H-D U.S.A., LLC v. WHOIS PROXY by ULTRA-DOMAIN / ULTRA-DOMAIN
Claim Number: FA1512001651547
Complainant is H-D U.S.A., LLC (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is WHOIS PROXY by ULTRA-DOMAIN / ULTRA-DOMAIN (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <harley-davidson-club.org>, registered with Key-Systems GmbH.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 9, 2015; the Forum received payment on December 9, 2015. The Complaint was submitted in both Japanese and English.
On December 10, 2015, Key-Systems GmbH confirmed by e-mail to the Forum that the <harley-davidson-club.org> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 December 14, 2015, the Forum served the Japanese language Complaint and all Annexes, including a Japanese language Written Notice of the Complaint, setting a deadline of January 4, 2016 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-davidson-club.org. Also on December 14, 2015, the Japanese 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 Forum transmitted to the parties a Notification of Respondent Default.
On January 7, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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
Complaint states that it owns and licenses intellectual property for the Harley Davidson company. Since 1903, Harley-Davidson has manufactured, advertised, and sold motorcycles under the HARLEY-DAVIDSON trademark and trade name. In addition, Harley-Davidson has offered for decades a full array of motorcycle parts and accessories, apparel, and other products and services under the HARLEY-DAVIDSON mark. Harley-Davidson has sold many billions of dollars worth of products and services under the HARLEY-DAVIDSON mark. Harley-Davidson spends many millions of dollars every year to extensively and widely advertise and promote its products and services under the HARLEY-DAVIDSON mark. Harley-Davidson has for years utilized a network of authorized dealers to market its motorcycles, motorcycle parts and accessories, and other products including clothing, as well as services such as motorcycle-club services and financing. Harley-Davidson also sells, through numerous authorized licensees, a wide variety of products around the world, including in Japan. Harley-Davidson has more than 1,500 authorized dealers throughout the world, including Japan where Respondent is located. The year 2013 was Harley-Davidson’s 100th anniversary of its business in Japan.
Complainant states that it has registered the HARLEY DAVIDSON mark in numerous jurisdictions around the world, including in the USA in 1977. The mark is famous around the world.
Complainant alleges that the disputed domain name is confusingly similar to the HARLEY-DAVIDSON mark as it fully incorporates the mark and merely adds a hyphen and the generic term “club,” as well as the generic top-level domain (“gTLD”) “.org.” Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent has no rights or legitimate interests in respect of the disputed domain name. Respondent has not been commonly known by the disputed domain name per Policy ¶ 4(c)(ii). Further, Respondent has not evinced any bona fide offering of goods or services or any legitimate noncommercial or fair use through the disputed domain name. Instead, Respondent has used the disputed domain to resolve to adult-oriented material. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent has registered and used the disputed domain name in bad faith. While Respondent has endeavored to operate an adult-oriented website, such use tarnishes Complainant’s mark and constitutes bad faith under Policy ¶ 4(b)(iii). Further, Respondent has capitalized on the goodwill associated with the HARLEY-DAVIDSON mark in attracting Internet users to its website for commercial gain, demonstrating bad faith under Policy ¶ 4(b)(iv) as well as its actual knowledge in the HARLEY DAVIDSON mark and Complainant’s rights therein. Last, while the disputed domain resolves to an adult-oriented site, this use in and of itself constitutes bad faith under a non-exclusive analysis of Policy ¶ 4(a)(iii). Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark HARLEY DAVIDSON and uses it to market motorcycles around the world, including in Japan. The mark is famous.
Complainant’s registration of its mark dates back to 1977.
The disputed domain names was registered in 2015.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain name points to a web site that offers adult-oriented material.
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.”).
Prior to considering the three elements of the Policy, the Panel will first rule on the issue of the language of the proceedings. The Panel notes that the Registration Agreement is written in Japanese, thereby making the language of the proceedings Japanese. However, Rule 11(a) provides that the Panel has authority to determine otherwise, having regard to the circumstances of the administrative proceeding.
The Panel notes that Respondent has been served with Complaint and Commencement Notification in Japanese and has not submitted a Response. The disputed domain name is a well known mark in the English language. Consequently, the Panel determines that the remainder of the proceedings may be conducted in English.
