H-D
Claim Number: FA0908001278491
PARTIES
Complainant is H-D Michigan LLC (“Complainant”), represented by David
M. Kelly, of Finnegan Henderson Farabow Garrett &
Dunner L.L.P.,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <harley-pussys.com>, <harley-pussys.net>,
<harley-pussys.org>, and <harley-pussys.info>,
registered with Cronon AG Berlin.
PANEL
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.
Dennis A. Foster as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on August 10, 2009; the
National Arbitration Forum received a hard copy of the Complaint on August 11, 2009. The Complaint was submitted in German and
English.
On August 19, 2009, Cronon AG Berlin confirmed by e-mail to the
National Arbitration Forum that the <harley-pussys.com>, <harley-pussys.net>,
<harley-pussys.org>, and <harley-pussys.info>
domain names are registered with Cronon AG
Berlin and that the Respondent is the current registrant of the names. Cronon AG
Berlin has verified that Respondent is bound by the Cronon AG Berlin 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 August 25, 2009, a German Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of September 14, 2009 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
postmaster@harley-pussys.com, postmaster@harley-pussys.net,
postmaster@harley-pussys.org, and postmaster@harley-pussys.info by
e-mail.
A Response was received in electronic copy on September
14, 2009 prior to the Response deadline; however no hard copy was
received. The National Arbitration Forum therefore does
not consider the Response to be in compliance with ICANN Rule 5.
However, as discussed below, because the Response states the Respondent
does not contest the Complaint and is willing to turn over the disputed domain
names, the Panel has decided to accept the email Response per article 10 of the
Rules.
The domain name registration agreements are in German and the
Respondent is located in
On September 17, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Dennis A. Foster as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
--Since 1903, the Complainant has manufactured, advertised, and sold
motorcycles under the HARLEY-DAVIDSON trademark and trade name. In addition, the Complainant has offered for
decades motorcycle parts and accessories, motorcycle clothing, and various other
products and services under the HARLEY mark.
--The Complainant spends many millions of dollars every year to
extensively and widely advertise and promote its products and services under
the HARLEY marks.
--The Complainant has more than 1,500 authorized dealers throughout the
world, including
--The Harley-Davidson mark, which is synonymous with the HARLEY mark,
has long been one of the world’s most famous brands.
--The Complainant owns hundreds of trademarks worldwide for HARLEY.
--The Respondent registered the disputed domain names on February 8,
2003, long after the Complainant began using the HARLEY marks.
--The Respondent uses the disputed domain names for commercial pornographic
web sites that have multiple references to motorcycles.
--The disputed domain names are confusingly similar to Complainant’s
HARLEY marks because each is comprised of the Complainant’s mark in its
entirety, a generic term, and a hyphen.
UDRP Panels have consistently held that the addition of a generic term
and/or hyphens to a mark in a domain name does not distinguish the domain name
from that mark.
--Respondent’s registration and use of the disputed domain names for a
commercial web site displaying pornographic material does not constitute a bona
fide offering of goods or services or a legitimate noncommercial or fair use
under the UDRP.
--The Respondent is not and has not been commonly known by the disputed
domain names.
--The Respondent can not justify his misappropriation of a trademark in
a domain name by relying on concurrent infringing use of that same mark in a
trade name.
--Respondent’s registration and use of the disputed domain names
constitute bad faith under section 4(b)(iv) of the UDRP because the Respondent
uses the disputed domain names to intentionally attract, for commercial gain,
Internet users to his web sites by creating a likelihood of confusion with
Complainant and its famous HARLEY marks as to the source, sponsorship, affiliation,
and/or endorsement of Respondent’s web sites.
--The Respondent’s registration and use of the disputed domain names
for pornographic web sites constitute bad faith under Section 4(b)(iii) because
Respondent’s activities disrupt Complainant’s business and tarnish
Complainant’s HARLEY marks.
--The Respondent’s use of the disputed domain names for pornographic websites
constitutes an independent ground of bad faith under prior UDRP decisions.
--The Respondent’s activities constitute bad faith under section 4(b)(ii)
because the Respondent has a bad-faith pattern of registering domain names
containing Complainant’s HARLEY marks, as shown by his registration of the four
disputed domain names and the additional domain name <harley-pussys.de>.
--There is no question that Respondent registered the disputed domain
names with knowledge of the Complainant’s rights in its internationally famous
and federally registered HARLEY marks because the Respondent’s websites
directly refer to motorcycles.
B. Respondent
The Respondent has advised in its Response that he has no objection to
the disputed domain names being turned over to the Complainant.
FINDINGS
The Complainant, Harley-Davidson, is a
manufacturer of motorcycles, accessories and other merchandise using the marks
HARLEY-DAVIDSON and HARLEY. The
Complainant has been in business for over a century and its marks are famous
world-wide.
Although the Complainant’s motorcycle
business is not connected with pornography, the Respondent’s disputed domain
names, <harley-pussys.com>, <harley-pussys.net>, <harley-pussys.org>, and <harley-pussys.info> lead to web
sites that offer sexually explicit adult entertainment.
DISCUSSION
The Panel notes that the Respondent has consented to the transfer of
the disputed domains to the Complainant.
The Panel is certain this is because the Respondent read and understood
the convincing Complaint and supporting documents. The Panel believes there is no further
dispute to be resolved and that the issues involved with using a famous
trademark to attract web traffic to pornographic web sites have been covered in
many previous panel decisions
See Boehringer Ingelheim Int’l
GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9,
2003) (transferring the domain name registration where the respondent
stipulated to the transfer); see also Disney Enters., Inc. v. Morales,
FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent
has agreed to comply with Complainant’s request, the Panel felt it to be
expedient and judicial to forego the traditional UDRP analysis and order the
transfer of the domain names.”).
The Panel
therefore has decided to proceed directly to a Decision in favor of the
Complainant.
DECISION
The Respondent has consented to the transfer
of the disputed domain names.
Accordingly, it is Ordered that the <harley-pussys.com>, <harley-pussys.net>,
<harley-pussys.org> and
<harley-pussys.info> domain names
be TRANSFERRED from Respondent to Complainant.
Dennis A. Foster, Panelist
Dated: October 1, 2009
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