H-D Michigan, LLC v. Vietri Anwari d/b/a BLBiz
Claim Number: FA1012001364034
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 Vietri Anwari d/b/a BLBiz (“Respondent”), Indonesia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <harleydavidson-store.us>, registered with Wild West Domains, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 17, 2010; the Forum received a hard copy of the Complaint on December 17, 2010.
On December 17, 2010, Wild West Domains, Inc. confirmed by e-mail to the Forum that the <harleydavidson-store.us> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On December 20, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 10, 2011 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 11, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed he Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the 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 <harleydavidson-store.us> domain name is confusingly similar to Complainant’s HARLEY DAVIDSON mark.
2. Respondent does not have any rights or legitimate interests in the <harleydavidson-store.us> domain name.
3. Respondent registered and used the <harleydavidson-store.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, H-D Michigan, LLC, has manufactured, advertised, and sold motorcycles under its HARLEY-DAVIDSON mark since 1903. Complainant also uses its mark to offer motorcycle parts and accessories, motorcycle clothing, and various other products and services. Complainant’s HARLEY-DAVIDSON mark is registered both with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,078,871 issued December 6, 1977) and Indonesia’s Directorate General of Copyright, Patent, and Trademark (“DGCPT”) (e.g., Reg. No. 310315 issued August 26, 1994).
Respondent, Vietri Anwari d/b/a BLBiz, registered the disputed domain name on February 18, 2009. The disputed domain name resolves to a commercial website that uses the trade name “Harley Davidson Store” and features link and banner advertisements for websites offering products that directly compete with Complainant’s offerings. Respondent’s resolving website also advertises and offers an array of apparel, boots and accessories from Complainant’s direct competitors, as well as Complainant’s own products, which Respondent is not authorized to sell.
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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant asserts rights in its HARLEY-DAVIDSON mark by virtue of its registration with both the USPTO (e.g., Reg. No. 1,078,871 issued December 6, 1977) and Indonesia’s DGCPT (e.g., Reg. No. 310315 issued August 26, 1994). The Panel finds that Complainant’s registrations of its mark with governmental trademark authorities worldwide is sufficient evidence of Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under UDRP ¶ 4(a)(i)); see also Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the UDRP ¶ 4(a)(i)).
Complainant contends that Respondent’s <harleydavidson-store.us> domain name is confusingly similar to Complainant’s HARLEY-DAVIDSON mark. Respondent’s disputed domain name removes the hyphen from between the terms in Complainant’s mark and then adds a hyphen to the end of Complainant’s mark along with the generic term “store,” and the country-code top-level domain (“ccTLD”) “.us.” The Panel finds these changes are insufficient to differentiate the disputed domain name from Complainant’s mark. See Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June 19, 2000) (holding that the domain name <cspan.net>, which omitted the hyphen from the trademark spelling, C-SPAN, is confusingly similar to the complainant's mark); see also Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a [UDRP] ¶ 4(a)(i) confusingly similar analysis.”); see also Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). For these reasons, the Panel finds that Respondent’s <harleydavidson-store.us> domain name is confusingly similar to Complainant’s HARLEY-DAVIDSON mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <harleydavidson-store.us> domain name. The burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) when Complainant makes a prima facie case in support of its allegations. The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume Respondent does not have 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 [UDRP] ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
There is no evidence in the record that would allow the Panel to conclude that Respondent owns any service marks or trademarks that reflect the <harleydavidson-store.us> domain name. Therefore, the Panel finds that Respondent does not have rights or legitimate interests pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name); see also Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Complainant argues that Respondent is not commonly known by the disputed domain name. Although Respondent uses the trade name “Harley Davidson Store” on his website, there is no other evidence that indicates that Respondent is commonly known by the disputed domain name. In fact, the WHOIS information identifies the registrant of the disputed domain name as “Vietri Anwari d/b/a BLBiz.” Therefore, the Panel concludes that Respondent lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(iii). See Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (“[O]ther than Respondent’s infringing use of the ULTIMATE ELECTRONICS mark on its web page and in its domain name . . . , there is no evidence that Respondent is commonly known by the <ultimateelectronics.net> domain name pursuant to [UDRP] ¶ 4(c)(ii), or that there is any other entity besides Complainant authorized to trade as ULTIMATE ELECTRONICS.”); see also Target Brands, Inc. v. Hosting Provider Serv., FA 187396 (Nat. Arb. Forum Sept. 30, 2003) (“While Respondent may have held itself out as TARGETPILLS.COM on its website at <targetpills.com>, there is no evidence that Respondent was actually or commonly known by the disputed domain name. Both the fact that Respondent declined to respond to Complainant’s charge and the fact that Respondent’s operations suddenly ceased suggest that Respondent was not legitimately known as <targetpills.com>.”).
Complainant states that Respondent’s disputed domain name resolves to a website that advertises and sells apparel, boots, and accessories of Complainant’s competitors as well as Complainant’s products, which Respondent is not authorized to sell. Additionally, Respondent’s resolving website also features advertisements for competing websites. The Panel finds that Respondent likely profits both from the sale of goods on the resolving website as well as from the click-through fees collected from the displayed link and banner advertisements. Therefore, the Panel concludes that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors); see also Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is neither a bona fide offering of goods or services under UDRP ¶ 4(c)(i) nor a legitimate noncommercial or fair use under UDRP ¶ 4(c)(iii) because the registrant presumably receives compensation for each misdirected Internet user).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent has demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain name to sell products directly competing with those offered by Complainant under its HARLEY-DAVIDSON mark, as well as Complainant’s own products, which the Panel concludes is a disruption of Complainant’s business. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to [UDRP] ¶ 4(b)(iii).”); see also Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant).
The Panel further finds that Respondent profits as a result of its use of the confusingly similar disputed domain name, both through its direct sale of Complainant’s merchandise and the merchandise of Complainant’s competitors, but also through the receipt of click-through fees associated with the link and banner advertisements to competing websites displayed on the resolving website. The Panel finds that this demonstrates Respondent’s bad faith registration and use and supports a finding of such under Policy ¶ 4(b)(iv). See Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to UDRP ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to [UDRP] ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <harleydavidson-store.us> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: January 19, 2011
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