H-D U.S.A., LLC v. Mark Crescitelli
Claim Number: FA1607001682662
Complainant is H-D U.S.A., LLC (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is Mark Crescitelli (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <harley-davidsonofstatenisland.com>, <harleydavidsonofstatenisland.co>, <harleydavidsonofstatenisland.net>, <harleydavidsonofstatenisland.org>, <hdofsi.com>, <hdofsi.net>, <hdofsi.org>, <hdofsi.info>, 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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 6, 2016; the Forum received payment on July 6, 2016.
On July 7, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <harley-davidsonofstatenisland.com>, <harleydavidsonofstatenisland.co>, <harleydavidsonofstatenisland.net>, <harleydavidsonofstatenisland.org>, <hdofsi.com>, <hdofsi.net>, <hdofsi.org>, <hdofsi.info>, 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 July 7, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 27, 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-davidsonofstatenisland.com, postmaster@harleydavidsonofstatenisland.co, postmaster@harleydavidsonofstatenisland.net, postmaster@harleydavidsonofstatenisland.org, postmaster@hdofsi.com, postmaster@hdofsi.net, postmaster@hdofsi.org, and postmaster@hdofsi.info. Also on July 7, 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 August 4, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 names be transferred from Respondent to Complainant.
Complainant
Complainant, H-D Inc., through various subordinate companies, has sold, manufactured, and advertised motorcycles since 1903. In connection with this business, Complainant has registered and has rights in the HARLEY-DAVIDSON and HD marks based on registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,078,871, registered Dec. 6, 1977 and Reg. No. 2,315,877, registered Feb. 8, 2000, respectively). Respondent’s domains <harley-davidsonofstatenisland.com>, <harleydavidsonofstatenisland.co>, <harleydavidsonofstatenisland.net>, and <harleydavidsonofstatenisland.org> are confusingly similar to Complainant’s HARLEY-DAVIDSON mark as the domains include the mark in its entirety and merely add top-level domains and a geographic term. Similarly, the domains <hdofsi.com>, <hdofsi.net>, <hdofsi.org>, and <hdofsi.info> are confusingly similar as they incorporate the HD mark and an acronym for the geographic location Staten Island.
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not and has not been commonly known by the disputed domain names based on WHOIS information. Respondent’s use of the disputed domains, either inactively or to display pay-per-click advertisements, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has registered and is using the disputed domain name in bad faith. Respondent’s bad faith is shown through registration of multiple domain names demonstrating a pattern of conduct which prevents Complainant from reflecting its mark in the domains. Respondent also demonstrates opportunistic bad faith through taking advantage of a change in ownership at Complainant’s authorized dealership in Staten Island which Respondent knew of as an employee of the previous Staten Island dealership. Respondent, through use of confusingly similar domains has created a likelihood of confusion from which Respondent is commercially benefitting. Finally, it is clear based on Respondent’s previous work at an authorized dealer of Complainant’s products and the fame of Complainant’s marks that Respondent had actual knowledge of Complainant’s rights in the mark at the time the domains were registered.
Respondent
Respondent did not submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <harley-davidsonofstatenisland.com>, <harleydavidsonofstatenisland.co>, <harleydavidsonofstatenisland.net>, and <harleydavidsonofstatenisland.org> domain names.
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.”).
Complainant, H-D Inc., through various subordinate companies, claims to have sold, manufactured, and advertised motorcycles since 1903. Complainant claims its rights in the HARLEY DAVIDSON and HD marks based on registration of the marks with the USPTO (Reg. No. 1,078,871, registered Dec. 6, 1977 and Reg. No. 2,315,877, registered Feb. 8, 2000, respectively). Past panels have found that registration of a mark with the USPTO adequately demonstrates rights in a mark. See Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Forum Apr. 14, 2006) (finding that the complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in the mark under consideration pursuant to Policy ¶ 4(a)(i)). The Panel therefore finds that Complainant has rights in the HARLEY DAVIDSON and HD marks under Policy ¶ 4(a)(i).
Complainant claims that Respondent’s domains are confusingly similar to the HARLEY DAVIDSON or HD marks. Respondent’s <harley-davidsonofstatenisland.com>, <harleydavidsonofstatenisland.co>, <harleydavidsonofstatenisland.net>, and <harleydavidsonofstatenisland.org> domains all include the entire HARLEY DAVIDSON mark and differ through the addition of top-level domains, the term “of,” the geographic term “Staten Island,” and in the case of <harley-davidsonofstatenisland.com>, a hyphen. Panels routinely find that the addition of top-level domains and punctuation marks, such as hyphens, is not relevant to an analysis of confusing similarity under Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Additionally, geographic terms have not been found to distinguish a domain from a mark to which the term is added. See Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.). The Panel finds that Respondent’s <harley-davidsonofstatenisland.com>, <harleydavidsonofstatenisland.co>, <harleydavidsonofstatenisland.net>, and <harleydavidsonofstatenisland.org> domains are confusingly similar to the HARLEY DAVIDSON mark.
