H-D Michigan, LLC v. Huang Gui a/k/a Huanggui
Claim Number: FA1203001433033
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 Huang Gui a/k/a Huanggui (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain name at issue are <myhdjacket.com> and <soman-harley.com>, registered with Xin Net Technology Corporation.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 5, 2012; the National Arbitration Forum received payment on March 5, 2012. The Complaint was submitted in both English and Chinese.
On March 8, 2012, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <myhdjacket.com> and <soman-harley.com> domain names are registered with Xin Net Technology Corporation and that Respondent is the current registrant of the names. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 March 15, 2012, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of April 4, 2012 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@myhdjacket.com and postmaster@soman-harley.com. Also on March 15, 2012, the Chinese language Written Notice of the Complaint, notifying Respondent of the e-mail 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 17, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant H-D is a Michigan limited liability Company with a principal place of business located in Ann Arbor, Michigan. Complainant owns and licenses intellectual property to various Harley-Davidson companies, including Harley-Davidson Motor Company Group, LLC. The public has long regarded the HD Mark, HARLEY-DAVIDSON mark, and HARLEY mark as being synonymous and interchangeable because HD and HARLEY are the short forms of HARLEY-DAVIDSON, and because a wide variety of entities including but not limited to H-D itself, H-D’s authorized dealers, numerous media outlets, third-party resellers, and consumers have used such marks interchangeably for decades in the U.S. and countries around the world. H-D has sold many billions of dollars’ worth of products under the HD Trademarks. H-D spends many millions of dollars every year to extensively and widely advertise and promote its products and services under the HD Trademarks. H-D has for years utilized a network of authorized dealers to market its motorcycles, motorcycle parts and accessories, and other products including clothing, as well as services such as financing. In particular, authorized dealer names are frequently comprised of the dealer’s name and the HD Trademarks (for example, H-D’s authorized dealer Adamec Harley-Davidson/Buell uses the domain name ADAMECSHARLEY.COM for its website, Lone Star Harley-Davidson uses the domain name LONESTARHARLEY.COM, etc.). As a result of this naming practice, persons encountering domain names consisting of the HD Trademarks in conjunction with another name will believe that the corresponding website is for an authorized Harley-Davidson dealer.
H-D has sold apparel and numerous other products under its HD Trademarks for decades. Specifically, H-D has sold apparel including jackets and vests under its HARLEYDAVIDSON mark since at least as early as 1915, and has sold apparel including jackets and vests under its HD Mark and HARLEY marks since the 1980’s. H-D distributes many of its clothing products exclusively through H-D’s authorized dealerships, and distributes other apparel through its authorized licensees. H-D has sold hundreds of millions of dollars’ worth of apparel under the HD Trademarks.
The HARLEY-DAVIDSON mark has long been one of the most recognized and famous brands in the world. Interbrand, one of the world’s leading branding firms, has ranked the HARLEY-DAVIDSON brand in its “Top 100 Global Brands” report for many years.
Likewise, the HD mark and HARLEY mark are famous, based on H-D’s international and widespread use for many decades, its significant sales of products and services, the widespread publicity received widespread consumer use, its registrations in countries around the world, and H-D’s use in its corporate names and in domain names for many years.
H-D’s U.S. registrations are sufficient to establish H-D’s rights in the HD Trademarks as required by the UDRP. H-D’s trademark rights in the HD Trademarks, based on its trademark registrations and on its common-law rights, long predate Respondent’s registration of the Domain Names.
Respondent registered the domain name <soman-harley.com> on May 29, 2011, and registered the domain name <myhdjacket.com> on September 3, 2011 long after Complainant began using the HD Trademarks; long after Complainant registered its HD Trademarks in the U.S. (and elsewhere); and many years after Complainant’s HD Trademarks became famous worldwide.
