions.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 March 7, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 27, 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@harleygoodies.com, postmaster@harleygoodies.net, postmaster@harleygoodies.mobi, postmaster@harleygoodies.biz, postmaster@harley-goodies.com, postmaster@harley-goodies.net, postmaster@harleygoodys.com, postmaster@harleygoodys.net, postmaster@harleyriders.info, postmaster@harleysolutions.net, postmaster@myharleydealer.com, postmaster@myharleydealer.net, postmaster@ratemyharleystore.com, postmaster@fixmyharley.com, postmaster@fixmyharley.net, postmaster@myhddealer.com, postmaster@ratemyhddealer.com, postmaster@hd-solutions.com, postmaster@softailsolutions.com. Also on March 7, 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.
A timely Response was received and determined to be complete on March 27, 2013.
A timely Additional Submission by Complainant was received and determined to be complete on April 1, 2013.
A timely Additional Submission by Respondent was received and determined to be complete on April 8, 2013
On April 10, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jeffrey M. Samuels 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant H-D U.S.A., LLC (hereinafter H-D) owns and licenses intellectual property to various Harley-Davidson (Harley) companies. Since 1903, Harley has manufactured, advertised, and sold motorcycles under the HARLEY-DAVIDSON trademark and trade name. Since 1912, Harley has also used the mark HD in connection with the sale of motorcycles and has also offered motorcycles under the HARLEY mark since at least as the early 1980s. Harley also offers a full array of motorcycle parts and accessories, clothing, and various other products and services under these marks. Harley also owns the mark SOFTAIL, as used on a line of motorcycles. Since 1906, Harley has offered motorcycle foot rests and extensions under the HARLEY-DAVIDSON marks.
(The HARLEY-DAVIDSON, HD and HARLEY marks are collectively referred to herein as the H-D marks.)
In 2012, Harley had approximately $5.5 billion in worldwide sales of products and services under its marks. Harley spends millions each year in advertising and promoting its products. Interbrand has ranked the HARLEY-DAVIDSON mark in its “Top 100” report for global brands for many years.
Products and services offered under Harley’s marks are promoted and sold through one of more than 1,500 authorized HARLEY-DAVIDSON dealerships. Harley permits its distributors to use domain names comprised in part of the H-D marks.
Complainant owns numerous trademark registrations, both in the U.S. and around the world, for its H-D and SOFTAIL marks. See Complaint, Exhibit 9.
The domain names in dispute were registered between 2007 and 2010. According to Complainant, the domain names harleygoodies.com and harleygoodies.net are used in connection with a commercial website that offers competing motorcycle accessories, specifically, foot rest extension kits and brackets for motorcycles, including, in particular, Harley’s HARLEY-DAVIDSON and SOFTAIL motorcycles. Respondent also uses the trade name “Harley Goodies” on his website as well as Harley’s orange and black color scheme.
Complainant indicates that Respondent uses 15 of the domain names[1] for pay-per-click (PPC) sites that feature sponsored link ads for directly competing motorcycle-related sites or other commercial sites and ads for GoDaddy.com’s services. With respect to the remaining two domain names, Complainant notes that the domain name <harleygoodies.mobi> is used for a site with ads for/links to GoDaddy.com’s services and that the domain name <harleygoodys.net> currently displays an error message.
In 2007, shortly after Respondent registered the domain name harleygoodies.com and started using it for a site that sold motorcycle accessory products that competed with those offered by Complainant, Harley sent a “cease and desist” letter to Respondent. See Complaint, Exhibit 12. According to Complainant, rather than comply with Harley’s demands, Respondent, within weeks of receipt of the letter, registered another infringing domain name and later registered additional domain names that are the subject of this proceeding.
Additional “cease and desist” letters were sent in May 2010, March 2011, and June 2011. In response to the March 2011 letter, Respondent stated “I could have used Harley-Goodies, this might have been somewhat misleading and definitely capitalizing on the Harley-Davidson name. But I chose to use harleygoodies as one word and only to describe what I am selling and for no other reason.”
