H-D Michigan, LLC v. Bularangi Limited / Alison Howie
Claim Number: FA1106001395425
Complainant is H-D Michigan, LLC (“Complainant”), represented by Kate Duckworth of Baldwins Intellectual Property, New Zealand. Respondent is Bularangi Limited / Alison Howie (“Respondent”), New Zealand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <harleytoursnewzealand.com>, registered with REGISTER.COM, 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 23, 2011; the National Arbitration Forum received payment on June 23, 2011.
On June 28, 2011, REGISTER.COM, INC. confirmed by e-mail to the National Arbitration Forum that the <harleytoursnewzealand.com> domain name is registered with REGISTER.COM, INC. and that Respondent is the current registrant of the name. REGISTER.COM, INC. has verified that Respondent is bound by the REGISTER.COM, INC. 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 July 1, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 21, 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@harleytoursnewzealand.com. Also on July 1, 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 July 27, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <harleytoursnewzealand.com> domain name is confusingly similar to Complainant’s HARLEY-DAVIDSON mark.
2. Respondent does not have any rights or legitimate interests in the <harleytoursnewzealand.com> domain name.
3. Respondent registered and used the <harleytoursnewzealand.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, H-D Michigan, LLC, owns the HARLEY-DAVIDSON mark which it uses in connection with the manufacture, advertisement, and sale of motorcycles as well as related goods and services such as motorcycles tours and tour operations. Complainant has multiple registrations for its HARLEY-DAVISON mark with the Intellectual Property Office of New Zealand (“IPONZ”) (e.g., Reg. No. (210) 159628 registered November 29, 1988).
Respondent, Bularangi Limited / Alison Howie, registered the disputed domain name on February 28, 2004. The <harleytoursnewzealand.com> domain name resolves to a website which promotes Respondent’s motorcycle tour operations business.
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 registration of a trademark with a federal trademark authority establishes a complainant’s rights in said mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)). Complainant has registered its HARLEY-DAVIDSON mark multiple times with IPONZ (e.g., Reg. No. (210) 159628 registered November 29, 1988). Therefore, the Panel finds that Respondent has rights in its HARLEY-DAVISON mark for the purposes of Policy ¶ 4(a)(i).
Complainant contends that the <harleytoursnewzealand.com> domain name is confusingly similar to its HARLEY-DAVIDSON mark. Respondent eliminates the hyphen and word “DAVIDSON” from Complainant’s mark in its domain name. Additionally, Respondent adds a string of descriptive words to the disputed domain name. Lastly, Respondent adds the generic top-level domain “.com” to the domain name. The first two of these changes makes little difference to the recognition of Complainant’s mark within the domain name because phonetically the hyphen does not change the reading of the mark and Complainant’s mark is often shortened to “HARLEY.” Thus, the elimination of the hyphen and the word “DAVIDSON” does not impact the Panel’s finding of confusing similarity. 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 Down E. Enter. Inc. v. Countywide Commc’ns, FA 96613 (Nat. Arb. Forum Apr. 5, 2001) (finding the domain name <downeastmagazine.com> confusingly similar to the complainant’s common law mark DOWN EAST, THE MAGAZINE OF MAINE). The addition of the descriptive word “tours” and the geographic term “new zealand” is likewise insufficient to distinguish the domain name from the mark because, as a descriptor of Complainant’s business, it increases the likelihood that Internet users will assume that the domain name is affiliated with Complainant. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i). Lastly, the addition of the gTLD “.com” has no influence over the Panel’s finding of confusing similarity as it is a required element of domain names. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); 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.”). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s HARLEY-DAVIDSON mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) is met.
Complainant has made a prima facie case for its assertion that Respondent lacks rights and legitimate interests in the disputed domain name. Respondent now has the burden to disprove this. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement. Here, Complainant has alleged that Respondent does not own any rights in the terms STARWOOD or STARWOODS, and that Respondent’s use of the Domain Name is not a fair one. These unsupported assertions, though sparse, are sufficient to make a prima facie showing in regard to the legitimacy element.”); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”). However, Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) and Branco do Brasil S.A. v. Sync Tech., D2000-0727 (WIPO Sept. 1, 2000) demonstrate that by not responding to a complaint, a respondent gives the panel license to assume that the respondent does not have rights or legitimate interests in the disputed domain name.
Complainant contends that Respondent is not commonly known by the <harleytoursnewzealand.com> domain name. Complainant has not authorized Respondent to use its HARLEY-DAVIDSON mark. The disputed domain name’s WHOIS information lists “Bularangi Limited / Alison Howie” as the domain name registrant. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”).
The <harleytoursnewzealand.com> domain name resolves to a website which promotes Respondent’s competing motorcycle tour operations business. Previous panels have found in cases such as Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) and MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) that the use of a domain name to divert Internet users to Respondent’s website is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Thus, the Panel finds that Respondent’s use of the disputed domain does not fall within the realm of protected uses of domain names under Policy ¶¶ 4(c)(i) and 4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) is satisfied.
Respondent may not register a domain name which is confusingly similar to a complainant’s trademark and which disrupts a complainant’s business. Past panels have found cases such as Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) and Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) illustrative of the consistent holding that the use of a domain name to promote a respondent’s business which offers similar services as the complainant is disruptive. Complainant offers tour operations services. Respondent’s disputed domain name promotes similar services from which Respondent benefits. Internet users who reach the disputed domain name due to its confusing similarity to Complainant’s mark may end up purchasing services through Respondent rather than Complainant. Thus, the Panel finds that Respondent’s registration and use of the disputed domain name disrupts Complainant’s business pursuant to Policy ¶ 4(b)(iii).
Complainant argues that Respondent has registered and used the <harleytoursnewzealand.com> domain name in bad faith by intentionally attracting Internet users by creating a likelihood of confusion as to the affiliation of the disputed domain to Complainant’s mark and profiting from this confusion. Panels have found that, where the attraction for commercial gain was a factor in registering and using a domain name, the respondent acted in bad faith. See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services). The Panel infers that Respondent’s registration and use of the <harleytoursnewzealand.com> domain name was a product of the potential for commercial gain from Internet users’ confusion, thus demonstrating bad faith in accordance with Policy ¶ 4(b)(iv).
The Panel finds that Policy ¶ 4(a)(iii) is satisfied by Complainant’s showing of bad faith registration and use of the <harleytoursnewzealand.com> domain name by Respondent.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <harleytoursnewzealand.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court NY (Ret.)
Dated: July 27, 2011
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