Respondent uses the domain name <myhdjacket.com> for a commercial website offering counterfeit HARLEY-DAVIDSON clothing, including jackets and vests. In addition to its unauthorized use of Complainant’s HD Trademarks in the Domain Name, Respondent’s website also mimics Complainant’s famous orange-and-back color scheme.
Respondent is not authorized to sell Complainant’s products or to use Complainant’s HD Trademarks. In particular, Complainant distributes its HARLEY-DAVIDSON leather jackets and vests and nylon jackets―the same products that Respondent is claiming to sell―exclusively through Complainant’s authorized HARLEY-DAVIDSON dealerships. Respondent is not an authorized HARLEY-DAVIDSON dealer or otherwise authorized by Complainant to use the HD Trademarks. Finally, Respondent’s website also offers competing clothing products manufactured by third parties and identified by the brands AFFLICTION and ED HARDY.
Respondent’s<myhdjacket.com> website displays the domain name <soman-harley.com> in the copyright notice. Respondent is not currently using the domain name <soman-harley.com> for a website. Instead, Respondent’s advertisements and/or business profiles on third-party websites describe Respondent’s offering of HARLEYDAVIDSON leather jackets and identify Respondent’s website as <soman-harley.com>.
The domain name <myhdjacket.com>is confusingly similar to Complainant’s HD Mark because it contains Complainant’s HD mark in its entirety (and Complainant’s H-D mark in its virtual entirety omitting only the hyphen), and the generic terms “my” and “jacket.” The addition of generic terms to a mark in a domain name does not distinguish the domain name from that mark, including a number of cases involving Complainant’s trademarks and the generic term “jacket.”
Further, the addition of the generic term “jacket” to Complainant’s HD Mark in the domain name MYHDJACKET.COM heightens the confusing similarity of the Domain Name because H-D has offered, promoted, and sold jackets under the HD Mark for many decades. Internet users encountering the Domain Name will thus likely believe that H-D is the source of the corresponding website and/or of the products sold therein, or that H-D sponsors or is otherwise affiliated with the website.
The domain name <soman-harley.com> is confusingly similar to Complainant’s HARLEY mark because it contains Complainant’s mark in its entirety, and the term “Soman,” presumably included because of Respondent’s apparent trade name Soman Apparel. The addition of Respondent’s name to Complainant’s mark does not distinguish the Domain Name from Complainant’s mark. Rather, the Domain Name mimics the naming conventions used by Complainant’s authorized dealers, combining the dealer’s business name with Complainant’s HD Trademarks. The domain name <soman-harley.com> thus suggests that Respondent is an authorized dealer of Complainant, thus heightening the likelihood of confusion caused by Respondent’s unauthorized use of Complainant’s mark.
The Domain Names are also confusingly similar to Complainant’s famous and federally registered HARLEY-DAVIDSON mark because HD and HARLEY are recognized shorthand for HARLEY-DAVIDSON.
Respondent has no rights or legitimate interest in the Domain Names for the following reasons. First, Respondent’s registration and use of the Domain Names in connection with a commercial website offering counterfeit HARLEY-DAVIDSON products neither constitutes a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name under the UDRP. Initially, Respondent’s offering of counterfeit products is alone sufficient grounds to find that Respondent does not have a legitimate interest in the Domain Name. Moreover, Respondent’s offering of counterfeit products unfairly competes with Complainant’s own offering of genuine HARLEY-DAVIDSON products. Finally, Respondent uses the Domain Names in connection with offering competing clothing products manufactured by third parties. Counterfeiting and competing activities have each consistently been found to demonstrate a lack of legitimate interest in the domain name at issue. Second, Respondent is not and has not been commonly known by the Domain Names. There is no evidence in the record, including the WHOIS information, to demonstrate that Respondent is commonly known by the Domain Names. In addition, Respondent is not a licensee or authorized dealer of Complainant, and Respondent is not authorized to register or use the Domain Names or the HD Trademarks.
