H-D Michigan Inc. v.
Claim Number: FA0711001109407
Complainant is H-D Michigan Inc. (“Complainant”), represented by David
M. Kelly, of Finnegan,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <roedershd.com> and <southrichmondhd.com>, registered with Compana, 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.
Hugues G. Richard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum
On November 21, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 11, 2007 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com and firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant, H-D Michigan Inc., is a
Complainant owns hundreds of worldwide trademark registrations for the H-D mark. Complainant also owns hundreds of trademark registrations for the HARLEY-DAVIDSON mark.
Complainant has widely promoted, advertised and sold it’s products worldwide, over many years, and the HARLEY-DAVIDSON mark is one of the most recognized and famous marks over the world.
Complainant does not sell directly to the
public, but uses its network of over 1,500 authorized dealers around the world
(of which over 600 are in the
In particular, one of Complainant’s authorized
dealers is named Richmond Harley-Davidson, and another of Complainant’s
authorized dealers is named Roeder Harley-Davidson. Both of these authorized
dealerships have been in business for over thirty years. Roeder’s website is
located at the domain name <roederharley.com> and
Complainant contends that Respondent is using two domain names that are identical and/or confusingly similar to Complainant’s registered HD mark (and also to its registered HARLEY-DAVIDSON mark, of which the HD mark is a recognized shorthand) in order to attract internet users to Respondent’s websites which provide advertising and links to various commercial websites.
Complainant contends that Respondent does not
have rights or legitimate interests in the domain names as Respondent has no
intellectual property rights in the HD mark and has never been commonly known
by this mark. Moreover, Respondent’s use and registration of the domain names
does not constitute a bona fide offering of goods, as Respondent knowingly
included the words “hd,” “roeder,” and “
Finally, Complainant contends that Respondent, who has engaged in a pattern of registering trademark related domain names, has registered the domain names in bad faith in order to attract internet users to its pay-per-click websites for commercial gain, by creating a likelihood of confusion with Complainant and its famous HD mark.
Respondent does not admit to the elements of 4(a) of the Policy, but agrees to the relief requested by Complainant and consents to a unilateral transfer of the domain names to Complainant upon order of the Panel to do so.
Respondent requests that, in accordance with prior UDRP and WIPO decisions, the Panel take the more expeditious course and order the immediate transfer of the disputed domain names.
The Panel finds that where Respondent has agreed to comply with
Complainant’s request, Panel must decide to forego the traditional UDRP
analysis and order the immediate transfer of the domain names, in accordance
with the common request. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd.
– Cayman Web Dev., FA 133625 (Nat. Arb. Forum
Because Respondent has consented to the relief requested by Complainant, Panel finds it is not necessary to review the facts supporting the claim.
Having established that both parties have asked that the domain names be transferred to the Complainant, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <roedershd.com> and <southrichmondhd.com> domain names be TRANSFERRED from Respondent to Complainant.
Hugues G. Richard, Panelist
Dated: January 7, 2008
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