National Arbitration Forum




H-D Michigan Inc. v. Texas International Property Associates

Claim Number: FA0711001109407



Complainant is H-D Michigan Inc. (“Complainant”), represented by David M. Kelly, of Finnegan, Henderson, Farabow, Garrett, & Dunner L.L.P., 901 New York Avenue Nw, Washington, DC 20001.  Respondent is Texas International Property Associates (“Respondent”), represented by Gary Wayne Tucker, of Law Office of Gary Wayne Tucker, PO Box 703431, Dallas, TX 75370.




The domain names at issue are <> and <>, 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 electronically on November 15, 2007; the National Arbitration Forum received a hard copy of the Complaint on November 16, 2007.


On November 20, 2007, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <> and <> domain names are registered with Compana, LLC and that the Respondent is the current registrant of the name.  Compana, LLC has verified that Respondent is bound by the Compana, LLC registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).


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 and by e-mail.


A timely Response was received and determined to be complete on December 11, 2007.


On December 18, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hugues G. Richard as Panelist.



Complainant requests that the domain names be transferred from Respondent to Complainant.



A. Complainant

Complainant, H-D Michigan Inc., is a Michigan based corporation which owns and licenses intellectual property to various Harley-Davidson companies. Complainant has been manufacturing, advertising and selling motorcycles under the Harley-Davidson trademark since 1903, and has been using the H-D mark since 1912.


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 United States). Complainant has allowed these dealers to use the H-D trademarks for their HARLEY-DAVIDSON dealerships and websites. Many of these dealership websites are made of the H-D trademark and a geographic term identifying the dealer’s location.


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 <> and Richmond’s website is located at <>.


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 “Richmond” in the disputed domain names, in order to use the widespread reputation of the mark to attract internet users to its commercial websites.


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.


B. Respondent

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 Jan. 9, 2003); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004; see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005); see also Williams-Sonoma, Inc. v. EZ-Port, Case No. D2000-0207 WIPO May 5, 2000) (Where the Panels felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names, where the Respondent stipulated to the transfer).


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 <> and <> domain names be TRANSFERRED from Respondent to Complainant.




Hugues G. Richard, Panelist
Dated: January 7, 2008







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