Claim Number: FA0908001278491
Complainant is H-D Michigan LLC (“Complainant”), represented by David
M. Kelly, of Finnegan Henderson Farabow Garrett &
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.
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.
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 firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, and email@example.com 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.
Complainant requests that the domain names be transferred from Respondent to 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
--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.
The Respondent has advised in its Response that he has no objection to the disputed domain names being turned over to the Complainant.
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.
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.
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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