Complainant asserts that the domain names are confusingly similar to Harley’s marks because each is comprised of one of Complainant’s marks, a generic or descriptive term or terms, and a generic top-level domain. Moreover, Complainant adds, the addition of such generic or descriptive terms as “solutions,” “fix,” “dealer,” and “store” to Harley’s marks heightens the confusing similarity because such terms relate to Harley’s business and services and products offered under Harley’s marks.
Complainant maintains that Respondent has no rights or legitimate interests in the subject domain names. First, it contends that Respondent’s registration and use of the competing domain names for a commercial website selling Respondent’s directly competing motorcycle-related products does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. Second, Harley asserts that Respondent’s registration and use of the PPC domain names for sites with ads for directly competing websites, other commercial websites, and/or GoDaddy.com’s services also does not constitute a bona fide offering of goods or services. The same is true, Complainant maintains, with respect to the non-use of the <harleygoodys.net> domain name.
With respect to the issue of “bad faith” registration and use, Complainant argues that Respondent’s registration and use of the competing domain names, as well as of the PPC domain names, constitutes bad faith under paragraph 4(b)(iv) of the Policy because Respondent uses such domain names to intentionally attract, for commercial gain, Internet users to such sites by creating a likelihood of confusion as to the source of such sites and of the products and services advertised thereon. Complainant further maintains that the requisite bad faith is established under paragraph 4(b)(iii) of the Policy because, with respect to the competing and PPC sites, Respondent disrupts Complainant’s business and unfairly competes with Complainant. Complainant also relies upon paragraph 4(b)(ii) of the Policy because, according to Complainant, “Respondent has a bad-faith pattern of registering trademark-related domain names, specifically, the 19 Domain Names subject to this Complaint and the 80+ additional domain names containing Harley’s Marks that Respondent had previously registered.”
Focusing on the passive holding of the <harleygoodys.net> domain name, Complainant indicates that bad faith is established as a result of the confusing similarity between such name and Complainant’s HARLEY and HARLEY-DAVIDSON marks and the fact that there is no conceivable use of the domain name that would be legitimate.
“Finally, it is undeniable that Respondent registered the Domain Names with knowledge of Harley’s Marks because Respondent’s website offers directly competing motorcycle parts and accessories. Registration of a domain name with knowledge of the trademark owner’s rights has been consistently found to constitute bad faith under the UDRP.”
B. Respondent
Respondent, in his Response, indicates that he was first contacted by Complainant in September 2007 and asked to remove a few logos and references from his site. According to Respondent, he removed a small likeness of the Harley-Davidson logo from the site and added a disclaimer stating “Please note that we are in no way associated with or endorsed by Harley-Davidson Motor Company – We are an aftermarket accessory manufacture (sic) of parts that will fit motorcycles manufactured by Harley-Davidson Motor Company.” Respondent maintains that he did not hear again from Complainant until almost four years later. “My issue was that they waited almost 4 years before doing anything. I thought that this issue has been over since no one had made any contact with me. During this time my business had grown [and] I had already spent thousand[s] of dollars in signs, banners, printed flyers as well as internet and magazine ads.”
Respondent further contends that, with the exception of the <harleygoodies.com> and <harleygoodies.net> domain names, the other domain names in issue are not being used and were purchased in good faith from GoDaddy.com. With respect to the <harleygoodies.com> and <harleygoodies.net> domain names, Respondent maintains that such names are no different from many other domain names that include one of Harley’s marks, including <hdriders.com>, <theharley.com>, and <harleys.com>. The domain name <harleygoodies.com> is used only to describe my products as to be used only with Harley-Davidson motorcycles, Respondent asserts, “as I only sell what I manufacture and everything I make and sell is exclusively made to fit only Harley-Davidson models.”
