H-D U.S.A., LLC v. Alex Pirie / Adventure People
Claim Number: FA1401001540525
Complainant is H-D U.S.A., LLC (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington D.C., USA. Respondent is Alex Pirie / Adventure People (“Respondent”), India, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <harleydavidsonmotorcycleclub.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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 23, 2014; the National Arbitration Forum received payment on January 23, 2014.
On January 24, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <harleydavidsonmotorcycleclub.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 January 24, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 13, 2014 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@harleydavidsonmotorcycleclub.com. Also on January 24, 2014, 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 February 17, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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.
Complainant
a) Complainant manufactures, advertises, and sells motorcycles. Complainant also sells a full array of motorcycle parts and accessories, apparel, and other products and services under the HARLEY-DAVIDSON mark. In 2012, Complainant had worldwide sales in excess of $5.5 billion. Complainant also offers motorcycle-related rental, travel and tour, and membership services.
b) Complainant has rights in the HARLEY-DAVIDSON mark, used in connection with motorcycles. Complainant owns registrations for the HARLEY-DAVIDSON mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,078,871 registered December 6, 1977).
c) Respondent’s <harleydavidsonmotorcycleclub.com> domain name is confusingly similar to Complainant’s HARLEY-DAVIDSON mark. The disputed domain name includes Complainant’s mark in its entirety with the omission of the hyphen. The disputed domain name also includes the generic terms “motorcycle” and “club,” as well as the generic top-level domain (“gTLD”) “.com.”
d) Respondent does not have any rights or legitimate interests in the <harleydavidsonmotorcycleclub.com> domain name.
a. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its HARLEY-DAVIDSON mark in any way.
b. Respondent is using the <harleydavidsonmotorcycleclub.com> domain name to operate a competing motorcycle-related service as well as other unrelated services. Respondent is offering motorcycle-related rental, travel and tour services relating to Complainant’s competitors Honda and Royal Enfield, and Respondent is also offering unrelated car rental travel and tour services. Id.
e) Respondent registered and is using the <harleydavidsonmotorcycleclub.com> domain name in bad faith.
a. Respondent is disrupting Complainant’s business by offering directly competing services. Respondent is offering motorcycle-related rental, travel and tour services relating to Complainant’s competitors Honda and Royal Enfield.
b. Respondent is intentionally attempting to attract Internet users for Respondent’s own commercial gain by creating a likelihood of confusion with Complainant’s HARLEY-DAVIDSON mark. Respondent’s website is offering motorcycle-related rental, travel and tour services relating to Complainant’s competitors Honda and Royal Enfield, and Respondent is also offering unrelated car rental travel and tour services.
c. Respondent had knowledge of Complainant’s HARLEY-DAVIDSON mark prior to registering the <harleydavidsonmotorcycleclub.com> domain name in bad faith for several reasons. First, Complainant’s mark has achieved international fame. Second, Complainant does business in India where Respondent is located. Third, the terms “motorcycle” and “club” that exist in the disputed domain name refer to Complainant’s main product and highly popular membership service. Fourth, Respondent is using the disputed domain name to compete directly with Complainant.
Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 contends it has rights in the HARLEY-DAVIDSON mark, used in connection with motorcycles. Complainant asserts it owns registrations for the HARLEY-DAVIDSON mark with the USPTO (e.g., Reg. No. 1,078,871 registered December 6, 1977). The Panel notes that Respondent resides or operates in a different country than that in which Complainant holds its trademark registrations; however, past panels have determined that a complainant need not own a registration in a respondent’s country of operation, and it is sufficient that a complainant own a registration in a different country. 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; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant has rights in the HARLEY-DAVIDSON mark within the meaning of Policy ¶ 4(a)(i) because Complainant has a valid trademark registration for its mark with the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Complainant alleges that Respondent’s <harleydavidsonmotorcycleclub.com> domain name is confusingly similar to Complainant’s HARLEY-DAVIDSON mark. Complainant notes that the disputed domain name includes Complainant’s mark in its entirety with the omission of the hyphen. Complainant states that the disputed domain name also includes the generic terms “motorcycle” and “club,” as well as the generic top-level domain (“gTLD”) “.com.” First, the Panel finds that the addition of generic terms to a trademark in a disputed domain name does not sufficiently differentiate the disputed domain name from the trademark. See Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it). Next, the Panel finds that the addition of a gTLD and removal of a hyphen in the trademark are irrelevant for the purposes of confusing similarity analysis. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Therefore, the Panel finds that Respondent’s <harleydavidsonmotorcycleclub.com> domain name is confusingly similar to Complainant’s HARLEY-DAVIDSON mark within the meaning of Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel is reminded that 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.”).
