H-D U.S.A., LLC v. Andwi Valentine / andwivalentine.com
Claim Number: FA1404001556495
Complainant is H-D U.S.A., LLC (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington D.C., USA. Respondent is Andwi Valentine / andwivalentine.com (“Respondent”), Indonesia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tokoharleydavidson.com>, registered with TUCOWS, INC.
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 29, 2014; the National Arbitration Forum received payment on April 29, 2014.
On April 30, 2014, TUCOWS, INC. confirmed by e-mail to the National Arbitration Forum that the <tokoharleydavidson.com> domain name is registered with TUCOWS, INC. and that Respondent is the current registrant of the name. TUCOWS, INC. has verified that Respondent is bound by the TUCOWS, INC. 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 May 1, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 21, 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@tokoharleydavidson.com. Also on May 1, 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 May 22, 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, H-D U.S.A., LLC, has manufactured, advertised, and sold motorcycles under the HARLEY-DAVIDSON trademark and trade name. Complainant has offered a full array of motorcycle parts and accessories and many additional products and services under the HARLEY-DAVIDSON mark for decades.
Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the HARLEY-DAVIDSON (e.g., Reg. No. 1,078,871, registered December 6, 1977).
The <tokoharleydavidson.com> domain name is comprised of Complainant’s mark in its entirety and a generic term, “toko,” which means “store” in Indonesian.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not and has not been commonly known by the disputed domain name. Respondent is using the disputed domain name to offer counterfeit products. Respondent is trying to pass itself off as Complainant.
Respondent registered and is using the disputed domain name in bad faith. Respondent disrupts Complainant’s business by offering counterfeit HARLEY-DAVIDSON products. Respondent uses the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant. Respondent’s use of the disputed domain name constitutes an attempt to pass itself off as Complainant.
Respondent registered the disputed domain name with knowledge of Complainant’s rights in the HARLEY-DAVIDSON mark.
B. Respondent
Although Respondent failed to submit a formal Response in this proceeding, Respondent submitted an email to the dispute resolution provider stating: “1. I am not the owner of the website and the tokoharleydavidson.com. 2. I help the website owner to register the domain. I am not involved in the selling harley davidson products activity. 3. I have tried to contact the owner and they have deactivated the website.”
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 <tokoharleydavidson.com> domain name to address a commercial website offering counterfeit HARLEY-DAVIDSON goods.
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 <tokoharleydavidson.com> domain name contains Complainant’s entire HARLEY-DAVIDSON trademark, less its hyphen, prefixed by the generic term “toko” (meaning “store” in Indonesian), and terminated with a necessary top-level domain name, here “.com”. The addition of the suggestive term ‘toko” 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 “Andwi Valentine / andwivalentine.com” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <tokoharleydavidson.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).
Furthermore, the <tokoharleydavidson.com> domain name addresses a website that markets counterfeit HARLEY-DAVIDSON branded apparel including jackets and t-shirts. 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 <tokoharleydavidson.com> domain name as part of its scheme to profit from the online sale of counterfeit HARLEY-DAVIDSON branded apparel 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 thus demonstrates Respondent’s 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). Further, 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 additionally suggesting Respondent’s bad faith under the Policy. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”).
Finally, considering the fame associated with Complainant’s mark, Respondent’s display of Complainant’s logo on the <tokoharleydavidson.com> website, and Respondent’s use of the domain name to sell counterfeit HARLEY-DAVIDSON 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 <tokoharleydavidson.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 27, 2014
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