Respondent contends that his floorboard extensions are for Harley-Davidson motorcycles and are not claimed to be a genuine product. “I sell no products that HARLEY sells, I do not market my product using the HARLEY name, I do clearly disclose that my product is not a genuine HARLEY, I even state clearly that I am an after-market maker of parts that fit the HARLEY-DAVIDSON motorcycles.”
C. Additional Submissions
Complainant, in its Additional Submission, challenges Respondent’s contention
that his products are not identical to Harley’s products. Complainant contends that Respondent’s foot-rest extension products are identical in purpose to Harley’s foot-rest extension products and that, in any case, products need not be identical to be deemed directly competing under the UDRP or U.S. law.
Complainant further asserts that Respondent’s contention that he does not market his product using the Harley name is contrary to undisputed evidence of Respondent’s registration and use of the <harleygoodies.com> and <harleygoodies.net> domain names and the use of the “Harley Goodies” trade name.
Complainant also challenges Respondent’s assertion that the PPC domain names are “not currently being used.” Complainant notes that the documentary evidence submitted with its Complaint establishes that such domain names are being used for PPC websites with sponsored-link ads for directly competing websites and/or other commercial websites and/or for sites with ads for GoDaddy.com’s services.
Complainant also objects to Respondent’s claim that Complainant waited almost 4 years before doing anything. Complainant points out that it first objected to the domain name <harleygoodies.com> in September 2007, shortly after it was registered, and then lodged further objections to Respondent’s domain names in May 2010 and March 2011. In any case, Complainant alleges, to the extent Respondent is relying on the equitable defense of laches, “given Respondent’s extensive track record of cybersquatting on Harley’s Marks by registering 100+ HARLEY-formative domains and his false and misleading claims made in his Response, Respondent is not entitled to invoke laches even if he could prove the elements of laches, which he cannot.”
In his “Additional Submission,” Respondent maintains that Complainant has not established that his purchase of the domain names was motivated by a desire to compete with Complainant or to sell for a profit. “As said before I have never offered, accepted an offer or have even been offered any money for any of the domains that I have purchased.”
Respondent further contends that the fact that he owns the domain HARLEY-GOODIES.COM and did not use the name in such format “shows that I am only trying to let consumers know that my unique products are exclusively for Harley-Davidson motorcycles.” Respondent further maintains that, in the domain name <harleygoodies.com>, the word “Harley” is used as a descriptive word.
Respondent also asserts that Complainant does not sell floorboard extensions and “if there is no `like product’ then I cannot be a competing entity.” He further argues that there is no evidence that he is profiting from PPC domains.
Upon review of the parties’ submissions, the Panel finds that: (1) each of the domain names in dispute is confusingly similar to a mark in which Complainant has rights; (2) Respondent has no rights or legitimate interests in any of the domain names in issue; and (3) each of the disputed domain names was registered and is being 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.
Preliminary Issue: Multiple Respondents
Before proceeding to address the above-referenced three elements, the Panel concludes that Complainant’s filing of a single complaint against multiple registrants and domain names is appropriate in this case in view of evidence of shared contact information proving that the registrants are one and the same. See Yahoo! v. Data Art, WIPO Case D2000-0587 (decision rendered against multiple registrants where registrants where “the addressees used and the Contacts designated [were] inter-linking and identical”).
The Panel concludes that each of the 19 domain names in dispute is confusingly similar to at least one of Complainant’s marks. As noted by Complainant, each of the disputed domain names incorporates in full one of Complainant’s distinctive marks, followed by generic or descriptive matter.
The evidence further establishes that Complainant, through its long use and trademark registrations, has rights in the HARLEY, HD, and SOFTAIL marks.
Rights or Legitimate Interests
The Panel concludes that Complainant has met its burden of establishing that Respondent has no rights or legitimate interests in the domain names in dispute.
Respondent notes that he does not sell genuine HARLEY products. Rather his products are designed for the after-market, to be used on HARLEY motorcycles. He further contends that he uses the term “Harley” descriptively and that his products do not compete with those sold by Complainant.