Complainant claims Respondent does not have any rights or legitimate interests in the <harleydavidsonmotorcycleclub.com> domain name. Complainant states that Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its HARLEY-DAVIDSON mark in any way. The Panel notes that the WHOIS record for the disputed domain name lists “Alex Pirie” as the domain name registrant and “Adventure People” as the registrant organization. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on record as whole in determining whether the respondent is commonly known by the disputed domain name. 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). Therefore, because Respondent was not authorized by Complainant to use the HARLEY-DAVIDSON mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the <harleydavidsonmotorcycleclub.com> domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent is using the <harleydavidsonmotorcycleclub.com> domain name to operate a competing motorcycle-related service as well as other unrelated services. Complainant asserts that Respondent is offering motorcycle-related rental, travel and tour services relating to Complainant’s competitors Honda and Royal Enfield, and Respondent is also offering unrelated car rental travel and tour services. Past panels have found that using a confusingly similar domain name to operate a competing business does not demonstrate a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site). Additionally, using a confusingly similar domain name for commercial use unrelated to a complainant has also been deemed to fail the tests for Policy ¶ 4(c)(i) and (iii). See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”). Therefore, the Panel finds that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because Respondent is using the <harleydavidsonmotorcycleclub.com> domain name to operate a competing motorcycle-related service as well as other unrelated services.
Complainant has proven this element.
Complainant contends Respondent registered and is using the <harleydavidsonmotorcycleclub.com> domain name in bad faith. Complainant alleges that Respondent is disrupting Complainant’s business by offering directly competing services. Complainant states that Respondent is offering motorcycle-related rental, travel and tour services relating to Complainant’s competitors Honda and Royal Enfield. Previous panels have found that operating a competing business through a confusingly similar domain name constitutes a bad faith disruption pursuant to Police ¶ 4(b)(iii). See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)). Therefore, the Panel finds that Respondent registered and is using the <harleydavidsonmotorcycleclub.com> domain name in bad faith under Policy ¶ 4(b)(iii) because Respondent is disrupting Complainant’s business by offering directly competing services.
Complainant claims Respondent is intentionally attempting to attract Internet users for Respondent’s own commercial gain by creating a likelihood of confusion with Complainant’s HARLEY-DAVIDSON mark. Complainant states that Respondent’s website is offering motorcycle-related rental, travel and tour services relating to Complainant’s competitors Honda and Royal Enfield, and Respondent is also offering unrelated car rental travel and tour services. Previous panels have found that using a confusingly similar domain name for either a competing use or an unrelated commercial use demonstrates bad faith under Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); see also Hancock Fabrics, Inc. v. Active Advantage, Inc., FA 204111 (Nat. Arb. Forum Dec. 4, 2003) (“Respondent’s use of the <hancockfabric.com> domain name, a domain name confusingly similar to Complainant’s HANCOCK FABRICS mark, to redirect Internet traffic to a website that provides a selection of jokes demonstrates Respondent’ bad faith use of the disputed domain name because Respondent has created a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of Respondent’s website, which evidences bad faith registration and use under Policy ¶ 4(b)(iv).”). Therefore, the Panel finds that Respondent registered and is using the <harleydavidsonmotorcycleclub.com> domain name in bad faith under Policy ¶ 4(b)(iv) because Respondent is using the disputed domain name to operate a competing motorcycle-related service as well as other unrelated services.
Complainant believes Respondent had knowledge of Complainant’s HARLEY-DAVIDSON mark prior to registering the <harleydavidsonmotorcycleclub.com> domain name in bad faith for several reasons. First, Complainant states that it mark has achieved international fame. Second, Complainant notes that it does business in India where Respondent is located. Third, Complainant points out that the terms “motorcycle” and “club” that exist in the disputed domain name refer to Complainant’s main product and highly popular membership service. Fourth, Complainant states that Respondent is using the disputed domain name to compete directly with Complainant. The Panel notes that constructive notice is generally regarded as insufficient to support a finding of bad faith. See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith). The Panel determines Respondent was well aware of Complainant’s mark at the time Respondent registered the disputed domain name and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See GO Local NC Farms, LLC v. Paul Darcy, FA 1426087 (Nat. Arb. Forum March 13, 2012) (“[A] finding of bad faith hinges squarely on the probability that it was more likely than not that [the] [r]espondent knew of, and targeted, [the] [c]omplainant’s trade mark.”); see also 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).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <harleydavidsonmotorcycleclub.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: February 21, 2014
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