H-D U.S.A., LLC v. Tamas Rado
Claim Number: FA1411001592335
Complainant is H-D U.S.A., LLC (“Complainant”), represented by David M. Kelly, of Kelly IP, LLP, Washington, D.C., USA. Respondent is Tamas Rado (“Respondent”), Hungary.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <harleydavidsononline.net>, registered with GoDaddy.com, LLC.
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.
Jeffrey M. Samuels as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 26, 2014; the National Arbitration Forum received payment on November 26, 2014.
On December 1, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <harleydavidsononline.net> 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 December 3, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 23, 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@harleydavidsononline.net. Also on December 3, 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.
A timely Response was received and determined to be complete on December 23, 2014.
A timely Additional Submission was received by Complainant on December 28, 2014. A timely Additional Submission was received by Respondent on January 1, 2015.
On December 29, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jeffrey M. Samuels 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant H-D U.S.A., LLC owns and licenses intellectual property to various Harley-Davidson companies. Complainant owns hundreds of trademark registrations for the HARLEY-DAVIDSON mark in countries around the world. Among such registrations are U.S. Registration Nos. 1,078,871 and 1,234,404, covering the HARLEY-DAVIDSON mark, as used on or in connection with motorcycles and clothing. The HARLEY-DAVIDSON trademark is ranked by Interbrand in its “Top 100” report for global brands.
Since 1903, Harley-Davidson had made and sold motorcycles under the HARELY-DAVIDSON mark. Worldwide sales in 2012 exceeded $5.58 (US) billion. For many years, Harley-Davidson has utilized a network of over 1,500 authorized dealers to market its motorcycles, parts and accessories and other products, including clothing. Harley-Davidson has sold hundreds of millions of dollars of HARLEY-DAVIDSON apparel, including jackets, since at least as early as 1906. Harley-Davidson’s website at harley-davidson.com features on online store where consumers can order clothing for direct delivery or for pickup at the consumer’s local authorized HARLEY-DAVDISON dealer.
The disputed domain name is used for a commercial website which, according to Complainant, offers counterfeit HARLEY-DAVIDSON products, including jackets, motorcycle helmets, jewelry and scarves.
Complainant asserts that the disputed domain name is confusingly similar to the HARLEY-DAVIDSON mark insofar as the domain name is composed of Complainant’s mark and a generic or descriptive term – “online.” Indeed, Complainant maintains that the addition of the term “online” to the domain name heightens the confusing similarity of the domain name because such term directly relates to Complainant’s online offerings of HARLEY-DAVIDSON products and services.
Complainant further contends that Respondent has no rights or legitimate interests in the disputed domain name. It first asserts that Respondent’s registration and use of the domain name in connection with a commercial website that offers counterfeit HARLEY-DAVIDSON products does not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use under the applicable Policy. Second, Complainant indicates that there is no evidence to demonstrate that Respondent is commonly known by the domain name. Third, Complainant maintains that Respondent’s use of the “Harley-Davidson” name and orange-and-black color scheme on his website constitutes “passing off.”
With respect to the issue of “bad faith” registration and use, Complainant contends that Respondent uses the domain name to intentionally attract, for commercial gain, Internet users to his site by creating a likelihood of confusion with Complainant’s HARLEY-DAVIDSON mark as to the source, sponsorship, affiliation and/or endorsement of such site and the products offered therein. Complainant further argues that Respondent’s registration and use constitutes bad faith because Respondent disrupts Complainant’s business by offering counterfeit HARLEY-DAVIDSON products and unfairly competing with Complainant’s own offerings of genuine HARLEY-DAVIDSON products. In support of a finding of “bad faith, Complainant also points to Respondent’s use of the federally registered HARLEY-DAVIDSON mark in the text of the disputed website and Respondent’s mimicking of Harley-Davidson’s well-known orange-and-black color scheme on his site. Finally, Complainant asserts that, given the international fame of Complainant’s mark and Respondent’s sale of counterfeit HARLEY-DAVIDSON merchandise, “there is no question that Respondent registered the Domain Name with knowledge of Complainant’s rights….”
Respondent
Respondent emphasizes that the disputed domain name is harleydavidsononline.net, to which no company holds a legal title, and that the domain name would not be mistaken for the HARLEY-DAVIDSON mark. Respondent invites Complainant to “pick up contact with me about purchasing [the domain name] from me! That is how I got [it]! I didn’t try to take it from anyone!”
C. Additional Submissions
In its “Additional Submission,” Complainant asserts that “[t]his is a classic case of cybersquatting.” Complainant labels as “absurd, contrary to the plain language of the UDRP, and contrary to the vast majority of UDRP decisions” Respondent’s claim that Harley-Davidson must own the mark HARLEYDAVIDSONONLINE in order to prevail.
Complainant also describes as “baseless” Respondent’s claim that he was free to register the domain name because it was available for registration. Complainant contends that Harley-Davidson was not obligated to register any and all available domain names containing the HARLEY-DAVIDSON mark. Complainant emphasizes that the UDRP places the burden on the domain name registrant to avoid registering a domain name that infringes upon the rights of others.
Finally, Complainant notes that Respondent, in his Response, offers to sell the domain name to Harley-Davidson, which, according to Complainant, constitutes evidence of an additional evidentiary basis for Respondent’s bad faith.
