H-D Michigan, LLC v. Perfect Privacy LLC
Claim Number: FA1108001403191
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 Perfect Privacy LLC (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <harley-repair.com>, registered with Register.com, Inc.
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 August 15, 2011; the National Arbitration Forum received payment on August 15, 2011.
On August 18, 2011, Register.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <harley-repair.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 August 18, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 7, 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@harley-repair.com. Also on August 18, 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 September 13, 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 <harley-repair.com> domain name is confusingly similar to Complainant’s HARLEY mark.
2. Respondent does not have any rights or legitimate interests in the <harley-repair.com> domain name.
3. Respondent registered and used the <harley-repair.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, H-D Michigan, LLC, is a world-renowned manufacturer and purveyor of motorcycles, motorcycle accessories, and motorcycle services. Complainant owns a large family of trademark registrations for the HARLEY mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,352,679 registered August 6, 1985). Complainant utilizes the mark to label its motorcycles, apparel, and storefronts.
Respondent, Perfect Privacy LLC, registered the disputed domain name on July 11, 2011. The disputed domain name resolves to a commercial website which offers for sale unauthorized copies of service and repair manuals for Complainant’s motorcycles, in direct competition with Complainant’s own sale of these items.
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 argues that it has established its rights in the HARLEY mark by registering that mark with the USPTO (e.g., Reg. No. 1,352,679 registered August 6, 1985). Complainant has provided sufficient evidence in the form of trademark search screen prints from the USPTO website which verify that the mark is registered and that it is the rightful owner of the registrations. Thus, the Panel finds that Complainant has established its rights in the HARLEY mark under Policy ¶ 4(a)(i) by registering the mark with the USPTO. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also 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 Policy ¶ 4(a)(i)).
Complainant also argues that Respondent’s <harley-repair.com> domain name is confusingly similar to its HARLEY mark. The disputed domain name includes the entire mark while adding the generic-top level domain (“gTLD”) “.com,” a hyphen, and the generic term “repair.” The Panel finds that the changes made are essentially nil due to the fact that the disputed domain name retains the distinctive nature of the mark and, Internet users may believe that the disputed domain name signifies a legitimate servicer of Complainant’s products when it in fact, is not. Therefore, the Panel finds that Respondent’s <harley-repair.com> domain name is confusingly similar to Complainant’s HARLEY mark under Policy ¶ 4(a)(i). 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 Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that the disputed domain names <caterpillarparts.com> and <caterpillarspares.com> were confusingly similar to the registered trademarks CATERPILLAR and CATERPILLER DESIGN because “the idea suggested by the disputed domain names and the registered trademarks is that the goods or services offered in association with [the] domain name are manufactured by or sold by the Complainant or one of the Complainants [sic] approved distributors. The disputed trademarks contain one distinct component, the word Caterpillar”).
The Panel finds that Policy ¶ 4(a)(i) has been established.
The Panel finds that Complainant has made a prima facie case against Respondent, indicating that it lacks rights or legitimate interests in the disputed domain name. Because of this finding, Respondent now bears the burden of proving that it has rights or legitimate interests in the disputed domain name. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). Respondent failed to offer a Response in this matter which allows the Panel to assume that it lacks rights or legitimate interests in the disputed domain name. See 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.”). Before making such a determination, the Panel will examine the entire record and fully address Respondent’s rights or legitimate interests within the framework of Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the disputed domain name. The WHOIS information identifies the registrant of the disputed domain as “Perfect Privacy LLC,” which the Panel finds does not suggest that Respondent is commonly known by the disputed domain name. Respondent offers no evidence to support a finding to the contrary. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name); 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 also asserts that Respondent is not making a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain name. Respondent sells digital copies of Complainant’s repair manuals from its website. Respondent is not authorized to sell Complainant’s repair and service manuals. The manuals sold by Respondent compete directly with Complainant’s own manual offerings. The Panel finds that selling a competing good which Complainant offers itself and without authorization to do so, does not qualify as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks); see also 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).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Complainant argues that Respondent’s disputed domain name is disrupting its business. Respondent is selling digital copies of Complainant’s repair manuals. The repair manuals correspond to a particular model of Complainant’s motorcycles. Respondent’s sale of these manuals competes directly with Complainant’s own legitimate repair manuals. Internet users may arrive at Respondent’s website looking to buy a repair manual for one of Complainant’s products, and purchase a manual from Respondent instead of Complainant. The Panel finds that this use disrupts Complainant’s business by diverting Internet users to a website to purchase Respondent’s products instead of Complainant’s. The Panel also finds that this is affirmative evidence of Respondent’s bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iii). See 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); see also EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business).
Complainant also argues that Respondent registered and is using the disputed domain name for its own commercial gain constituting bad faith. As mentioned above, Respondent sells digital copies of Complainant’s own repair manuals without Complainant’s authorization. Respondent presumably generates revenue through the sale of these manuals to Internet users diverted to its website. The Panel finds that Respondent is attempting to financially capitalize on the confusion created by the use of a confusingly similar domain in conjunction with the sale of what appears to be a counterfeit competing product. The Panel finds that Respondent is gaining commercially from the disputed domain name and has therefore, registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also AT&T Corp. v. RealTime Internet.com Inc., D2001-1487 (WIPO May 1, 2002) (“[U]se of domain names to sell Complainant’s goods and services without Complainant's authority . . . is bad faith use of a confusingly similar domain name.”).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <harley-repair.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: September 26, 2011
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