Respondent’s registration and use of the Domain Names squarely meet the grounds of bad faith outlined in the UDRP and additional grounds of bad faith defined in UDRP decisions. First, Respondent’s registration and use of the Domain Names constitute bad faith under Section 4(b)(iv) because Respondent uses the Domain Names to intentionally attract, for Commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant and its famous HD Trademarks as to the source, sponsorship, affiliation, and/or endorsement of Respondent’s website. Second, Respondent’s registration and use of the Domain Names constitute bad faith under Section 4(b)(iii) because Respondent disrupts Complainant’s business by offering of counterfeit HARLEY-DAVIDSON products that unfairly competes with Complainant’s own offering of genuine HARLEY-DAVIDSON products, and by offering competing clothing products. Third, Respondent’s use of the Domain Names in connection with Respondent’s offering of counterfeit HARLEY-DAVIDSON products constitutes an independent ground of bad faith under prior UDRP decisions.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant demonstrates that it has substantial rights in HD and in HARLEY by virtue of its trademark registrations and otherwise. Each mark is confusingly similar to its respective at-issue domain name. Both the HD mark and the HARLEY mark are extremely well known, if not famous. Respondent registered the at-issue domains to wrongfully capitalize on Complaint’s high brand recognition. Respondent directly uses the <myhdjacket.com> domain name and indirectly uses the <soman-harley.com> domain name to illegally trade on the good will associated with Complainant’s HD and HARLEY marks.
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."
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.
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.”).
Rule 11(a) Determination
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
The domain names are each confusingly similar to trademarks in which the Complainant has rights.
The <myhdjacket.com> domain name is confusingly similar to Complainant’s HD mark. It contains the HD mark in its entirety, and inconsequentially adds the generic terms “my” and “jacket” and follows with the “.com gTLD.” The panel in Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001), found confusing similarity where the disputed domain name contains the complainant’s mark combined with a generic term. The panel in Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007), similarly concludes that adding a generic top-level domain (“gTLD”) does not properly distinguish the domain name from the complainant’s mark.
The <soman-harley.com> domain name is confusingly similar to Complainant’s HARLEY trademark. The domain name contains the HARLEY mark and adds the term “soman,” which Complainant contends is a trade name used by Respondent. In Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001), the panel determined that a domain name that “wholly incorporates” the complainant’s mark is confusingly similar for the purposes of the Policy, despite adding other words to the mark. The panel in Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) held that the gTLD “.com” added to a mark does not affect the domain name in determining its confusing similarity to a mark. Furthermore, the style of the domain name is consistent with Complainant’s distributor naming convention whereby a place or proper name is followed by the term HARLEY. Therefore, the differences between the <soman-harley.com> domain name and the Complainant’s Harley mark do not overcome the domain name’s underlying confusing similarity to Complainant’s HARLEY mark under Policy ¶ 4(a)(i).
Complainant owns trademark registrations with the USPTO for its HD mark (Reg. No. 2,315,877 registered February 8, 2000) and is HARLEY mark ( e.g., Reg. No. 1,352,679 registered August 26, 1986). These registrations are sufficient to demonstrate that Complainant has trademark rights in the subject trademarks. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)). Furthermore, there is no requirement under Paragraph 4(a)(i) that Complainant register its marks in the same country where Respondent resides and operates in order to prove rights for the purposes of Policy ¶4(a)(i). See 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); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Therefore, the Panel finds that Complainant meets its burden under Paragraph 4(a)(I).
Under Policy ¶ 4(a)(ii) Complainant must first make out a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name(s) and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights and legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Complainant contends that Respondent is not commonly known by either of the at-issue domain names. WHOIS information for each of the domain names identifies the registrant as “huanggui,” which is not similar to either domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply). See also 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). Additionally, Complainant has not licensed, transferred, assigned or otherwise authorized Respondent to use any of its marks, or any variations thereof, as domain names on the Internet. Therefore, Complainant more than satisfies its slight initial burden regarding Respondent’s lack of rights and interests in each of the disputed domain names.
