H-D U.S.A., LLC v. Tim Gaudreau / HDNA #NEQ 3367038133 / SoftLayer Domains / Softlayer Domain Privacy
Claim Number: FA1403001547601
Complainant is H-D U.S.A., LLC (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington, D.C., USA. Respondent is Tim Gaudreau / HDNA #NEQ 3367038133 / SoftLayer Domains / Softlayer Domain Privacy (“Respondent”), represented by Tim Gaudreau, Quebec, Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <harley-america.com>, <harleyamerica.com>, <harleyquebec.com>, <hdnorthamerica.com>, and <hdnorthamerica.net>, registered with Everyones Internet, Ltd. d/b/a SoftLayer.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 7, 2014; the National Arbitration Forum received payment on March 7, 2014.
On March 11, 2014, Everyones Internet, Ltd. dba SoftLayer confirmed by e-mail to the National Arbitration Forum that the <harley-america.com>, <harleyamerica.com>, <harleyquebec.com>, <hdnorthamerica.com>, and <hdnorthamerica.net> domain names are registered with Everyones Internet, Ltd. dba SoftLayer and that Respondent is the current registrant of the names. Everyones Internet, Ltd. d/b/a SoftLayer has verified that Respondent is bound by the Everyones Internet, Ltd. dba SoftLayer 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 13, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 2, 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@harley-america.com, postmaster@harleyamerica.com, postmaster@harleyquebec.com, postmaster@hdnorthamerica.com, and postmaster@hdnorthamerica.net. Also on March 13, 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.
A timely Response was received and determined to be complete on April 1, 2014.
On April 8, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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’s Contentions
Policy ¶ 4(a)(i)
Policy ¶ 4(a)(ii)
Policy ¶ 4(a)(iii)
Respondent had to have had knowledge of Complainant’s rights when registering the <harley-america.com>, <harleyamerica.com>, <harleyquebec.com>, <hdnorthamerica.com>, and <hdnorthamerica.net> domain names. It follows logically that Respondent has to know of Complainant’s rights when Respondent uses the domain names to sell unauthorized H-D and HARLEY-DAVIDSON goods.
B. Respondent’s Contentions
Policy ¶ 4(a)(ii)
Policy ¶ 4(a)(iii)
C. Complainant’s Additional Submissions
Respondent received at least two more cease and desist letters from Complainant in 2012.
1. Respondent’s <harley-america.com>, <harleyamerica.com>, <harleyquebec.com>, <hdnorthamerica.com>, and <hdnorthamerica.net> domain names are confusingly similar to Complainant’s HARLEY-DAVIDSON mark.
2. Respondent does not have any rights or legitimate interests in the <harley-america.com>, <harleyamerica.com>, <harleyquebec.com>, <hdnorthamerica.com>, and <hdnorthamerica.net> domain names.
3. Respondent registered or used the <harley-america.com>, <harleyamerica.com>, <harleyquebec.com>, <hdnorthamerica.com>, and <hdnorthamerica.net> domain names 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
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant contends that all of the domain names are interlinked in some way and that all of them appear to support the same business operations. Furthermore, Respondent itself submits that it was using the domain names as part of its business.
The panel finds the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases.
Identical and/or Confusingly Similar
Complainant states that it uses the H-D and HARLEY-DAVIDSON marks in connection with its motorcycle products. Complainant notes that it has registered both the HARLEY-DAVIDSON (e.g., Reg. No. 1,078,871 registered Dec. 6, 1977) and H-D (e.g., Reg. No. 1,775,905 registered June 8, 1993) with the USPTO. The Panel finds that Complainant’s rights in the marks are satisfied through its showing of longstanding USPTO registration. See, e.g., Scripps Networks, LLC v. chen wenjie, FA 1523127 (Nat. Arb. Forum Nov. 12, 2013) (“The Panel finds that Complainant’s USPTO registration establishes Complainant’s rights in the mark under Policy ¶ 4(a)(i), even despite the fact that Respondent appears to reside out of the United States.”).
Complainant further argues that Respondent’s <harley-america.com>, <harleyamerica.com>, <harleyquebec.com>, <hdnorthamerica.com>, and <hdnorthamerica.net> domain names are all confusingly similar to the respective marks. Complainant states that all of the domain names simply add a gTLD and geographic descriptors to the marks. The Panel agrees that neither the introduction of gTLDs or the omission of hyphens is a distinctive alteration under the Policy. 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). The Panel also notes that the <harley-america.com>, <harleyamerica.com>, and <harleyquebec.com> domain names remove the “DAVIDSON” portion of the mark. The Panel determines this deletion does not effect Policy ¶ 4(a)(i) confusing similarity. See Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the complainant’s ASPREY & GARRARD and MISS ASPREY marks). The Panel finds that all of these domain names are confusingly similar to the respective marks under Policy ¶ 4(a)(i) as all the domain names do is attach geographic terms to variants of Complainant’s marks. See Sunkist Growers, Inc. v. S G, D2001-0432 (WIPO May 22, 2001) (finding that the domain names <sunkistgrowers.org>, <sunkistgrowers.net> and <sunkistasia.com> are confusingly similar to the complainant’s registered SUNKIST mark and identical to the complainant’s common law SUNKIST GROWERS mark).
