H-D U.S.A., LLC v. Tamas Rado
Claim Number: FA1503001610893
Complainant is H-D U.S.A., LLC (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is Tamas Rado (“Respondent”), Hungary., acting pro se.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <harley-davidsononline.net> and <hooligansharleydavidson.com>, 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.
Richard DiSalle as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 23, 2015; the Forum received payment on March 23, 2015.
On March 24, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <harley-davidsononline.net> and <hooligansharleydavidson.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 April 1, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 21, 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@harley-davidsononline.net, postmaster@hooligansharleydavidson.com. Also on April 1, 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.
A timely Response was received and determined to be complete on April 21, 2015.
Complainant submitted a timely Additional Submission, which was received on April 27, 2015.
On April 29, 2015 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard DiSalle 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant has registered the HARLEY-DAVIDSON mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,078,871, registered Dec. 6, 1977). The mark is used on or in connection with the sale of motorcycles and a wide array of motorcycle parts and accessories, apparel, and other products and services. The <harley-davidsononline.net> and <hooligansharleydavidson.com> domain names are confusingly similar to the mark because the domain names contain the entire mark and differ by the addition of either a hyphen, generic terms, a generic top-level domain (“gTLD”), or some combination thereof.
Respondent has no rights or legitimate interests. Respondent is not commonly known as the disputed domain name or in possession of licensing rights. Further, Respondent is using the disputed domain names in an attempt to pass itself off as Complainant and offer competing and/or counterfeit goods.
Respondent has engaged in bad faith registration and use. Respondent has engaged in a pattern of bad faith registrations; its use of the disputed domain names disrupts Complainant’s business; and Respondent is attempting to commercially profit from a likelihood of confusion. Also, Respondent registered the disputed domain names with actual knowledge of Complainant’s trademark rights.
B. Respondent
Respondent does not contest Complainant’s rights in the HARLEY-DAVIDSON mark. Respondent makes no contentions as to whether the <harley-davidsononline.net> domain name is confusingly similar to the mark, but does contend that the <hooligansharleydavidson.com> domain name is not confusingly similar to the mark because the term “hooligans” provides distinguishing relief.
Respondent has rights or legitimate interests in the disputed domain names. Respondent has registered them in order to run a business consisting of the importing and exporting of clothing and apparel.
Respondent has not engaged in bad faith registration or use because Respondent has rights or legitimate interests in the disputed domain names.
C. Additional Submission
Complainant’s additional submission largely restates contentions made in the original complaint. Complainant notes that Respondent’s assertion of a right to sell products purchased from a licensed dealer fails to demonstrate right or legitimate interests.
(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.
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:
(a) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(b) Respondent has no rights or legitimate interests in respect of the domain name; and
(c) the domain name has been registered and is being used in bad faith.
Complainant has registered the HARLEY-DAVIDSON mark with USPTO (e.g., Reg. No. 1,078,871, registered Dec. 6, 1977). The mark is used on or in connection with the sale of motorcycles and a wide array of motorcycle parts and accessories, apparel, and other products and services. The Panel finds that registration with the USPTO is sufficient to establish rights in a trademark. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Complainant argues that the <harley-davidsononline.net> and <hooligansharleydavidson.com> domain names are confusingly similar to the mark because the domain names contain the entire mark and differ by the addition of a generic term and a gTLD, the removal of a hyphen, or some combination thereof. As a general rule, the addition of a gTLD, such as “.com” or “.net,” or the removal of a hyphen, can never distinguish a domain name from the mark at issue. 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); see also T Ritz-Carlton Hotel Co. v. Club Car Executive Transp., D2000-0611 (WIPO Sept. 18, 2000) (finding that removing a hyphen in the domain names is not sufficient to differentiate the domain names from the mark). Prior panels have also found that the addition of a generic term to a domain name that contains the complainant’s entire mark can create a confusing similarity. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Thus, the Panel finds that the terms “online” or “hooligans” are generic, and finds that the disputed domain names are confusingly similar to Complainant’s mark.
The Panel notes that 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.”).