Complainant has registered with the USPTO the HARLEY-DAVIDSON mark. The disputed domain name is confusingly similar to the HARLEY-DAVIDSON mark as it fully incorporates the mark and merely adds a hyphen and the generic term “club,” as well as the generic top-level domain (“gTLD”) “.org.” Panels have found confusing similarity under similar circumstances. See Allstate Insurance Company v. Brian McFedries, FA 1601235 (Nat. Arb. Forum Feb. 25, 2015) (panel stating that “adding the hyphen to the domain name does nothing to distinguish the domain name from the trademark under Policy ¶4(a)(i).”); see also 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.”); see also World Wrestling Entertainment, Inc. v. emad ibrahim / this domain is for sale, FA 1579757 (Nat. Arb. Forum Oct. 13, 2014) (“The Panel agrees that the [disputed domain] name is identical as the inclusion of a generic top-level domain (“gTLD”) such as “.org” is irrelevant to the Policy ¶ 4(a)(i) confusing similarity analysis.”). Consequently, the Panel finds that the disputed domain name is confusingly similar to the HARLEY-DAVIDSON mark under Policy ¶ 4(a)(i).
Respondent has not been commonly known by the disputed domain name per Policy ¶ 4(c)(ii), and Complainant has given no license or authorization to Respondent to register any domain names incorporating the HARLEY-DAVIDSON mark. While Respondent has failed to submit any evidence to the record for the Panel’s consideration, the Panel notes that that the available WHOIS merely indicates registrant of record to be “WHOIS PROXY by ULTRA-DOMAIN / ULTRA-DOMAIN,” and therefore does not suffice in supporting rights under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Further, Respondent has not evinced any bona fide offering of goods or services or any legitimate noncommercial or fair use through the disputed domain name. Instead, Respondent has used the disputed domain to resolve to adult-oriented material. Panels have agreed that where such adult-oriented material exists, no rights or legitimate interests may exist for a respondent. See Dipaolo v. Genero, FA 203168 (Nat. Arb. Forum Dec. 6, 2003) (“Diversion to [adult-oriented material] is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶¶ 4(c)(i) and (iii).”). Therefore, the Panel finds that Respondent has elicited no bona fide offering of goods or services or any legitimate noncommercial or fair use which would support a finding of Policy ¶¶ 4(c)(i) or (iii) in Respondent’s favor.
Furthermore, where a party has registered and used a domain name in bad faith (see the discussion below), that party cannot be found to have made a bona fide offering of goods or services, see The PNC Financial Services Group, Inc. and PNC Bank, N.A. v. Azra Khan, WIPO Case No. D2002-0701; see also AltaVista Company v. Saeid Yomtobian, WIPO Case No. D2000 0937.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s famous mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain names.
Respondent is operating an adult-oriented website at the disputed domain name. Such use tarnishes Complainant’s mark and constitutes bad faith under Policy ¶ 4(b)(iii). Indeed, past Panels have defined a “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor.” See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000).
Respondent has capitalized on the goodwill associated with the HARLEY-DAVIDSON mark in attracting Internet users to its website for commercial gain, demonstrating bad faith under Policy ¶ 4(b)(iv) as well as its actual knowledge in the HARLEY DAVIDSON mark and Complainant’s rights therein. Panels have agreed that where there is a reasonable inference of actual knowledge of a complainant’s mark and a complainant’s rights in a mark, a respondent may see an advantage in registering a confusingly similar domain name and profiting from any goodwill associated with such a mark. See AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Nat. Arb. Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). Consequently, the Panel finds that Respondent has registered and used the disputed domain name in bad faith per the language of Policy ¶ 4(b)(iv), and with actual knowledge of the famous HARLEY-DAVIDSON mark under Policy ¶ 4(a)(iii).
Further, the fact that the disputed domain resolves to an adult-oriented site in and of itself constitutes bad faith under a non-exclusive analysis of Policy ¶ 4(a)(iii). Panels have agreed with such contentions, as the Policy ¶ 4(b) elements could not possibly encompass all possible bad faith uses of an infringing domain. See Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)], does not mean that the domain names at issue were not registered in and are not being used in bad faith.”); see also Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (finding that the respondent registered the <holidayinnakron.com> domain name and linked it to an adult-oriented website. The panel stated, “[W]hatever the motivation of Respondent, the diversion of the domain names to [an adult-oriented] site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith”). Accordingly, the Panel finds that Respondent’s inclusion of explicit material harms Complainant and the goodwill associated with the HARLEY-DAVIDSON mark and therefore finds that Respondent has registered and used the disputed domain name in bad faith under 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 <harley-davidson-club.org> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: January 7, 2016
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