H-D U.S.A., LLC v. Carlos Ludy
Claim Number: FA1312001533274
Complainant is H-D U.S.A., LLC (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington D.C., USA. Respondent is Carlos Ludy (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <harleydavidsonjacket.info> and <giubbottiharleydavidson.info>, registered with GoDaddy.com, LLC (R171-LRMS).
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 5, 2013; the National Arbitration Forum received payment on December 5, 2013.
On December 6, 2013, GoDaddy.com, LLC (R171-LRMS) confirmed by e-mail to the National Arbitration Forum that the <harleydavidsonjacket.info> and <giubbottiharleydavidson.info> domain names are registered with GoDaddy.com, LLC (R171-LRMS) and that Respondent is the current registrant of the names. GoDaddy.com, LLC (R171-LRMS) has verified that Respondent is bound by the GoDaddy.com, LLC (R171-LRMS) 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 6, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 26, 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@harleydavidsonjacket.info, postmaster@giubbottiharleydavidson.info. Also on December 6, 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 January 2, 2014, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant has manufactured, advertised, and sold motorcycles under the HARLEY-DAVIDSON trademark and trade name since 1903. Additionally, Complainant has for decades offered a full array of motorcycle parts and accessories, apparel, and other products and services under the HARLEY-DAVIDSON mark. Complainant has more than 1,500 authorized dealers throughout the world, including in China where Respondent is located.
Complainant owns hundreds of trademark registrations for the HARLEY-DAVIDSON mark in countries around the world, including registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,078,871 registered December 6, 1997).
The <harleydavidsonjacket.info> and <giubbottiharleydavidson.info> domain names are confusingly similar to Complainant’s HARLEY-DAVIDSON mark, as each domain name is comprised of Complainant’s mark in its virtual entirety and a generic term (“jacket” or “giubbotti” which means “jackets” in Italian).
Respondent is not and has not been commonly known by the disputed domain names. There is no evidence in the record, including the WHOIS information, to demonstrate that Respondent is commonly known by these domains. Respondent is not an authorized HARLEY-DAVIDSON dealer, and is not otherwise authorized by Complainant to sell Complainant’s products or use its HARLEY-DAVIDSON mark. Respondent’s registration and use or intended use of the disputed domain names for a commercial website offering counterfeit HARLEY-DAVIDSON products does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under the UDRP.
Respondent uses the <harleydavidsonjacket.info> domain name for a commercial website offering counterfeit HARLEY-DAVIDSON jackets and vests.
Respondent currently uses the <giubbottiharleydavidson.info> domain name for a pay-per-click website provided by GoDaddy that features sponsored-link advertisements for directly competing motorcycle-related websites and other commercial websites. Respondent intends to use this domain name for a commercial website offering counterfeit HARLEY-DAVIDSON products. The fact that Respondent’s website uses Complainant’s logo and orange-and-black color scheme constitutes “passing off,” in that Respondent is trying to pass itself off as Complainant and/or as a website affiliated with or sponsored by Complainant.
Respondent’s registration and use of the <harleydavidsonjacket.info> domain name constitute bad faith under Policy ¶ 4(b)(iii) because Respondent disrupts Complainant’s business by offering of counterfeit HARLEY-DAVIDSON products, and unfairly competing with Complainant’s own offering of genuine HARLEY-DAVIDSON products.
Respondent’s registration and use of the <giubbottiharleydavidson.info> domain name constitute bad faith under Policy ¶ 4(b)(iii) because Respondent’s use of the domain for a pay-per-click website with sponsored-link ads for directly competing websites disrupts Complainant’s business. Respondent’s registration and use or intended use of the disputed domain names constitute bad faith under Policy ¶ 4(b)(iv) because Respondent uses or intends to use each domain to intentionally attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant and its famous HARLEY-DAVIDSON mark as to the source, sponsorship, affiliation, and/or endorsement of Respondent’s website and the products offered there. Respondent’s unauthorized use of Complainant’s logo and extensive copying of Complainant’s website content constitute independent grounds of bad faith, including “passing off,” under prior UDRP decisions.
