H-D U.S.A., LLC, v. PHUONG HUYNH / VIETNAM DOMAIN REGISTRATION - HOSTING SOLUTIONS
Claim Number: FA1411001591174
Complainant is H-D U.S.A., LLC (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is PHUONG HUYNH / VIETNAM DOMAIN REGISTRATION - HOSTING SOLUTIONS (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hanoihog.com>, registered with eNom, Inc.
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.
David A. Einhorn as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 20, 2014; the National Arbitration Forum received payment on November 20, 2014.
On November 21, 2014, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <hanoihog.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 November 21, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 11, 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@hanoihog.com. Also on November 21, 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 December 19, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn 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’s Contentions
a. Complainant’s mark:
i. Complainant owns the HOG mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,599,492, registered June 5, 1990).
ii. Complainant uses the HOG mark in connection with its business as a motorcycle club.
iii. Complainant operates online through various different domain names that consist of the HOG mark and the city in which the club chapter is operating in.
b. Respondent’s infringing activities:
i. Policy ¶ 4(a)(i)
1. The <hanoihog.com> domain name is confusingly similar to Complainant’s HOG mark because Respondent has simply added the geographic term “Hanoi”, which is the capital city of Vietnam, to the mark.
a. Because the domain name follows the naming conventions frequently used by Complainant’s official HOG chapters (HOG plus a city name or a city name plus HOG), the confusing similarity of the disputed domain name is heightened.
ii. Policy ¶ 4(a)(ii)
1. Respondent lacks rights or legitimate interests in the disputed domain name.
2. Respondent is not commonly known by the <hanoihog.com> domain name. Respondent is neither licensed nor authorized to use the HOG mark.
3. Respondent does not provide any bona fide offering of goods or services, or make a legitimate noncommercial or fair use of the disputed domain name.
4. Respondent uses the disputed domain name to offer competing motorcycle club services.
5. Respondent uses the disputed domain name to post a variety of different advertisements to third-party websites, in which Respondent allegedly commercially benefits.
6. Respondent’s use of Complainant’s multiple logos throughout its website constitutes passing off.
iii. Policy ¶ 4(a)(iii)
1. Respondent has started a bad faith pattern of registered trademark-related domain names in that Respondent has registered additional domain names such as <hoghanoi.com> and <hoghanoi.vn>.
2. Respondent uses the disputed domain name to offer competing services to that of Complainant, which disrupts Complainant’s business.
3. Respondent uses the disputed domain name to intentionally attract Internet users to its own website for commercial gain.
4. Respondent’s website utilizes Complainant’s many different logos so closely that it is attempting to pass itself off as Complainant.
5. Due to Respondent’s extensive and unauthorized use of Complainant’s trademarks on its website, it is inconceivable that Respondent registered the <hoghanoi.com> domain name without knowledge of Complainant’s rights in the HOG mark.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that Respondent registered the disputed domain name on June 1, 2012.
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.”).
Complainant claims to use the HOG mark in connection with its business in motorcycles. Complainant claims to own the HOG mark through its trademark registrations with the USPTO (e.g., Reg. No. 1,599,492, registered June 5, 1990). Complainant argues that such registrations are sufficient to establish rights in the HOG mark pursuant to Policy ¶ 4(a)(i) requirements, even though Respondent reportedly resides in Vietnam. Complainant’s argument is supported by previous UDRP decisions. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Accordingly, the Panel finds that Complainant’s USPTO registrations satisfy the requirements of Policy ¶ 4(a)(i).
Complainant argues that the <hanoihog.com> domain name is confusingly similar to Complainant’s HOG mark because Respondent has simply added the geographic term “Hanoi” to the mark, which is the capital city of the country in which Respondent is located. Previous panels have generally found that a domain name differing from a mark by only the addition of a geographic term does not escape the realm of confusing similarity. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the addition of geograhic terms, such as “cancun” to the end of the CHEAPTICKETS mark in the <cheapticketscancun.com>, <cheapticketscancun.biz>, <cheapticketscancun.net>, and <cheapticketscancun.org> domain names, does not overcome a finding of confusing similarity under Policy ¶ 4(a)(i)). As such, the Panel finds that the <hanoihog.com> domain name is confusingly similar to Complainant’s HOG mark pursuant to Policy ¶ 4(a)(i).
It is Complainant’s position that Respondent lacks rights or legitimate interests in the disputed domain name. In so arguing, Complainant alleges that Respondent is not commonly known by the <hanoihog.com> domain name. The Panel notes that the WHOIS information identifies “Phuong Huynh” as the registrant of the disputed domain name. Further, Complainant urges that Respondent is neither licensed nor authorized to use the HOG mark. The Panel notes that Respondent has not submitted a response to rebut any of Complainant’s contentions. Given the lack of evidence to infer otherwise, the Panel finds that Respondent is not commonly known by the <hanoihog.com> domain name pursuant to 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).
Complainant also argues that Respondent has not provided any bona fide offering of goods or services, or made a legitimate noncommercial or fair use of the disputed domain name. Complainant urges that Respondent currently uses the disputed domain name to divert Internet users to another website that offers competing motorcycle club services as Complainant. Previous panels have refused to find a bona fide offering of goods and services, or a legitimate noncommercial or fair use where the disputed domain name was used to forward Internet users to a third-party website that provides services or goods competing with those of the complainant. See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services). Therefore, the Panel finds that Respondent’s current use of the disputed domain name does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii), respectively.
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent uses the disputed domain name to offer competing services to that of Complainant, which disrupts Complainant’s business. The Panel notes that the disputed domain name resolves to a website that offers competing motorcycle club services. The Panel determines that Respondent has engaged in bad faith pursuant to Policy ¶ 4(b)(iii) as Respondent’s use disrupts Complainant’s own offerings. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business).
The Panel finds that, because of its use of Complainant’s logos throughout its website, it is evident that Respondent had actual knowledge of Complainant's mark and rights and registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Thus, Complainant has also 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 <hanoihog.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: December 31, 2014
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