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 argues that Respondent is not known by any of the <harley-america.com>, <harleyamerica.com>, <harleyquebec.com>, <hdnorthamerica.com>, and <hdnorthamerica.net> domain names. Complainant has not granted Complainant any interest to use its marks in a way that would allow Respondent to be known by these names. The Panel notes that Respondent identifies as “Tim Gaudreau representing hdnorthamerica.com, Yolande Marcoux, Viateur Bouchard.” The Panel agrees that Respondent has provided minimal evidence to suggest that it is in fact commonly known as the <hdnorthamerica.com> domain name amongst consumers, and as to the other domain names there is no allegation of a relationship to the names. As such, the Panel declines to find that Respondent is commonly known by any of the disputed domain names under Policy ¶ 4(c)(ii). See, e.g., True Value Co. v. Andrew Bucklin d/ba True Value Web, FA 1497691 (Nat. Arb. Forum June 13, 2013) (“The Panel is hesitant to recognize Respondent’s company as being commonly known by the disputed domain name when he has demonstrated little evidence of that company’s existence other than . . . the disputed domain name. . . every respondent in a UDRP proceeding could claim a legitimate interest in a disputed domain name merely by virtue of ownership of that name.”).
Complainant argues that Respondent’s <harley-america.com>, <harleyamerica.com>, <harleyquebec.com>, <hdnorthamerica.com>, and <hdnorthamerica.net> domain names are all used to promote a commercial website for the sale of H-D and HARLEY-DAVIDSON goods. Complainant notes that Respondent is not an authorized dealer of Complainant’s goods. The Panel notes that the evidence suggests, and Respondent admits, that the domain names are used to send Internet users to one of two domain names that house an online research database for the sale of “new and used harley motorcycles.” See Compl., at Attached Ex. 2. The Panel agrees that as Complainant claims to have never permitted such activity, Respondent lacks a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use, with respect to all of the disputed domain names. See Caterpillar Inc. v. Huth, FA 169056 (Nat. Arb. Forum Sept. 2, 2003) (“Respondent lacks rights in the disputed domain names because Respondent competes with Complainant by selling Complainant's used parts without a license from Complainant to do so.”).
Complainant further argues that Respondent utilizes the disputed domain names to profit from click-through hyperlink advertisements. The Panel notes that several hyperlink advertisements, such as “J&P CYCLES” appear on the disputed domain names’ ultimate landing page. See Compl., at Attached Ex. 2. The Panel finds that the promotion of related motorcycle dealerships and repair businesses—businesses not approved of by Complainant—goes towards a finding that Respondent lacks rights pursuant to Policy ¶ 4(a)(ii). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)).
Complainant claims that Respondent’s registration of all of the <harley-america.com>, <harleyamerica.com>, <harleyquebec.com>, <hdnorthamerica.com>, and <hdnorthamerica.net> domain names presents an inference of Policy ¶ 4(b)(ii) bad faith. The Panel here agrees that Respondent’s decision to register all of these domain names is evidence that Respondent may have been motivated to prevent Complainant’s registration of the domain names—evidence of Policy ¶ 4(b)(ii) bad faith. See EPA European Pressphoto Agency B.V. v. Wilson, D2004-1012 (WIPO Feb. 9, 2005) (finding that the respondent’s registration of the <epa-photo.com>, <epaphoto.com> and <epaphotos.com> domain names was sufficient to constitute a pattern pursuant to Policy ¶ 4(b)(ii)).
Complainant further notes that Respondent is disrupting Complainant’s business through the <harley-america.com>, <harleyamerica.com>, <harleyquebec.com>, <hdnorthamerica.com>, and <hdnorthamerica.net> domain names. The Panel agrees that Respondent is using the domain name to promote the sale of used motorcycles, namely HARLEY-DAVIDSON motorcycles. The Panel believes the evidence does not support a finding that Respondent’s actions were authorized. The Panel finds such conduct as tantamount to Policy ¶ 4(b)(iii) bad faith. See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant).
Complainant next claims that Respondent is using the <harley-america.com>, <harleyamerica.com>, <harleyquebec.com>, <hdnorthamerica.com>, and <hdnorthamerica.net> domain names in a manner that is likely to cause confusion amongst Internet users. Complainant argues that these Internet users may believe the goods sold by Respondent are authorized by Complainant, when in reality the consumer buys unauthorized goods. The Panel notes that Respondent takes efforts to make the disputed domain names’ ultimate landing page resemble the color and design scheme of some of Complainant’s own websites and products. See Compl., at Attached Ex. 2. The Panel finds that Internet users are likely to be confused as to Complainant’s possible involvement in this online commercial resale establishment. The Panel finds Policy ¶ 4(b)(iv) bad faith. See Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Complainant argues that Respondent had to have had knowledge of Complainant’s rights when registering the <harley-america.com>, <harleyamerica.com>, <harleyquebec.com>, <hdnorthamerica.com>, and <hdnorthamerica.net> domain names. Complainant believes that it follows logically that Respondent has to know of Complainant’s rights when Respondent uses the domain names to sell unauthorized H-D and HARLEY-DAVIDSON goods. As such, the Panel agrees that Respondent actually knew of Complainant’s rights in the mark and as such Respondent is liable of bad faith under Policy ¶ 4(a)(iii). See, e.g., Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize “constructive notice” as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
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-america.com>, <harleyamerica.com>, <harleyquebec.com>, <hdnorthamerica.com>, and <hdnorthamerica.net> domain names be TRANSFERRED from Respondent to Complainant
John J. Upchurch, Panelist
Dated: April 18, 2014
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