H-D U.S.A., LLC v. Zhangjinxian / wto
Claim Number: FA1404001553253
Complainant is H-D U.S.A., LLC (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is Zhangjinxian / wto (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <harleydavidsonbrands.com>, registered with eName Technology Co. Ltd.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 8, 2014; the National Arbitration Forum received payment on April 8, 2014. The Complaint was received in both Chinese and English.
On April 15, 2014, eName Technology Co.,Ltd. confirmed by e-mail to the National Arbitration Forum that the <harleydavidsonbrands.com> domain name(s) is/are registered with eName Technology Co.,Ltd. and that Respondent is the current registrant of the names. eName Technology Co.,Ltd. has verified that Respondent is bound by the eName Technology 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 April 16, 2014, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of May 6, 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@harleydavidsonbrands.com. Also on April 16, 2014, 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 May 8, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant manufactures and sells motorcycles, parts, accessories, apparel, and other related products and services. Complainant has been in business since 1903, and it had sales of over $5.5 billion in 2012.
Complainant has rights in the HARLEY-DAVIDSON mark, used in connection the manufacture and sale of motorcycles and related products and services. 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).
Respondent’s <harleydavidsonbrands.com> domain name is confusingly similar to Complainant’s HARLEY-DAVIDSON mark. The disputed domain name incorporates Complainant’s mark in its entirety while adding the generic term “brands” and the generic top-level domain “.com.”
Respondent does not have any rights or legitimate interests in the <harleydavidsonbrands.com> domain name. 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. Respondent is using the <harleydavidsonbrands.com> domain name to offer counterfeit leather jackets that unfairly compete with Complainant’s own offering of genuine HARLEY-DAVIDSON products. Respondent is attempting to pass itself off as Complainant by offering counterfeit leather jackets on a confusingly similar domain name that uses Complainant’s logo for the HARLEY-DAVIDSON mark.
Respondent registered and is using the <harleydavidsonbrands.com> domain name in bad faith. Respondent is disrupting Complainant’s business by selling counterfeit leather jackets and unfairly compete with Complainant’s genuine HARLEY-DAVIDSON leather jackets. Respondent is attempting to intentionally attract Internet users to the <harleydavidsonbrands.com> domain name for Respondent’s own commercial gain by creating a likelihood of confusion with Complainant’s HARLEY-DAVIDSON mark. Respondent is using the disputed domain name to offer counterfeit leather jackets. Respondent’s unauthorized use of the HARLEY-DAVIDSON logo on the resolving website demonstrates that Respondent is attempting pass itself of as Complainant. Respondent had knowledge of Complainant’s HARLEY-DAVIDSON mark prior to registering the <harleydavidsonbrands.com> domain name because Respondent is offering counterfeit HARLEY-DAVIDSON products and Complainant’s mark has achieved international fame.
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 <harleydavidsonbrands.com> domain name to address a commercial website displaying Complainant’s logo and offering counterfeit HARLEY-DAVIDSON jackets.
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 name is confusingly similar to a trademark in which Complainant has rights.
Complainant owns trademark rights in the HARLEY-DAVIDSON mark through its registration thereof with the USPTO. It is irrelevant that Respondent may operate outside the jurisdiction of the trademark registrar. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also, Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Respondent’s <harleydavidsonbrands.com> domain name contains Complainant’s entire HARLEY-DAVIDSON trademark, less its hyphen, suffix by the generic term “brands” and terminated with a necessary top-level domain name, here “.com”. The addition of the generic term ‘brands” to Complainant’s mark does not differentiate the domain name from the mark, and the removal of the hyphen and inclusion of a necessary top-level domain name is immaterial to the Panel’s analysis. Therefore, the Panel concludes that the at-issue domain name is confusingly similar to Complainant’s HARLEY-DAVIDSON trademark pursuant to Policy ¶4(a)(i). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to the complainant’s mark); see also, Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June 19, 2000) (holding that the domain name <cspan.net>, which omitted the hyphen from the trademark spelling, C-SPAN, is confusingly similar to the complainant's mark); see also, Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. 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 the at-issue domain name.
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.
WHOIS information for the at-issue domain name lists “zhangjinxian” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <harleydavidsonbrands.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
The <harleydavidsonbrands.com> domain name addresses a website that markets counterfeit HARLEY-DAVIDSON branded jackets. Respondent’s use of the domain name to sell counterfeit products is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the at-issue domain name under Policy ¶ 4(c)(iii). See Keihin Corp. v. Youli Ltd., FA 1106190 (Nat. Arb. Forum Dec. 18, 2007) (finding no rights and legitimate interests when the respondent sold counterfeit versions of the complainant’s products in competition with the complainant’s business).
Given the forgoing, Complainant satisfies its initial burden and absent evidence to the contrary conclusively demonstrates that Respondent lacks both rights and interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶ 4(b) bad faith circumstances are present and there is additional non-Policy ¶ 4(b) evidence from which the Panel may also conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Respondent uses the confusingly similar <harleydavidsonbrands.com> domain name as part of its scheme to profit from the online sale of counterfeit HARLEY-DAVIDSON branded jackets thereby unfairly competing with Complainant. Using the domain name in this manner demonstrates Respondent’s bad faith pursuant to Policy ¶4(b)(iv). See H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009) (finding that respondent’s selling of counterfeit products creates the likelihood of confusion as to complainant’s affiliation with the disputed domain name and allows respondent to profit from that confusion). Additionally, Respondent’s use of the domain name to compete with Complainant is disruptive to Complainant’s business and demonstrates bad faith under Policy ¶4(b)(iii). See Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (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). Furthermore, Respondent’s unauthorized display of Complainant’s logo on the at-issue website indicates that Respondent is attempting to pass itself off as Complainant thereby further suggesting Respondent’s bad faith under the Policy.
Finally, considering the fame associated with Complainant’s mark, Respondent’s brandishing of Complainant’s logo on the <harleydavidsonbrands.com> website and Respondent’s practice of using 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 at-issue domain name. 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 <harleydavidsonbrands.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 12, 2014
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