H-D U.S.A., LLC v. Werners Car Shop
Claim Number: FA1604001671654
Complainant is H-D U.S.A., LLC (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is Werners Car Shop (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <harley-teile.com>, registered with Cronon AG.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 22, 2016; the Forum received payment on April 22, 2016.
On April 28, 2016, Cronon AG confirmed by e-mail to the Forum that the <harley-teile.com> domain name is registered with Cronon AG and that Respondent is the current registrant of the name. Cronon AG has verified that Respondent is bound by the Cronon AG 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 27, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 17, 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-teile.com. Also on April 27, 2016, 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 May 18, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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
a. Complainant has Policy ¶ 4(a)(i) rights in the HARLEY mark per its United States Patent and Trademark Office (“USPTO”) (Registry No. 1,352,679, registered Aug. 1985) registration. The <harley-teile.com> domain name is confusingly similar to the HARLEY mark because the additions of a hyphen, the word “teile” (meaning “parts” in German), and the “.com” generic top-level domain (“gTLD”) are not distinguishing features.
b. Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by <harley-teile.com>, nor is Respondent an authorized or licensed dealer of Complainant. Further, Respondent has operated the disputed domain in connection with advertising and/or the offer of directly competing motorcycle-related products and services, and as such cannot constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
c.
Respondent registered and used the disputed domain in bad faith. Per the
language of Policy ¶¶ 4(b)(iii) and (iv), Respondent has registered and used
the disputed domain to advertise and/or sell competing products, which disrupts
Complainant’s business and nets Respondent commercial gain. Lastly, while
Complainant has garnered a great deal of fame, and because Respondent
explicitly mentions Complainant’s product through its use of the disputed
domain, Respondent had knowledge of the HARLEY mark and Complainant’s rights in
the mark.
B. Respondent
a. Respondent failed to submit a Response in this proceeding.
Complainant is H-D U.S.A., LLC of Milwaukee, WI, USA. Complainant is the owner of the domestic registration for the mark HARLEY, which it has continuously used since at least as early as 1982, in connection with motorcycle production and sales as well as sales of related goods and services.
Respondent is Werners Car Shop of Breisach, Germany. Respondent’s registrar’s address is Berlin, Germany. The Panel notes that the <harley-teile.com> domain name was registered on or about September 2, 2011.
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(f), 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 (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.”).
Panel Note: Supported Language Request
The Panel notes that Complainant requests the language of this administrative proceeding be in the English language. Complainant makes this request in light of the German language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would evince a familiarity with the English language, filing of a trademark registration with an entity which evinces an understanding of the English language, and any evidence (or lack thereof) evincing Respondent’s understanding of the German language included in the Registration Agreement. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Here, Complainant argues that Respondent operates the website resolved to by the disputed domain name in the English language, which Complainant has provided evidence of.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel finds that the proceeding should be in English.
Complainant argues it has Policy ¶ 4(a)(i) rights in the HARLEY mark per its USPTO (Registry No. 1,352,679, registered Aug. 1985) registration. Prior panels have found USPTO registrations satisfy the Policy ¶ 4(a)(i) rights requirement. See Dell Inc. v. Rino Manangkalangi, FA 1626784 (Forum Aug. 5, 2015) (holding that Complainant has rights in the ALIENWARE trademark and service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with the USPTO.). The Panel here finds that Complainant has rights in the HARLEY mark per Policy ¶ 4(a)(i).
Next, Complainant argues that the <harley-teile.com> domain name is confusingly similar to the HARLEY mark because the additions of a hyphen, the word “teile” (meaning “parts” in German), and the “.com” gTLD are not distinguishing features. Complainant contends that it has sold “parts” under its HARLEY marks for many years, therefore Complainant posits that the addition of the term “teile” serves to heighten the confusing similarity rather than distinguish the domain. See Eastman Chem. Co. v. Patel, FA 524752 (Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”). The Panel here finds that Respondent’s <harley-teile.com> domain name is confusingly similar to the HARLEY mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes 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), 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). The Complainant has met this burden.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Complainant contends that Respondent is not commonly known by <harley-teile.com>, nor is Respondent an authorized or licensed dealer of Complainant. Because the WHOIS data indicates the registrant of record for the disputed domain name is “Werners Car Shop”, and the Respondent has submitted no evidence to contradict Complainant’s assertions, the Panel here finds that Respondent is not commonly known by the disputed domain per Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name).
Further, Complainant argues that Respondent has operated the disputed domain in connection with advertising and/or the offer of directly competing motorcycle-related products and services, and as such cannot constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). Prior Panels have found competing advertising and competing use fail to demonstrate a bona fide offering or any legitimate noncommercial or fair use. See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”); see also General Motors LLC v. MIKE LEE, FA 1659965 (Forum March 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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).”).
The Panel here finds that Complainant has met its prima facie burden, and that Respondent has not demonstrated rights and legitimate interests in the disputed domain name as required per Policy ¶¶ 4(c)(i) or (iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As the Respondent has not provided a response to this action, the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant argues that Respondent registered and used the disputed domain in bad faith. Per the language of Policy ¶¶ 4(b)(iii) and (iv), Complainant asserts that Respondent has registered and used the disputed domain to advertise and/or sell competing products, which disrupts Complainant’s business and nets Respondent commercial gain. Complainant has provided screenshots of Respondent’s website in support of its allegations. Previous panels have agreed that competitive use of a confusingly similar domain imputes bad faith disruption; and while such competitive use is presumably for the purpose of netting such a respondent profit in some manner, panels have also held that competitive use of a confusingly similar domain constitutes bad faith commercial gain. See Fitness International, LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA1506001623644 (Forum July 9, 2015) (“Respondent uses the at-issue domain name to operate a website that purports to offer health club related services such as fitness experts, fitness models, fitness venues, exercise programs, and personal training, all of which are the exact services offered by Complainant. Doing so causes customer confusion, disrupts Complainant’s business, and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii).”); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). The Panel here finds that Respondent’s conduct supports a finding of bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <harley-teile.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: June 1, 2016
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