Complainant also claims that the <hdofsi.com>, <hdofsi.net>, <hdofsi.org>, and <hdofsi.info> domains are confusingly similar to the HD mark as the domains merely differ through the addition of top-level domains, the term “of,” and the geographic acronym “SI,” meaning “Staten Island.” Panels have held that generic terms and top-level domains do not differentiate domains sufficiently to prevent a finding of confusing similarity. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). Geographic letters have also been found not to prevent a finding of confusing similarity. See MFI UK Ltd. v. Jones, D2003-0102 (WIPO May 8, 2003) (finding the <mfiuk.com> domain name confusingly similar to the complainant’s MFI mark because the addition of the letters “UK” were merely a common designation for the United Kingdom). Therefore, the Panel finds that Respondent’s <hdofsi.com>, <hdofsi.net>, <hdofsi.org>, and <hdofsi.info> domains are confusingly similar to the HD mark in which Complainant asserts rights.
Complainant has proved this element.
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 (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 (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 claims that Respondent has not been commonly known by the disputed domain name based on WHOIS information. WHOIS information associated with the disputed domains identifies Respondent as, “Mark Crescitelli,” which does not resemble the disputed domain. Panels have held that a respondent is not commonly known by a disputed domain where the WHOIS information does not indicate to the contrary. 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). The Panel therefore finds that Respondent is not commonly known by the disputed domain names.
Complainant next claims that Respondent’s uses of the disputed domain names, either operating pay-per click advertisements or failing to mark an active use, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s <harley-davidsonofstatenisland.com>, <harleydavidsonofstatenisland.co>, <harleydavidsonofstatenisland.net>, and <harleydavidsonofstatenisland.org> domains resolve to websites displaying the message “website coming soon!” Panels have held that failure to make active use of an infringing domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). Respondent’s <hdofsi.com>, <hdofsi.net>, <hdofsi.org>, and <hdofsi.info> domains resolve to websites apparently parked by the domain registrar which display advertisements for various unrelated products and services. Panels have held that using a confusingly similar domain to host advertisements is not within the parameters of Policy 4¶ (c)(i) or ¶ 4(c)(iii). See Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services). The Panel therefore finds that Respondent’s uses of the disputed domain names does not constitute bona fide offerings of goods or services or legitimate noncommercial or fair use.
Complainant has proved this element.
Complainant contends that Respondent’s bad faith is evident through the registration of eight potentially infringing domains in the current proceeding. Complainant asserts that this behavior shows a pattern of bad faith registrations. Panels have found bad faith where multiple infringing domains were registered by a single party in a proceeding. See Harcourt, Inc. v. Fadness, FA 95247 (Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)). The Panel finds that Respondent has registered eight infringing domain names in the current proceeding, and therefore finds that Respondent has exhibited bad faith under Policy ¶ 4(b)(ii).
Complainant contends that Respondent has acted opportunistically to take advantage of a known change in ownership at Complainant’s dealership in Staten Island. Complainant claims that Respondent previously worked for Complainant’s authorized dealer in the Staten Island area and was aware that ownership was changing. Respondent has since opened a competing motorcycle dealership and registered the disputed domain names. Opportunistic bad faith has been found where a respondent seemingly registered a domain in response to recent changes or acquisitions in a business. See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (“If there had been any doubt as to bad faith, the fact that registration was on the same day the news leaked about the merger, which was put in evidence, is a compelling indication of bad faith that [the] respondent has to refute and which he has failed to do. The panel finds a negative inference from this.”). The Panel finds that Respondent registered the domain in response to changes in the Complainant’s dealership, and therefore finds that Respondent did so in bad faith.
Complainant also alleges that Respondent is commercially benefitting from attracting internet users who mistakenly believe that the <hdofsi.com>, <hdofsi.net>, <hdofsi.org>, and <hdofsi.info> domains are associated with Complainant’s business or products. Respondent’s <hdofsi.com>, <hdofsi.net>, <hdofsi.org>, and <hdofsi.info> domains resolve to what appears to be parked websites that display various pay-per-click advertisements for various products and services. Panels consistently find that a respondent using a domain that is confusingly similar to another’s mark for commercial gain does so in bad faith. See Tumblr, Inc. v. Ailing Liu, FA1402001543807 (Forum Mar. 24, 2014) (“Bad faith use and registration exists under Policy ¶ 4(b)(iv) where a respondent uses a confusingly similar domain name to resolve to a website featuring links and advertisements unrelated to complainant’s business and respondent is likely collecting fees.”). The Panel therefore finds that Respondent’s use of the <hdofsi.com>, <hdofsi.net>, <hdofsi.org>, and <hdofsi.info> domains demonstrates bad faith under Policy ¶ 4(b)(iv).
Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the HARLEY DAVIDSON and HD marks. Complainant argues that Respondent’s previous work at an authorized dealer of Complainant and the fame of Complainant’s marks indicates that Respondent had actual knowledge of Complainant's mark and rights. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determine that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (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").
Complainant has proved this element.
Complainant 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-davidsonofstatenisland.com>, <harleydavidsonofstatenisland.co>, <harleydavidsonofstatenisland.net>, <harleydavidsonofstatenisland.org>, <hdofsi.com>, <hdofsi.net>, <hdofsi.org>, and <hdofsi.info> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: August 16, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page