Further in support of the Panel’s findings regarding Paragraph 4(a)(ii), Respondent’s offering of counterfeit products cannot be said to a be bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name under the UDRP. See H-D Michigan v. Private Whois Service, FA1328876 (Nat. Arb Forum July 7, 2006) (finding no legitimate interest of respondent in the domain name <harleydavidsonmotorcyclejackets.com> because “The Panel finds that [r]espondent’s appropriation of Complainant’s mark to compete with Complainant and mar the reputation of Complainant’s mark through the practice of selling counterfeit merchandise is not a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶¶ 4(c)(i) or 4(c)(iii).”). See Nokia Corp. v. Eagle, FA 1125685 (Nat. Arb. Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)). Respondent also mimics Complainant’s trade dress by employing the classical H-D black-and-orange color scheme on its infringing website thereby demonstrating Respondent’s intent to trade on the Complaints trademark. This transgression is discussed below with regard to bad faith. Nevertheless, Respondent’s overt misappropriation of the Complainant’s trademark and trade dress also shows that Respondent lacks of rights and interests of its own in the at-issue domain names. Although not directly used to facilitate the sale of counterfeit merchandise the use of <soman-harley.com> in conjunction with the <myhdjacket.com> website abets the foul purpose of the <myhdjacket.com> and thus similarly shows that Respondent has no legitimate rights or interests with regard to <soman-harley.com>.
The evidence presented by Complainant is abundant, overwhelming, and conclusive. Given the forgoing, there is no shadow of a doubt that Complainant meets its burden to demonstrate Respondent’s lack of rights and interest in respect of the domain name.
The domain name was registered and used in bad faith.
Respondent obviously registered the disputed domain names with knowledge of Complainant’s HD and HARLEY marks since Respondent uses the disputed domain names to offer counterfeit versions of Complainant’s products. Considering the fame associated with Complainant’s mark and Respondent’s use of the domain names to sell competing and products similar to those of Complainant, Respondent undeniably had actual knowledge of Complainant’s right in the HD and HARLEY marks. These circumstance demonstrates bad faith registration of the domain names under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name"). Respondent’s sale of counterfeit products on websites referenced by the disputed domain names unfairly competes with Complainant’s business and disrupts it and thereby demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Nat. Arb. Forum Mar. 5, 2008) (concluding that the complainant’s business is disrupted by the respondent’s registration and use of the disputed domain name for the purpose of selling counterfeit products); see also Juicy Couture, Inc. v. Chinasupply, FA 1222544 (Nat. Arb. Forum Oct. 13, 2008) (holding that the selling of counterfeit versions of a complainant’s products disrupted the complainant’s business and is evidence of bad faith registration and use).
Paragraph 4(b)(iv) circumstances are also shown. Respondent uses the disputed domain names to intentionally attract website users by creating a likelihood of confusion with Complainant’s marks in order to make a financial profit. Respondent imitates Complainant’s well-known color scheme on its <myhdjacket.com> website and then offers visitors counterfeit products. In H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009), the panel held that the respondent created confusion as to the relationship between the Complainant and the corresponding website, which sold counterfeit products, thereby revealing bad faith registration and use. Similarly the panel in Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008) held that the respondent aimed to commercially gain from consumers’ confusion as to the complainant’s affiliation with the website by selling counterfeit products. Here, Respondent’s for profit use of the disputed domain name to confuse consumers and attract them to its website by using Complainant’s well known trade dress is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
As with the Paragraphs 4(a)(i) and 4(a)ii, Complainant’s evidence in support of a finding against Respondent regarding Paragraph 4(a)(iii) is crushing. Complaint has well met its burden. Therefore, the Panel finds that Respondent registered and used each of the at-issue domain names in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <myhdjacket.com> and the <soman-harley.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: April 19, 2012
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