H-D
Claim Number: FA1003001314086
Complainant is H-D Michigan, LLC (“Complainant”), represented by Jonathan
M. Gelchinsky, of Finnegan, Henderson, Farabow, Garrett &
Dunner, L.L.P., Washington DC, USA.
Respondent is United Domain Brokers a/k/a Domain
Broker (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <harleydoctor.com>, registered with Enom.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 18, 2010.
On March 18, 2010, Enom confirmed by e-mail to the National Arbitration Forum that the <harleydoctor.com> domain name is registered with Enom and that Respondent is the current registrant of the name. Enom has verified that Respondent is bound by the Enom 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 March 19, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 8, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@harleydoctor.com. Also on March 19, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 14, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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" through submission of a Written Notice, as defined in Rule 1. 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 <harleydoctor.com> domain name is confusingly similar to Complainant’s HARLEY mark.
2. Respondent does not have any rights or legitimate interests in the <harleydoctor.com> domain name.
3. Respondent registered and used the <harleydoctor.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, H-D Michigan,
LLC, owns and licenses, directly and indirectly, intellectual property to
various Harley-Davidson companies, including Harley-Davidson Motor Company
Group, LLC. Complainant holds
trademark registrations with the United States Patent and Trademark Office
(“USPTO”) for the HARLEY mark (e.g.,
Reg. No. 1,352,679 registered August 6, 1985).
Respondent registered the <harleydoctor.com> domain name on March 17, 2004. The disputed domain name redirects Internet users to a website displaying links to third-party websites, some of which compete with Complainant’s business. Respondent has offered to sell the disputed domain name through various third-party channels. In addition, a domain strategist with Respondent had an exchange regarding the disputed domain name with Complainant’s employee on the Facebook page of another employee of Complainant. In this exchange, Respondent’s strategist offered to the sell the disputed domain name to Complainant.
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.
Complainant asserts rights in the HARLEY mark through the registration of this mark with the USPTO (e.g., Reg. No. 1,352,679 registered August 6, 1985). The Panel finds this registration with the USPTO sufficiently establishes Complainant’s rights in the HARLEY mark pursuant to Policy ¶ 4(a)(i). See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant claims Respondent’s <harleydoctor.com> domain name is confusingly similar to
its mark. Respondent incorporates the
HARLEY mark in its entirety in the disputed domain name. Respondent then adds the descriptive term “doctor”
in the disputed domain name. Respondent also
attaches the generic top-level domain (“gTLD”) “.com” to Complainant’s mark in
the disputed domain name. The Panel
finds these slight alterations do not distinguish Respondent’s disputed domain
name from Complainant’s mark. Therefore,
the Panel finds Respondent’s <harleydoctor.com>
domain name is confusingly similar to Complainant’s HARLEY mark pursuant to
Policy ¶ 4(a)(i).
See Arthur Guinness Son & Co.
(Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding
confusing similarity where the domain name in dispute contains the identical
mark of the complainant combined with a generic word or term); see also Google Inc. v. Xtraplus Corp.,
D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names
were confusingly similar to Complainant’s GOOGLE mark where the respondent
merely added common terms such as “buy” or “gear” to the end); see also Jerry Damson, Inc. v.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must show Respondent lacks rights or legitimate interests in the <harleydoctor.com> domain name. After Complainant makes out this prima facie case, the burden then shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name. The Panel may view Respondent’s failure to submit a Response as evidence that Respondent lacks rights or legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Despite Respondent’s failure to respond, the Panel will review the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
The WHOIS information does not show that Respondent is commonly known by the disputed domain names. In addition, Complainant claims Respondent is not sponsored by or legitimately affiliated with Complainant in any way nor has Complainant given Respondent permission to use the HARLEY mark in a domain name. Without evidence to the contrary, the Panel finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); 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).
Complainant argues Respondent uses the disputed domain name
to redirect Internet users to a website featuring links to third-party
websites, some of which directly compete with Complainant’s business. Respondent presumably receives pay-per-click
fees from each Internet user that is redirected to these third-party
websites. Therefore, the Panel finds
Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods and services
under Policy ¶ 4(c)(i) or a legitimate noncommercial fair use under Policy ¶
4(c)(iii). See Computer Doctor Franchise
Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000)
(finding that the respondent’s website, which is blank but for links to other
websites, is not a legitimate use of the domain names); see also Jerry Damson, Inc. v.
Respondent is offering the disputed domain name for sale through various third-party channels. In addition, a domain strategist with Respondent had an exchange regarding the disputed domain name with Complainant’s employee on the Facebook page of another employee of Complainant. In this exchange, Respondent’s strategist offered to the sell the domain name to Complainant and valued the domain name at $2,000. Therefore, the Panel finds Respondent’s offer to sell the disputed domain name does not indicate Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“An attempt by a respondent to sell a domain name to a complainant who owns a trademark with which the domain name is confusingly similar for an amount in excess of out-of-pocket costs has been held to demonstrate a lack of legitimate rights or interests.”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
As previously discussed, Respondent is offering the disputed
domain name for sale via third-party websites.
Respondent also offered to sell the disputed domain name to Complainant
for $2,000. Therefore, the Panel finds
Respondent’s attempt to sell the disputed domain name for more than its
out-of-pocket costs constitutes bad faith registration and use under Policy ¶
4(b)(i). See George Weston Bakeries Inc. v.
McBroom, FA 933276 (Nat. Arb.
Forum Apr. 25, 2007) (concluding that the respondent registered and was using
the <gwbakeries.mobi> domain name in bad faith according to Policy ¶
4(b)(i) where it offered it for sale for far more than its estimated
out-of-pocket costs it incurred in initially registering the disputed domain
name); see also Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the
respondent’s offer to sell the domain name for $2,000 sufficient evidence of
bad faith registration and use under Policy ¶ 4(b)(i)).
The Panel also finds Respondent’s use of the disputed domain names to redirect Internet users to websites that list links to third-party websites, including links to Complainant’s competitors, disrupts Complainant’s business and constitutes registration and use in bad faith pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
Furthermore, Respondent likely profits from the receipt of
pay-per-click fees through its use of the <harleydoctor.com>
domain name. Complainant argues
Respondent is attempting to use the disputed domain name to intentionally
attract, for commercial gain, Internet users to its pay-per-click website by
creating a likelihood of confusion with Complainant and its HARLEY mark as to
the source, sponsorship, affiliation, and/or endorsement of Respondent and/or
its website. The Panel finds this
behavior constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See T-Mobile
USA, Inc. v. utahhealth, FA
697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of
a domain name confusingly similar to a complainant’s mark to direct Internet
traffic to a commercial “links page” in order to profit from click-through fees
or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also The Ass’n of Junior Leagues
Int’l Inc. v. This Domain Name My Be For
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <harleydoctor.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: April 28, 2010
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