H-D Michigan, LLC v. Digirock, Inc. a/k/a Value Domain
Claim Number: FA1101001368384
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 Digirock, Inc. a/k/a Value Domain (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <harleydavidson-japan.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 January 19, 2011; the National Arbitration Forum received payment on January 19, 2011.
On January 20, 2011, Enom confirmed by e-mail to the National Arbitration Forum that the <harleydavidson-japan.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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 25, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 14, 2011 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@harleydavidson-japan.com. Also on January 25, 2011, 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 February 17, 2011, 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <harleydavidson-japan.com> domain name is confusingly similar to Complainant’s HARLEY-DAVIDSON mark.
2. Respondent does not have any rights or legitimate interests in the <harleydavidson-japan.com> domain name.
3. Respondent registered and used the <harleydavidson-japan.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, H-D Michigan, LLC, manufactures, advertises, and sells motorcycles under the HARLEY-DAVIDSON mark. Complainant also offers motorcycle parts and accessories, motorcycle clothing, and various other products and services under the HARLEY-DAVIDSON mark. Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the HARLEY-DAVIDSON mark (e.g., Reg. No. 526,750 issued June 27, 1950). In addition, Complainant holds numerous trademark registrations with the Japan Patent Office (“JPO”) for the HARLEY-DAVIDSON mark (e.g., Reg. No. 1,157,862 issued October 1, 1975).
Respondent registered the <harleydavidson-japan.com> domain name on June 16, 2005. The disputed domain name resolves to a commercial motorcycle-related website that promotes third-party motorcycle batteries that compete with Complainant’s products. In addition, the resolving website contains hyperlinks for Complainant’s competitors.
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 claims rights in the HARLEY-DAVIDSON mark through its registrations of the mark with the USPTO (e.g., Reg. No. 526,750 issued June 27, 1950) and the JPO (e.g., Reg. No. 1,157,862 issued October 1, 1975). The Panel finds these trademark registrations sufficiently prove Complainant’s rights in the HARLEY-DAVIDSON mark pursuant to Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
Complainant contends Respondent’s <harleydavidson-japan.com> domain name is confusingly similar to its HARLEY-DAVIDSON mark. Respondent fully incorporates the terms in Complainant’s mark in the disputed domain name and then merely omits the hyphen between the terms in the mark. Respondent also attaches a hyphen and the geographic term “Japan” to Complainant’s mark. Finally, Respondent affixes the generic top-level domain (“gTLD”) “.com” to Complainant’s mark in the disputed domain name. The Panel finds that Respondent’s alterations do not negate a finding of confusingly similar. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); see also Skype Ltd. v. Sacramento, FA 747948 (Nat. Arb. Forum Aug. 30, 2006) (“The addition of the geographic term [“Brasil”] does not avoid confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Therefore, the Panel holds that Respondent’s <harleydavidson-japan.com> domain name is confusingly similar to Complainant’s HARLEY-DAVIDSON mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant must first make a prima facie case showing Respondent lacks rights and legitimate interests in the <harleydavidson-japan.com> domain name under Policy ¶ 4(a)(ii). 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 and legitimate interests. 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 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 evaluate the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant asserts it has not licensed or otherwise authorized Respondent to use its HARLEY-DAVIDSON mark. Moreover, the WHOIS information lists “Digirock, Inc. a/k/a Value Domain” as the registrant of the disputed domain name, which the Panel finds is not similar to the <harleydavidson-japan.com> domain name. Without evidence to the contrary, the Panel concludes that Respondent is not commonly known by the <harleydavidson-japan.com> domain name under 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 M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant alleges Respondent uses the <harleydavidson-japan.com> domain name for a commercial, motorcycle-related website. Complainant argues that the resolving website advertises and/or promotes third-party motorcycle batteries that compete with Complainant’s products. Complainant further alleges that Respondent features advertisements for motorcycle-related websites that offer directly competing motorcycle-related products. Complainant contends that Respondent profits from this use through the receipt of pay-per-click fees. Based on the evidence in the record, the Panel finds that Respondent uses the disputed domain name to operate a commercial website that offers products in competition with Complainant’s products. The Panel also presumes that Respondent profits from the receipt of pay-per-click fees. Accordingly, the Panel holds that Respondent does not use the <harleydavidson-japan.com> domain name to make a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
Complainant also alleges Respondent use the <harleydavidson-japan.com> domain name in an attempt to pass itself off as Complainant. Complainant claims that Respondent use its black-and-orange color scheme on the website resolving from the disputed domain name. Furthermore, Complainant argues that Respondent prominently displays its HARLEY-DAVIDSON mark on its resolving website. Based on the evidence in the record, the Panel finds that Respondent uses the disputed domain name in an attempt to pass itself off as Complainant, which provides further evidence that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims the <harleydavidson-japan.com> domain name redirects Internet users seeking its products and services to a website that offers competing products as well as hyperlinks for Complainant’s competitors. The Panel finds similarly. Therefore, the Panel finds that Respondent’s domain name disrupts Complainant’s business, which constitutes registration and use in bad faith under Policy ¶ 4(b)(iii). 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 Policy ¶ 4(b)(iii).”); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
As previously discussed, Respondent uses the disputed domain name to operate a commercial website as well as profit from the receipt of pay-per-click fees. Furthermore, the <harleydavidson-japan.com> domain name is confusingly similar to Complainant’s HARLEY-DAVIDSON mark. Therefore, the Panel finds that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s HARLEY-DAVIDSON mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Consequently, the Panel finds that this behavior constitutes registration and use in bad faith pursuant to Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also 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)).
Finally, the Panel holds that Respondent’s attempt to pass itself as Complainant provides further evidence that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored 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 <harleydavidson-japan.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: March 3, 2011
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