H-D U.S.A., LLC v. Janis Vecvanags
Claim Number: FA1503001608165
Complainant is H-D U.S.A., LLC (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington, D.C., USA. Respondent is Janis Vecvanags (“Respondent”), Latvia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xmotoclothes.com>, registered with GoDaddy.com, LLC.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 5, 2015; the Forum received payment on March 5, 2015.
On March 5, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <xmotoclothes.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 March 6, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 26, 2015 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@xmotoclothes.com. Also on March 6, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On April 2, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
1. Respondent’s <xmotoclothes.com> domain name is confusingly similar to Complainant’s MOTORCLOTHES mark.
2. Respondent does not have any rights or legitimate interests in the <xmotoclothes.com> domain name.
3. Respondent registered and uses the <xmotoclothes.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns the MOTORCLOTHES mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,817,659, registered Feb. 24, 2004) as well as through its registration with the European Union’s Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 84,145 registered Nov. 22, 2001). Complainant uses the MOTORCLOTHES mark in connection with its HARLEY-DAVIDSON apparel and other products.
Respondent registered the <xmotoclothes.com> domain name on March 12, 2013, and uses it to resolve to a website that offers counterfeit HARLEY-DAVIDSON products.
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 Panel finds that Complainant’s USPTO registration satisfies Policy ¶4(a)(i), even though Respondent reportedly lives in Latvia. Prior panels have agreed that trademark registrations are sufficient to demonstrate that Complainant has rights in the mark under Policy ¶ 4(a)(i), even when Respondent resides in a different country. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Respondent’s <xmotoclothes.com> domain name contains Complainant’s MOTORCLOTHES mark, omitting the single character “r,” adding the letter prefix “x,” and adding the gTLD “.com.” Past panels have found that omitting a single character does not remove confusing similarity from the mark at issue. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive). Prior panels have also found that adding a single letter to a registered mark does not serve to adequately distinguish a disputed domain name from a registered mark. See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks). Finally, previous panels have held that gTLDs such as “.com” are irrelevant to confusing similarity analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Thus, the Panel finds that the <xmotoclothes.com> domain name is confusingly similar to Complainant’s MOTORCLOTHES mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 has no rights or legitimate interests in the disputed domain name, and is not commonly known by the disputed domain name. The WHOIS record for the disputed domain name lists “Janis Vecvanags” as the registrant of record. Complainant states that Respondent is not authorized to use the registered mark. The Panel finds that Complainant has sufficiently established Respondent’s lack of rights to the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Further, Complainant asserts that Respondent lacks rights or legitimate interests in the <xmotoclothes.com> domain name, due to Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Respondent’s disputed domain name resolves to a website that offers counterfeit products. Past panels have found that a respondent’s use of a confusingly similar domain name to sell counterfeit versions of a complainant’s product is not a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. See Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”). The Panel thus finds that Respondent’s use of the disputed domain name to sell counterfeit versions of Complainant’s products does not convey rights or legitimate interests in a domain name under Policy ¶ ¶ 4(c)(i) or 4(c)(iii).
Complainant asserts that Respondent is trying to pass itself off as Complainant, arguing that Respondent uses Complainant’s well-known orange and black color scheme on its website in addition to offering counterfeit versions of Complainant’s products. Prior panels have found a respondent’s use of a complainant’s registered mark and color scheme on the resolving website constitutes passing off, which does not give rise to a respondent’s rights or legitimate interests in the disputed domain name. 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)). The Panel thus finds that Respondent has no rights or legitimate interests in respect to the disputed domain name under Policies ¶¶ 4(c)(i) or (c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent has engaged in prior bad-faith registration, as evidenced by prior adverse UDRP decisions against Respondent. Respondent has already registered two domain names containing Complainant’s mark, each resulting in an adverse UDRP decision against Respondent. Previous panels have found that prior UDRP proceedings were sufficient evidence of a pattern of bad faith registration under Policy ¶ 4(b)(ii). See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”). Therefore, the Panel finds bad faith registration under Policy ¶ 4(b)(ii).
Complainant asserts that Respondent’s use of the disputed domain name disrupts Complainant’s business by diverting Internet customers seeking Complainant’s website, and by offering counterfeit HARLEY-DAVIDSON products, unfairly competing with Complainant’s own offering of products. Previous panels have found that a disputed domain name that is used to sell counterfeit products constitutes 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). Therefore, the Panel finds bad faith registration and use under Policy ¶ 4(b)(iii).
Further, Complainant argues that Respondent intentionally attracts, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark. Complainant demonstrates that Respondent’s use of the <xmotoclothes.com> domain name mimics complainant’s well-known orange and black color scheme, and attempts to profit by passing itself off as Complainant. Prior panels have agreed that passing off constitutes bad faith registration and use for purposes of Policy ¶ 4(b)(iv). See Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products); see also Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”). Accordingly, Panel finds that Respondent has engaged in bad faith according to Policy ¶ 4(b)(iv).
Respondent clearly registered the disputed domain name with knowledge of Complainant and it’s rights in the MOTORCLOTHES mark, which is further evidence of bad faith pursuant to Policy ¶ 4(a)(iii). See 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").
The Panel finds that Complainant has satisfied 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 <xmotoclothes.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: April 6, 2015
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