H-D U.S.A., LLC v. Mario Diver
Claim Number: FA2109001962442
Complainant is H-D U.S.A., LLC (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is Mario Diver (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <southerncaliforniaharleydavidson.com>, registered with Google 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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 3, 2021. The Forum received payment on September 3, 2021.
On September 7, 2021, Google LLC confirmed by e-mail to the Forum that the <southerncaliforniaharleydavidson.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 September 9, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 29, 2021 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@southerncaliforniaharleydavidson.com. Also on September 9, 2021, 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 October 1, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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
Complainant, H-D U.S.A., LLC, is a world-famous motorcycle manufacturing company with numerous authorized dealerships. Complainant has rights in the HARLEY-DAVIDSON mark through numerous registrations, including with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <southerncaliforniaharleydavidson.com> domain name is confusingly similar to Complainant’s HARLEY-DAVIDSON mark.
Respondent lacks rights and legitimate interests in the <southerncaliforniaharleydavidson.com> domain name as Respondent is not commonly known by the domain name and is neither an authorized user nor licensee of the HARLEY-DAVIDSON mark. Additionally, Respondent does not use the domain name for any bona fide offer of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent, who was employed by Complainant’s authorized HARLEY-DAVIDSON dealer in Coronado, California (Coronado Beach Harley-Davidson) from August 2019 to November 2019, has used the domain name to pass himself off as an authorized dealer of Complainant’s products in furtherance of a phishing scheme. Respondent currently holds the domain name inactively.
Respondent registered the <southerncaliforniaharleydavidson.com> domain name in bad faith with actual knowledge of Complainant’s rights in the HARLEY-DAVIDSON mark and uses it primarily to pass himself off as Complainant’s authorized dealer to operate a phishing scheme, demonstrating bad faith disruption of Complainant’s business and attraction of Internet users for commercial gain. The domain name currently resolves to a generic error page. Hence Respondent is currently inactively holding the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has shown that it has rights in the HARLEY-DAVIDSON mark through numerous registrations in many countries, including with the USPTO (e.g., Reg. 526,750, registered Jun. 27, 1950). The Panel finds Respondent’s <southerncaliforniaharleydavidson.com> domain name to be confusingly similar to Complainant’s HARLEY-DAVIDSON mark, merely omitting the hyphen, adding the geographic term “Southern California” and the inconsequential “.com” generic top-level domain (“gTLD”), which may be ignored.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <southerncaliforniaharleydavidson.com> domain name was registered on July 30, 2020, many years after Complainant’s HARLEY-DAVIDSON mark had become famous and months after Respondent had ceased to be employed by Complainant’s authorized HARLEY-DAVIDSON dealer in Coronado, California. Respondent has used the domain name for a website that gave the impression that it was an authorized HARLEY-DAVIDSON dealership website and solicited consumers’ names, phone numbers, email addresses and interests.
The domain name does not currently resolve to an active website.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that he does have rights or legitimate interests in the <southerncaliforniaharleydavidson.com> domain name. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has established this element.
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant’s famous HARLEY-DAVIDSON mark when Respondent registered the <southerncaliforniaharleydavidson.com> domain name and that Respondent did so primarily for the purpose of disrupting the business of a competitor. This demonstrates registration and use in bad faith under Policy ¶ 4(b)(iii).
Further, the Panel is satisfied that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s mark as to the source of Respondent’s website and of the goods promoted on that website. This demonstrates registration and use in bad faith under Policy ¶ 4(b)(iv).
Finally, although the <southerncaliforniaharleydavidson.com> domain name does not resolve to an active website, as in the leading case of Telstra Corporation Limited v. Nuclear Marshmallows, (WIPO Case No. D2000-0003), there is no conceivable active use that could be made of the domain name that would not amount to an infringement of Complainant’s rights. Accordingly, the Panel finds that Respondent’s current passive use of the domain name constitutes use in bad faith.
Complainant has established this element.
DECISION
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 <southerncaliforniaharleydavidson.com> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: October 4, 2021
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