H-D U.S.A., LLC v. big three
Claim Number: FA1310001525853
Complainant is H-D U.S.A., LLC (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington D.C., USA. Respondent is big three (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <harleydavidson-jacket.com> and <harleydavidson-sale.com>, registered with Xin Net Technology Corporation.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 22, 2013; the National Arbitration Forum received payment on October 22, 2013. The Complaint was submitted in both Chinese and English.
On October 24, 2013, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <harleydavidson-jacket.com> and <harleydavidson-sale.com> domain names are registered with Xin Net Technology Corporation and that Respondent is the current registrant of the names. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 October 31, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of November 20, 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@harleydavidson-jacket.com and postmaster@harleydavidson-sale.com. Also on October 31, 2013, the Chinese language 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 November 26, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons 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.
Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. Nonetheless, pursuant to Rule 11(a), Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in HARLEY-DAVIDSON and alleges that the disputed domain names are confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant manufactures, advertises, and sells motorcycles and motorcycling clothing and accessories under the HARLEY-DAVIDSON trademark.
2. Complainant owns United States Trademark Reg. No. 1,078,871, registered December 6, 1977, for the word mark HARLEY-DAVIDSON.
3. The disputed domain names were both registered on August 26, 2013.
4. The domain name <harleydavidson-sale.com> is not in use; the domain name <harleydavidson-jacket.com> resolves to a website showing goods of the same kind as those sold by the Complainant, offered for sale by reference to Complainant’s trademark.
5. There is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
B. Respondent has not submitted a Response to this case.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by former decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Since Complainant provides evidence of its United States Patent and Trademark Office trademark registration, the Panel is satisfied that it has trademark rights in HARLEY-DAVIDSON (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”).
Panel is also satisfied that both disputed domain names are confusingly similar to Complainant’s trademark. The disputed domain names takes the trademark and adds non-distinctive elements – namely, the gTLD, “.com”, and the descriptive term “sale” or “jacket”, none being added matter which distinguishes the domain name from the trademark in any significant way so as to avoid confusion (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 Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) finding <westfieldshopping.com> confusingly similar to the WESTFIELD trademark; see finally Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark").
Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy with respect to both disputed domain names.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
The publicly available WHOIS information identifies Respondent as “big three” and so there is no prima facie evidence that Respondent might be commonly known by either of the disputed domain names. There is no evidence that Respondent has any trademark rights. There is no evidence that Complainant has authorized Respondent to use the trademark and Complainant denies any such authorization.
Complainant contents that the domain name <harleydavidson-jacket.com> resolves to a website offering counterfeit HARLEY-DAVIDSON products. There is no conclusive evidence that is so. Nevertheless, 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). Numerous UPRP panel have held that sale of counterfeit goods by reference to a complainant’s trademark gives no rights or interests in a disputed domain name incorporating the trademark (see eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007) concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name).
In any event, whether or not the goods are genuine does not require scrutiny since, for the purposes of paragraph 4(c) of the Policy, it is enough for Panel to adopt the reasoning in the case of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, and observe that the conditions of use sufficient to establish rights or legitimate interests laid out in that case have not been met here.
There is no indication of the use of the disputed domain name <harleydavidson-jacket.com> has been used in connection with a bona fide offering of goods or services prior to notice of the dispute. Panel finds that the Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in this disputed domain name, and that the Respondent in failing to reply has not rebutted such prima facie case.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name <harleydavidson-jacket.com> and so the Complainant has satisfied the second element of the Policy.
The domain name <harleydavidson-sale.com> is not in use. Complainant claims that Respondent’s non-use or “passive holding” of the domain name <harleydavidson-sale.com> does not demonstrate any legitimate interest of Respondent in that domain name. Panel agrees and finds that Complainant has, once more, established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in this domain name. In the absence of a Response, that case is not rebutted and so Panel finds that Respondent has no rights or interests in <harleydavidson-sale.com> and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
Panel finds that Respondent’s actions with respect to <harleydavidson-jacket.com> fall squarely under paragraph 4(b)(iv) above. Panel has already found the disputed domain name to be confusingly similar to Complainant’s trademark. Complainant submits evidence of screenshots of the web page corresponding with the disputed domain name. Panel notes the sale of goods competitive with Complainant’s goods. Panel accepts as more likely than not to be true Complainant’s allegation that those goods are counterfeit. The website exists for commercial gain. In terms of paragraph 4(b)(iv) of the Policy, Panel finds that it is more likely than not that Respondent is using the domain name to attract, for commercial gain, internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s trademark (see, for example, Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008).
Analysis of the <harleydavidson-sale.com> domain name does not fall neatly into the scenarios described by paragraph 4(b)(iv) above. Panel nonetheless finds both registration and “use” of the domain name in bad faith. Given the common ownership of the disputed domain names, their common registration date, their inclusion of Complainant’s well-known trademark, the lack of any primary meaning attaching to that trademark, and the fact that the companion domain name is used to sell goods by reference to the HARLEY-DAVISON trademark, there is a direct inference that the disputed name at issue was registered in bad faith in the knowledge of Complainant’s trademark and business.
Moreover, the fact that the at-issue domain name has not been used does not prevent a finding of bad faith use under the Policy since this is an instance where, given the notoriety of the trademark, there can be no possible good faith use at a future time (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED in respect of both disputed domain names.
Accordingly, it is Ordered that the <harleydavidson-jacket.com> and <harleydavidson-sale.com> domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: December 3, 2013
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