In his “Additional Submission,” Respondent “stick[s] to [his] guns” that he is not infringing on the HARLEY-DAVIDSON mark and that an Internet user desirous of being directed to Complainant’s website will not be deterred from doing so through the registration and use of harleydavidsononline.net. Respondent emphasizes that his domain name includes the top-level domain .net, as opposed to .com. Respondent accuses Complainant of advancing the “ridiculous and silly” argument that it has the rights to any name that has the words HARLEY or DAVIDSON within it. Respondent refers to a number of third-party names that incorporate the term “Harley” or “Davidson” that were obtained through a “Google” search of the term “harley-davidson.com.”
Respondent asserts that “[a]s an American, I have the right to buy, work, invent anything that is not anyway illegal to better life! …. [If Complainant] wanted the name they should of bought it [;] that is THOUGHT of it first but I understand that stealing from others might be easier but I worked for it! I thought of it and I payed [sic] for it legally.”
Respondent further contends that he does not want to sell the domain name and that no counterfeit merchandise is sold on his site. Even if counterfeit goods are sold on such site, Respondent maintains, such fact is irrelevant with respect to whether he may keep the disputed domain name.
For the reasons set forth below, the Panel finds that: (1) the disputed domain name is confusingly similar to a mark in which Complainant has rights; (2) Respondent has no rights or legitimate interests in the domain name in issue; and (3) the disputed domain name was registered and is being used 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.
The Panel concludes that the disputed domain name, harleydavidsononline.net, is confusingly similar to the HARLEY-DAVIDSON trademark. The addition of a generic or descriptive term, such as “online,” does not sufficiently differentiate a domain name from a trademark, nor does the addition of the top-level domain .net. See Yahoo! Inc. v. Casino Yahoo, Inc. D2000-0660 (WIPO Aug. 24, 2000); Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) `net’ is irrelevant for purposes of determining whether a domain name is identical to a mark.”) Also, removing a hyphen from a trademark does not negate a finding of confusing similarity. See Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June 19, 2000).
It is also clear that Complainant has rights in the HARLEY-DAVIDSON trademark. The evidence includes printouts from the database of the United States Patent and Trademark Office (“USPTO”) indicating Complainant’s current ownership of registrations for the HARLEY-DAVIDSON mark. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy 4(a)(i)).
The Panel finds that Complainant has satisfied its burden of proof on the issue of rights or legitimate interests. There is no evidence in support of Respondent’s rights or legitimate interests in the disputed domain name. The evidence indicates that Respondent’s harleydavidsononline.net domain name resolves to a website that advertises for sale “Harley-Davidson ®” jackets and other clothing items. While the parties dispute whether such merchandise is counterfeit, it is clear that Respondent is not an authorized Harley-Davidson dealer and that, as a result, its use of the confusingly similar domain name may not be considered bona fide. None of the other circumstances set forth in paragraph 4(c) of the Policy as support for a finding of rights or legitimate interests is applicable.
The Panel concludes that the evidence supports a determination that the disputed domain name was registered and is being used in bad faith.
The evidence indicates that the disputed domain name is confusingly similar to Complainant’s HARLEY-DAVIDSON mark and is used in connection with a website that offers for sale “Harley-Davidson” clothing, references the HARLEY-DAVIDSON federally registered trademark and mimics Complainant’s orange-and-black color scheme. As noted above, Complainant uses its HARLEY-DAVIDSON mark on clothing items and Respondent does not dispute Complainant’s contention that Complainant’s website at <harley-davidson.com> offers for sale HARLEY-DAVIDSON clothing.
Respondent, in his Response and Additional Submission, offers argument along the lines that the domain name would not be confused with Complainant’s mark and that the domain name is rightfully his since he paid for it. However, as determined above, the domain name is confusingly similar to the Complainant’s mark since it merely adds or substitutes non-distinctive terms, i.e., “online” and “net” to the distinctive HARLEY-DAVIDSON mark. With respect to Respondent’s argument that the domain name is rightfully his, the short answer is “not where it is established that the name violates the applicable Policy,” as has been determined here. When Respondent applied for the disputed domain name he represented that such name does not infringe upon the rights of any third party and agreed to be bound to the applicable Policy for resolution of any disputes.
The Panel finds the requisite bad faith registration and use insofar as the evidence establishes that, by using the disputed domain name, Respondent intentionally attempted to attract, for commercial gain, Internet users to his site by creating a likelihood of confusion with Complainant’s HARLEY-DAVIDSON mark by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of such site or of the products offered for sale therein, within the meaning of paragraph 4(b)(iv) of the Policy. Indeed, as contended by Complainant, the addition of the term “online” to the disputed domain name exacerbates the confusion since Complainant also offers goods online.
Further, as the evidence establishes that Respondent offers “Harley-Davidson” clothing on the website accessed through the harleydavidsononline.net domain name, the Panel finds that Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor, within the meaning of paragraph 4(b)(iii) of the Policy.
Additional support for the Panel’s finding of bad faith is based on Respondent’s use of Complainant’s color scheme and overall trade dress, as well as the fact that Complainant’s HARLEY-DAVIDSON mark is enjoys wide consumer recognition. Respondent must be presumed to have had knowledge of such mark at the time of registration and use of the disputed domain name.[1]
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <harleydavidsononline.net> domain name be TRANSFERRED from Respondent to Complainant.
Jeffrey M. Samuels, Panelist
Dated: January 6, 2015
[1] To the extent Complainant contends that bad faith is also established through evidence that Respondent registered the domain name primarily for the purpose of selling it to Complainant, the Panel finds that the evidence on this issue is too equivocal to support a finding of bad faith registration and use.
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