H-D U.S.A., LLC v. zhangzongze / sweden / zhang jinxian / canada goose / harleydavidson / harley davidson
Claim Number: FA1410001587625
Complainant is H-D U.S.A., LLC (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is zhangzongze / sweden / zhang jinxian / canada goose / harleydavidson / harley davidson (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <harleydavidsonjackor.com>, <harleydavidsonparka.com>, and <harleydavidsonfur.com>, registered with eName Technology 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 30, 2014; the National Arbitration Forum received payment on October 30, 2014. The Complaint was received in both English and Chinese.
On October 31, 2014, eName Technology Co., Ltd. confirmed by e-mail to the National Arbitration Forum that the <harleydavidsonjackor.com>, <harleydavidsonparka.com>, and <harleydavidsonfur.com>, domain names 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 October 31, 2014, the Forum served the Chinese language Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 20, 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@harleydavidsonjackor.com, postmaster@harleydavidsonparka.com, and postmaster@harleydavidsonfur.com. Also on October 31, 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 December 1, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm, 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
i) Complainant owns the HARLEY-DAVIDSON mark through registration with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,078,871, registered Dec. 6, 1977). Complainant uses the mark in connection with motorcycles, parts, accessories, and apparel. The <harleydavidsonjackor.com>, <harleydavidsonparka.com>, and <harleydavidsonfur.com> domain names are confusingly similar to the HARLEY-DAVIDSON mark as the names are comprised of the mark plus the generic term “jackor” (“jacket” in Swedish), “parka,” or “fur,” respectively.
ii) Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names as evidenced by the WHOIS records. Respondent is not using the disputed domain names for a bona fide offering, or for a legitimate noncommercial or fair use. Respondent uses the disputed domain names in connection with a commercial website offering counterfeit HARLEY-DAVIDSON branded products. Respondent attempts to pass itself off as Complainant by using Complainant’s logo in furtherance of the counterfeiting website.
iii) Respondent’s registration constitutes bad faith under Policy ¶ 4(b)(ii) as Respondent registered the domain names in order to prevent Complainant from reflecting its mark, something Respondent has a history of attempting. Further, Respondent’s use of the disputed domain names in connection with a website offering counterfeit HARLEY-DAVIDSON branded products serves to disrupt Complainant’s own business, and therefore invokes Policy ¶ 4(b)(iii). In addition, Respondent’s efforts to pass itself off as Complainant in order to profit from a website offering counterfeit products evinces Policy ¶ 4(b)(iv) bad faith. Finally, Respondent had actual knowledge of Complainant and its HARLEY-DAVIDSON mark as demonstrated by Respondent’s use of the disputed domain names with a website offering counterfeit goods bearing the HARLEY-DAVIDSON name.
B. Respondent
Respondent did not submit a response. Respondent’s earliest registration of a domain name now in dispute was on September 16, 2014.
Complainant established that it had rights in the mark contained in the disputed domain names. Each of the disputed domain names is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain names.
Respondent registered and used the disputed 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.
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.”).
Preliminary Issue 1: 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” 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 claims that due to corresponding contact information on the WHOIS records, and the use of the disputed domain names in connection with similar websites selling counterfeit HARLEY-DAVIDSON products, the same Respondent is responsible for all three domain names. See Compl., at Attached Ex. 1. The Panel notes that the WHOIS record for the <harleydavidsonjackor.com> indicates “zhangzongze / sweden” as the current registrant of record and that the WHOIS for <harleydavidsonparka.com> previously listed this same “zhangzongze / sweden” as registrant. The Panel also notes that the phone number, fax number, and e-mail (customer-server@hotmail.com) associated with the <harleydavidsonjackor.com> and <harleydavidsonparka.com> domain names were all previously identical. Regarding the <harleydavidsonfur.com> domain name, the Panel sees that the WHOIS record lists the same e-mail address “customer-server@hotmail.com.”
Therefore, the Panel finds that Complainant has sufficiently presented evidence demonstrating that the listed entities are jointly controlled by a single Respondent who is using multiple aliases.
Preliminary Issue 2: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Chinese, thereby making Chinese the language of the proceedings. 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, concludes that the remainder of the proceedings shall be conducted in English.
Complainant owns the HARLEY-DAVIDSON mark through registration with the USPTO (e.g., Reg. No. 1,078,871, registered Dec. 6, 1977). Complainant uses the mark in connection with motorcycles, parts, accessories, and apparel. The Panel finds that Complainant’s trademark registration with the USPTO sufficiently demonstrates Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i). See Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“The Panel finds that Complainant has established trademark rights in the CLEAR BLUE marks through introduction of the certificates for its U.S. registration for those trademarks”).