The Panel finds that the use of Complainant’s marks as part of the disputed domain names for the commercial and PPC sites in issue may not be characterized as descriptive use of the term “Harley.” The fact that Respondent’s products are designed for use with HARLEY motorcycles does not sanction the use of the H-D marks as part of a domain name. As used as part of the domain names in dispute, the terms “Harley,” “HD,” and “SOFTAIL” would not be viewed by the internet user to describe the intended use of the products found at such site but, rather, as an indication that the site is sponsored by or somehow affiliated with Complainant.
The Panel concludes that each of the 19 domain names in dispute was registered and is being used in bad faith.
While Respondent contends that, with the exception of the harleygoodies.com and harleygoodies.net domain names, none of the other names is being used, the evidence presented by Complainant (see Complaint, Exhibit 11) clearly establishes that that is not the case.
The Panel finds that Respondent, by using the domain names in issue has intentionally attempted to attract, for commercial gain, internet users to his sites or other on-line locations, by creating likelihood of confusion with Complainant’s marks as to the source of such sites or of the products and/or services offered at such sites, within the meaning of paragraph 4(b)(iv) of the Policy. As noted above, the domain names in issue are confusingly similar to Complainant’s marks. Moreover, the evidence (see Complaint, Exhibits 5 and 6) establishes that Complainant sells foot controls, foot pegs, footboards and other parts and accessories on its <harley-davidson.com> site. While such products may not be identical to Respondent’s floorboards, the parties’ products appear sufficiently related so that, in view of the similarity between the marks and domain names, a likelihood of confusion exists.
The fact that Respondent’s <harleygoodies.com> and <harleygoodies.net> sites include a disclaimer does not avoid a finding of likelihood of confusion. The existence of a disclaimer cannot by itself cure bad faith since, by the time the user reads the disclaimer, the objective of attracting visitors for financial gain will already be achieved. While Respondent asserts that there is no evidence he is profiting from PPC sites, the Panel concludes that intent to profit may be inferred absent evidence to the contrary.
The above findings also support a determination that Respondent registered the domain names in dispute primarily for the purpose of disrupting the business of a competitor, within the meaning of paragraph 4(b)(iii) of the Policy.
In addition, given evidence of the 80+ additional domain names containing Harley’s marks that Respondent had previously registered, the requisite bad faith also is established under paragraph 4(b)(ii) of the Policy – “you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct.”
With respect to the <harleygoodys.net> site, which currently displays an error message, the Panel finds that such passive holding constitutes bad faith. As noted by Complainant, the domain name is confusingly similar to Complainant’s marks and any future use of such domain name in connection with a functioning site would likely result in a likelihood of confusion.
Finally, to the extent Respondent may be relying on the equitable doctrine of laches, the Panel concludes that such doctrine is not applicable to UDRP proceedings and that, even if it was, Respondent is not entitled to relief pursuant to the maxim that one who seeks equity must do so with clean hands.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <harleygoodies.com>, <harleygoodies.net>, <harleygoodies.mobi>, <harleygoodies.biz>, <harley-goodies.com>, <harley-goodies.net>, <harleygoodys.com>, <harleygoodys.net>, <harleyriders.info>, <harleysolutions.net>, <myharleydealer.com>, <myharleydealer.net>, <ratemyharleystore.com>, <fixmyharley.com>, <fixmyharley.net>, <myhddealer.com>, <ratemyhddealer.com>, <hd-solutions.com>, and <softailsolutions.com> domain names be TRANSFERRED from Respondent to Complainant.
Jeffrey M. Samuels, Panelist
Dated: April 18, 2013
[1] harleygoodies.biz, harely-goodies.com, harley-goodies.net, harleygoodys.com, harleyriders,info, harleysolutions.net, myharleydealer.com, myharleydealer.net, ratemyharleystore.com, fixmyharley.com, fixmyharley.net, myhddealer.com, ratemyhddealer.com, hd-solutions.com, and softailsolutions.com
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