H-D
Claim Number: FA0909001286050
Complainant is H-D
Michigan, LLC (“Complainant”), represented by David M. Kelly, of Finnegan, Henderson, Farabow, Garrett &
Dunner L.L.P., Washington D.C., USA.
Respondent is Juan Liu (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <hdleatherjacket.com>, registered with Fastdomain Inc.
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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 24, 2009; the National Arbitration Forum received a hard copy of the Complaint on September 25, 2009.
On September 28, 2009, Fastdomain Inc. confirmed by e-mail to the National Arbitration Forum that the <hdleatherjacket.com> domain name is registered with Fastdomain Inc. and that Respondent is the current registrant of the name. Fastdomain Inc. has verified that Respondent is bound by the Fastdomain Inc. 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 October 1, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 21, 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@hdleatherjacket.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 27, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <hdleatherjacket.com> domain name is confusingly similar to Complainant’s HD mark.
2. Respondent does not have any rights or legitimate interests in the <hdleatherjacket.com> domain name.
3. Respondent registered and used the <hdleatherjacket.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Respondent, Juan Liu, registered the <hdleatherjacket.com> domain name on September 4, 2009. The disputed domain name resolves to a website selling counterfeit versions of Complainant’s products, namely, jackets and vests. The claims appearing at the disputed domain name and its resolving website give the clear impression that said products are being sold “exclusively” through an “authorized Harley Davidson Leather Jacket” business. Complainant asserts that it has not authorized Respondent to use its HD mark in any capacity.
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
The Panel finds that Complainant’s registration of its HD
mark (Reg. No. 2,315,877 issued February 8, 2000) with the USPTO sufficiently
demonstrates Complainant’s rights in the mark under Policy ¶ 4(a)(i). Furthermore,
the Panel finds that it is not necessary for Complainant to have registered its
HD mark in the country of Respondent’s residence. See Renaissance Hotel Holdings, Inc. v.
Renaissance
Respondent’s <hdleatherjacket.com> domain name incorporates Complainant’s HD mark with the mere incorporation of the descriptive phrase “leather jacket” and the generic top-level domain “.com.” The Panel finds that neither alteration sufficiently differentiates the disputed domain name from Complainant’s HD mark. Therefore, the Panel concludes that Respondent’s <hdleatherjacket.com> domain name is confusingly similar to Complainant’s HD mark under Policy ¶ 4(a)(i). See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have rights
or legitimate interests in the disputed domain name. Once Complainant
presents a prima facie case outlining these allegations, the burden
shifts to Respondent to establish it does have rights or legitimate interests
in the disputed domain name. The Panel finds that Complainant has presented
a sufficient prima facie case to support its allegations and that
Respondent has failed to submit a response in this proceeding. Therefore,
the Panel may assume that Respondent does not have rights or legitimate
interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).
However, the Panel will inspect the record and determine whether Respondent has
rights or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c). See Do The Hustle, LLC v. Tropic Web, D2000-0624
(WIPO Aug. 21, 2000) (holding that once the complainant asserts that the
respondent has no rights or legitimate interests with respect to the domain,
the burden shifts to the respondent to provide “concrete evidence that it has
rights to or legitimate interests in the domain name at issue”); see also
Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000)
(finding that failing to respond allows a presumption that the complainant’s
allegations are true unless clearly contradicted by the evidence).
The <hdleatherjacket.com> domain name resolves
to a commercial website offering products in direct competition with
Complainant as well as counterfeit versions of Complainant’s clothing products,
including leather jackets and vests displaying the HD mark. The Panel
finds that Respondent’s use of <hdleatherjacket.com> domain name
is neither a bona fide offering of goods or services under Policy ¶
4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶
4(c)(iii). See Hewlett-Packard
Co. v. Inversiones HP Milenium
Furthermore, Complainant contends that Respondent is not commonly known by the <hdleatherjacket.com> domain name under Policy ¶ 4(c)(ii). The WHOIS information lists the registrant as “Juan Liu” which bears no resemblance to the disputed domain name. Furthermore, there is no information in the record to suggest otherwise. Thus, the Panel concludes that Respondent is not commonly known by the <hdleatherjacket.com> domain name under Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent has registered and is using the confusingly similar disputed domain name, which was registered on September 4, 2009, to attract Internet users to Respondent’s website offering competing products and counterfeit versions of Complainant’s HD products. The Panel concludes that such use is likely disrupting Complainant’s business and thus, Respondent’s conduct constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business; see also Johnson & Johnson v. tziporah breuer, FA 1240474 (Nat. Arb. Forum Feb. 16, 2009) (finding that the respondent’s diversionary use of the disputed domain name to sell counterfeit versions of Complainant’s products has disrupted Complainant’s business).
Complainant
further contends that Respondent is intentionally attempting to capitalize on
the goodwill that Complainant has acquired in its HD mark through the use of
the confusingly similar domain name. The
Panel presumes that Respondent is profiting through the sale of the competing
and counterfeit products at the disputed domain name’s resolving website. Therefore, pursuant to Policy ¶ 4(b)(iv), the
Panel finds that Respondent’s use of the disputed domain name constitutes bad
faith registration and use. See Luck's Music Library v. Stellar
Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the
respondent engaged in bad faith use and registration by using domain names that
were identical or confusingly similar to the complainant’s mark to redirect
users to a website that offered services similar to those offered by the
complainant); see also State Fair of Tex. v. Granbury.com, FA 95288
(Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent
registered the domain name <bigtex.net> to infringe on the complainant’s
goodwill and attract Internet users to the respondent’s website).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hdleatherjacket.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: November 6, 2009
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