Complainant argues that the <harleydavidsonjackor.com>, <harleydavidsonparka.com>, and <harleydavidsonfur.com> domain names are confusingly similar to the HARLEY-DAVIDSON mark as the names are comprised of the mark plus the generic terms “jackor” (“jacket” in Swedish), “parka,” or “fur,” respectively. The Panel notes that the domain names also remove the hyphen in the mark, and affix the generic top-level domain (“gTLD”) “.com,” but determines that such alterations are irrelevant to the Policy ¶ 4(a)(i) analysis. See 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, and added a gTLD, is confusingly similar to the complainant's mark). The Panel finds that the additions of the terms “jackor,” “parka,” or “fur,” all relate to Complainant’s business and therefore actually serve to increase the likelihood of confusion. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”). Accordingly, the Panel finds the <harleydavidsonjackor.com>, <harleydavidsonparka.com>, and <harleydavidsonfur.com> domain names are confusingly similar to the HARLEY-DAVIDSON mark pursuant to Policy ¶ 4(a)(i).
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.”).
In seeking its prima facie case, Complainant asserts that Respondent is not commonly known by the disputed domain names as evidenced by the WHOIS records. While the WHOIS record for <harleydavidsonfur.com> identifies “harleydavidson / harley davidson” as registrant, the panel agrees that such self-serving and unsubstantiated evidence is insufficient to sway Policy ¶ 4(c)(ii) where there is no additional evidence to corroborate the association. See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that, although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name). Accordingly, the Panel determines that the available record offers no basis to find Respondent commonly known by the <harleydavidsonjackor.com>, <harleydavidsonparka.com>, and <harleydavidsonfur.com> domain names pursuant to Policy ¶ 4(c)(ii).
Complainant further argues that Respondent is not using the disputed domain names for a bona fide offering, or for a legitimate noncommercial or fair use. Instead, Complainant claims Respondent uses the disputed domain names in connection with a commercial website offering counterfeit HARLEY-DAVIDSON branded products. See Compl., at Attached Ex. 2. Complainant notes that Respondent further attempts to pass itself off as Complainant by using Complainant’s HARLEY-DAVIDSON logo on the resolving page. Id. The Panel agrees that Respondent’s efforts to sell counterfeit products under the guise of Complainant’s logo and mark amounts to neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Nokia Corp. v. Eagle, FA 1125685 (Nat. Arb. Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)); 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).
Complainant argues that Respondent’s registration constitutes bad faith under Policy ¶ 4(b)(ii) as Respondent registered the domain names in order to prevent Complainant from reflecting its mark in domain names, something Respondent has a history of attempting. The Panel notes that Complainant has included a copy of a previous UDRP decision against a “Zhangjinxian / wto” where the panel ordered the transfer of <harleydavidsonbrands.com> as the domain name was used to sell counterfeit HARLEY-DAVIDSON branded jackets. The Panel agrees that the case relates to the same Respondent here, and that Respondent’s history of bad faith suggests Respondent’s bad faith in the instant case pursuant to Policy ¶ 4(b)(ii), especially given the presence of three domain names in this proceeding that incorporate the HARLEY-DAVIDSON mark. See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations); Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)).
Further, Complainant argues that Respondent’s use of the disputed domain names in connection with a website offering counterfeit HARLEY-DAVIDSON branded products serves to disrupt Complainant’s own business, and therefore invokes Policy ¶ 4(b)(iii). See Compl., at Attached Ex. 2. In Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Nat. Arb. Forum Mar. 5, 2008), the panel concluded that the complainant’s business was disrupted by the respondent’s registration and use of the disputed domain name for the purpose of selling counterfeit products, and therefore found evidence of Policy ¶ 4(b)(iii) bad faith. At present, the Panel agrees that Respondent’s use of the disputed domain names disrupts Complainant’s business by offering counterfeit HARLEY-DAVIDSON products that compete with Complainant’s own genuine offerings. Therefore, the Panel finds Policy ¶ 4(b)(iii) bad faith.
In addition, Complainant claims that Respondent’s efforts to pass itself off as Complainant in order to profit from a website offering counterfeit products evinces Policy ¶ 4(b)(iv) bad faith. The Panel agrees that Respondent’s efforts to profit through a counterfeiting scheme evinces bad faith pursuant to Policy ¶ 4(b)(iv), especially given Respondent’s reliance on Complainant’s logo on the at-issue website. 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); Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
Finally, Complainant argues that Respondent had actual knowledge of Complainant and its HARLEY-DAVIDSON mark as demonstrated by Respondent’s use of the disputed domain names with a website offering counterfeit goods bearing the HARLEY-DAVIDSON name. In See Mycoskie, LLC v. William Kelly, FA 1488105 (Nat. Arb. Forum Apr. 23, 2013), the panel wrote, “While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to Respondent’s use of the domain name to sell counterfeit versions of Complainant’s products, Respondent had actual knowledge of the mark and Complainant's rights.” The Panel agrees that Respondent had actual knowledge of Complainant’s mark at the time of domain name registrations, and therefore finds evidence of bad faith pursuant to Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <harleydavidsonjackor.com>, <harleydavidsonparka.com>, and <harleydavidsonfur.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: December 10, 2014
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