Complainant asserts that Respondent is not commonly known as the disputed domain names, nor is Respondent in possession of licensing rights that would allow him to use the HARLEY-DAVIDSON mark in domain names. The Panel notes that “Tama Rado” is listed as the registrant of record for the disputed domain names, and that the record shows no evidence to indicate that Respondent is either commonly known as the disputed domain names or in possession of licensing rights. Where such a void exists, Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues that Respondent’s use of the disputed domain names fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. To support this claim, Complainant argues that Respondent is using the domain names in an attempt to pass itself off as Complainant in order to sell competing and/or counterfeit goods. The Panel agrees. To support its claim for passing off, Complainant notes that the resolving webpage contains the same orange and black color scheme as Complainant’s website as well as advertisements for Complainant’s own products and/or counterfeit products. Prior panels have found that a respondent who uses a domain name in an attempt to pass itself off as the complainant cannot have rights or legitimate interests. See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as 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 pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). Prior panels have also found that the use of a confusingly similar domain name to sell competing and/or counterfeit goods cannot consist of a bona fide offering or a legitimate noncommercial fair use. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”); see also Keihin Corp. v. Youli Ltd., FA 1106190 (Nat. Arb. Forum Dec. 18, 2007) (finding no rights and legitimate interests when the respondent sold counterfeit versions of the complainant’s products in competition with the complainant’s business). Therefore, the Panel finds that Respondent lacks rights or legitimate interests under Policy ¶ 4(a)(ii).
Complainant argues that Respondent has engaged in bad faith registration and use. First, Complainant asserts that Respondent has demonstrated bad faith under Policy ¶ 4(b)(ii) by displaying a pattern of bad faith registrations. To support this argument, Complainant cites to a prior UDRP proceeding to which it was a party, H-D U.S.A., LLC v. Tamas Rado, FA 1411001592335 (Nat. Arb. Forum Jan. 6, 2015). The Panel finds this as evidence that Respondent has engaged in bad faith under Policy ¶ 4(b)(ii). 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).
Second, Complainant argues that Respondent has displayed bad faith under Policy ¶ 4(b)(iii) by disrupting Complainant’s business. To support this argument, Complainant again notes that Respondent is using the domain names in an attempt to pass itself off as Complainant in order to sell competing and/or counterfeit goods. To support this argument, Complainant again points to the resolving webpage, which contains the same orange and black color scheme as Complainant’s website, as well as advertisements for Complainant’s own products and/or counterfeit products. Prior panels have found that a respondent who uses a domain name in an attempt to either pass itself off as the complainant or offer competing and/or counterfeit goods disrupts the complainant’s business in bad faith. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also 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). Thus, the Panel finds that Respondent is attempting to pass itself off as Complainant, and that the domain name is being used to offer competing and/or counterfeit goods, and finds that Respondent has shown bad faith under Policy ¶ 4(b)(iii).
Third, Complainant argues that Respondent has displayed bad faith under Policy ¶ 4(b)(iv) by attempting to commercially profit from a likelihood of confusion. Complainant claims that because, as noted, the resolving webpage contains the same color scheme as Complainant’s own website, and because Respondent is offering competing and/or counterfeit goods, Internet users who view the resolving website are likely to believe it is sponsored by or affiliated with Complainant. Prior panels have found that those who use a disputed domain name in an attempt to confuse consumers as to source or origin, and commercially profiting in the process, are engaging in bad faith under the Policy. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). Further, prior panels have found that a respondent’s attempts to use a confusingly similar domain name to offer competing and/or counterfeit goods amounts to an attempt at commercial profit under Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); see also 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). Therefore, the Panel finds that Respondent has created a likelihood of confusion, that Respondent is attempting to commercially profit in the process, and that Respondent has displayed bad faith under Policy ¶ 4(b)(iv).
Lastly, Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the HARLEY-DAVIDSON mark. Complainant argues that Respondent's offering of Complainant's own products and competing products at the resolving website indicates that Respondent had actual knowledge of Complainant's mark and rights. The Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent 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 "actual knowledge of Complainant's mark when registering the disputed domain name").
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-davidsononline.net>, and,<hooligansharleydavidson.com> domain names be TRANSFERRED from Respondent to Complainant.
Richard DiSalle Panelist
Dated: May 11, 2015
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