H-D U.S.A., LLC v. Zhang Jia Jing
Claim Number: FA1312001533417
Complainant is H-D U.S.A., LLC (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington D.C., USA. Respondent is Zhang Jia Jing (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <harley-jackets.com>, registered with Foshan YiDong Network Co., LTD.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 6, 2013; the National Arbitration Forum received payment on December 6, 2013. The Complaint has been submitted in English and Chinese.
On December 6, 2013, Foshan YiDong Network Co., LTD confirmed by e-mail to the National Arbitration Forum that the <harley-jackets.com> domain name is registered with Foshan YiDong Network Co., LTD and that Respondent is the current registrant of the name. Foshan YiDong Network Co., LTD has verified that Respondent is bound by the Foshan YiDong Network Co., LTD 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 9, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of December 30, 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@harley-jackets.com. Also on December 9, 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 January 3, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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.
Pursuant to Rule 11(a), the 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s < harley-jackets.com > domain name, the domain name at issue, is confusingly similar to Complainant’s HARLEY mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, H-D U.S.A., LLC, has manufactured, advertised, and sold motorcycles under the HARLEY-DAVIDSON trademark and trade name and is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the HARLEY mark (e.g., Reg. No. 1,352,679, registered August 6, 1985). The domain name <harley-jackets.com> is confusingly similar to Complainant’s HARLEY mark because it is comprised of Complainant’s mark and a generic term (“jackets”). Also, UDRP panels have consistently held that both hyphens (whether omitted or added) and generic top-level domains (“gTLD”) such as “.com” are irrelevant to confusing similarity analysis. Respondent is not and has not been commonly known by the domain name.
Respondent’s registration and use of the domain name for a commercial website offering counterfeit HARLEY products does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Respondent disrupts Complainant’s business by offering of counterfeit HARLEY products and unfairly competing with Complainant’s own offering of genuine HARLEY products. Respondent uses the domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant and its famous HARLEY mark as to the source, sponsorship, affiliation, and/or endorsement of Respondent’s website and the products offered therein. There is no question that Respondent registered the domain name with knowledge of Complainant’s rights in its famous HARLEY mark given the international fame of Complainant’s HARLEY mark and Respondent’s offering of counterfeit HARLEY products.
Respondent registered the <harley-jackets.com> domain name on March 13, 2013.
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 manufactured, advertised, and sold motorcycles under the HARLEY trademark and trade name and is the owner of trademark registrations with the USPTO for the HARLEY mark (e.g., Reg. No. 1,352,679, registered August 6, 1985). Although Respondent resides and operates in China, Policy ¶ 4(a)(i) does not require Complainant to register its mark in the country in which Respondent resides, so long as it can establish rights in the mark in some jurisdiction. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Consequently, Complainant’s registration of the HARLEY mark with the USPTO sufficiently proves its rights in the mark pursuant to Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Respondent’s <harley-jackets.com> domain name is confusingly similar to Complainant’s HARLEY mark because it is comprised of Complainant’s mark and a generic term (“jackets”). Respondent’s addition of a generic term to Complainant’s mark is irrelevant to a confusing similarity analysis. See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element). UDRP panels have consistently held that both hyphens (whether omitted or added) and gTLD such as “.com” are irrelevant to confusing similarity analysis. Accordingly, Respondent’s addition of a hyphen and a gTLD is inconsequential to a Policy ¶ 4(a)(i) determination. See 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).”). The Panel finds that Respondent’s <harley-jackets.com> domain name is confusingly similar to the HARLEY mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then 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 interest 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.”).
Respondent is not and has not been commonly known by the <harley-jackets.com> domain name. There is no evidence in the record, including the WHOIS information, to demonstrate that Respondent is commonly known by the domain name. The WHOIS information for the disputed domain names lists “Zhang Jia Jing” as the registrant. Complainant asserts that Respondent is not a licensee or authorized dealer of Complainant, and Respondent is not authorized to register or use the domain name or Complainant’s HARLEY mark. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel concluded that 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 respondent was commonly known by the domain names, and complainant had not authorized respondent to register a domain name containing its registered mark. Thus, the Panel finds that Respondent is not commonly known by the <harley-jackets.com> domain name pursuant to Policy ¶ 4(c)(ii).
Respondent’s registration and use of the <harley-jackets.com> domain name for a commercial website offering counterfeit HARLEY products does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Respondent’s disputed domain name links to a website that evidently offers counterfeit clothing. Prior panels have concluded that a respondent’s use of a website to sell counterfeit items is not a bona fide offering of goods or services, or a 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). Therefore, the Panel determines that Respondent is not using the <harley-jackets.com> domain name for a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use, because Respondent’s offerings are counterfeits of the legitimate HARLEY mark-bearing goods.
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent disrupts Complainant’s business by offering of counterfeit HARLEY products and unfairly competes with Complainant’s own offering of genuine HARLEY products. Respondent’s <harley-jackets.com> domain name links to a webpage purporting to sell counterfeit clothing. In Juicy Couture, Inc. v. Chinasupply, FA 1222544 (Nat. Arb. Forum Oct. 13, 2008), the panel held 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. Therefore, the Panel determines that Respondent’s use of the <harley-jackets.com> domain name disrupts Complainant’s legitimate business, showing bad faith use and registration under Policy ¶ 4(b)(iii). See 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).
Respondent uses the <harley-jackets.com> domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant and its famous HARLEY mark as to the source, sponsorship, affiliation, and/or endorsement of Respondent’s website and the products offered therein. Respondent’s <harley-jackets.com> domain name resolves to a website that appears to sell counterfeit clothing. Presumably, Respondent financially gains off its sales of counterfeit clothing and items. Therefore, the Panel concludes that Respondent has registered and is using the disputed domain name in bad faith according to Policy ¶ 4(b)(iv). See H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion).
There is no question that Respondent registered the <harley-jackets.com> domain name with knowledge of Complainant’s rights in its famous HARLEY mark given the international fame of Complainant’s HARLEY mark and Respondent’s offering of counterfeit HARLEY products. The Panel finds that, due to Respondent’s use of the disputed domain name to provide counterfeit products, Respondent had actual knowledge of the mark and Complainant's rights. Thus, Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <harley-jackets.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: January 3, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page