Respondent must have registered the disputed domain names with knowledge of Complainant’s rights in its famous HARLEY-DAVIDSON mark, given the international fame of Complainant’s HARLEY-DAVIDSON mark and Respondent’s offering of counterfeit HARLEY-DAVIDSON products at the <harleydavidsonjacket.info> 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.
Respondent registered the at-issue domain name subsequent to Complainant acquiring rights in the HARLEY-DAVIDSON mark.
Respondent uses the <harleydavidsonjacket.info> domain name for a commercial website offering counterfeit HARLEY-DAVIDSON jackets and vests.
Respondent currently uses the <giubbottiharleydavidson.info> domain name for a pay-per-click website provided by GoDaddy that features sponsored-link advertisements for directly competing motorcycle-related websites and other commercial websites.
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 names are each 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).”).
Each at-issue domain name contains Complainant’s mark in its entirety less its hyphen, includes the generic/descriptive term “jacket” or “giubbotti” (the later meaning “jackets” in Italian) and has the top level domain name “.info” appended to the resulting string. Respondent’s inclusion of a generic/descriptive term along with Complainant’s mark in Respondent’s domain names fails to differentiate Complainant’s trademark from either domain name for the purposes of Policy ¶ 4(a)(i) analysis. Likewise, the removal of the space in Complainant’s trademark and addition of the top level domain name, “.info,” is inconsequential. Therefore, the Panel concludes that Respondent’s <harleydavidsonjacket.info> and <giubbottiharleydavidson.info> domain names are each confusingly similar to Complainant’s HARLEY-DAVIDSON mark pursuant to Policy ¶ 4(a)(i). See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark); see also, U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain names. 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 either of the at-issue domain names.
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.
There is no evidence showing that Respondent is commonly known by either of the at-issue domain names. To the contrary, WHOIS information identifies “Carlos Ludy” as the registrant. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name under 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’s registration and use or intended use of the <harleydavidsonjacket.info> and <giubbottiharleydavidson.info> domain names to link to a commercial website offering counterfeit HARLEY-DAVIDSON products does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under the UDRP. Respondent used the <harleydavidsonjacket.info> domain name to link to a commercial website offering counterfeit HARLEY-DAVIDSON jackets and vests. Furthermore, Respondent tries to pass itself off as Complainant and/or as a website affiliated with or sponsored by Complainant. Such use of the <harleydavidsonjacket.info> domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. 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); see also, Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)).
On the other hand, Respondent’s <giubbottiharleydavidson.info> domain name addresses a webpage provided by registrar GoDaddy. The landing page features sponsored-link or pay-per-click advertisements for directly competing motorcycle-related websites and other commercial websites. Respondent may intend to use this domain name for a commercial website offering counterfeit HARLEY-DAVIDSON products as Complainant’s speculates in its Complaint, but even if it does not using the domain name to address a website containing pay-per-click links to Complainant’s competition is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the domain name. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (finding that “The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”)
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of each of the at-issue domain names pursuant to Policy ¶4(a)(ii).
The at‑issue domain names were each registered and 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 with regard to each at-issue domain name.
Respondent’s sale of counterfeit products at the <harleydavidjacket.info> website unfairly competes with Complainant’s business, disrupts it, and thereby demonstrates bad faith registration and use under 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). In selling counterfeit goods on its <harleydavidjacket.info> 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. Therefore, Respondent’s use of the <harleydavidsonjacket.info>domain name additionally demonstrates bad faith under Paragraph 4(b)(iv) of the Policy. 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).”).
Similarly, Respondent’s use of the <giubbottiharleydavidson.info> domain name to address a webpage where links to Complainant’s competitors are displayed also demonstrates Respondent’s bad faith with regard to such domain name under both Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that “[t]he disputed domain names resolve to websites that list links to competitors of Complainant evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”); see also, Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”)
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 names. 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 <harleydavidsonjacket.info> and <giubbottiharleydavidson.info> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: January 13, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page