H-D Michigan, LLC v. Wasinger Tech
Claim Number: FA1205001441990
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 Wasinger Tech (“Respondent”), Kansas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <harleyinsurance.net>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on May 2, 2012; the National Arbitration Forum received payment on May 2, 2012.
On May 2, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitra-tion Forum that the <harleyinsurance.net> domain name is registered with Go-Daddy.com, LLC and that Respondent is the current registrant of the name. Go-Daddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 May 3, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 23, 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@harleyinsurance.net. Also on May 3, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail address-es 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 May 24, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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
Complainant has offered insurance services under the HARLEY trademark since at least as early as 1993;
Complainant has registered the HARLEY mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,352,679, registered August 6, 1985);
Respondent’s <harleyinsurance.net> domain name is confusingly similar to Complainant’s HARLEY mark;
Respondent’s domain name resolves to a commercial website offering pay-per-click advertisements and links to websites that offer motorcycle insurance com-peting directly with Complainant’s own insurance offerings;
Respondent receives click-through commissions when Internet users click on the advertisements offered on the resolving website;
Respondent is not making a bona fide offering of goods or services or a legit-imate noncommercial or fair use of the disputed domain name;
Respondent has not been commonly known by the <harleyinsurance.net> domain name;
Respondent is not authorized to register a domain name using Complainant’s HARLEY trademark;
Respondent has no rights to or legitimate interests in the disputed domain name;
Respondent’s domain name disrupts Complainant’s business, and Respondent attempts to gain commercially from its use of the disputed domain name;
Respondent both registered and uses the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
(1) the domain name registered by Respondent is confusingly similar to a trademark mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 represent-ations 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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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.”
Complainant has rights in the HARLEY trademark under Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that a complainant had sufficiently established rights in the SKUNK WORKS mark through its registration of the mark with the USPTO); see also Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (finding that “Complainant’s timely registration with the USPTO and subsequent use of the BIG TOW mark establishes rights in the mark pursuant to Policy ¶ 4(a)(i).”).
Respondent’s <harleyinsurance.net> domain name is confusingly similar to Complainant’s HARLEY trademark under the standards of Policy ¶ 4(a)(i). The disputed domain name includes the entire mark, merely adding the generic term “insurance,” which relates to an aspect of Complainant’s business, and the generic-top level domain (“gTLD”) “.net.” By adding the term “insurance” to Complainant’s mark in forming the disputed domain name, Respondent has increased the prospects for confusion among Internet users because Com-plainant offers insurance services for its motorcycles. See, for example, Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because although “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trade-mark….”).
See also Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005):
[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make out a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has established a prima facie case that Respondent lacks rights to or legitimate interests in the disputed domain name, and Respondent has failed to respond to the Complaint filed in these proceedings. We are therefore free to conclude that Respondent lacks rights to and 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.
See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”).
Nonetheless, we will analyze the evidence of record, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for conclud-ing that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny,
that Respondent has not been commonly known by the disputed domain name, and that Respondent is not authorized to register a domain name using Com-plainant’s mark. Moreover, the pertinent WHOIS information identifies the registrant of the disputed domain name only as “Wasinger Tech,” which does not resemble the contested domain name. On this record, we conclude that Re-spondent has not been commonly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in that domain under Policy ¶ 4(c)(ii). See, for example, M. Shanken Commc’ns v. WORLD-TRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a respondent was not commonly known by the <cigaraficionada.com> domain name, and so had failed to show that it had rights to or legitimate inter-ests in that domain under Policy ¶ 4(c)(ii), based on the relevant WHOIS in-formation and other evidence in the record); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names, and so had no rights to or legitimate interests in those domains under Policy ¶ 4(c)(ii), where the relevant WHOIS information, as well as all other information in the record, gave no indication that that respondent was commonly known by the disputed domain names, and where a complainant had not authorized that respondent to register a domain name containing its mark).
We next observe that Complainant contends, without objection from Respondent, that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name, in that Re-spondent’s domain name resolves to a website offering pay-per-click advertise-ments to the websites of third-party businesses that offer motorcycle insurance in competition with the business of Complainant. We concur. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent was not using the disputed domain names for either 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)).
The Panel therefore finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s employment of the contested domain name in the manner describ-ed in the Complaint disrupts Complainant’s business. This stands as evidence of bad faith registration and use of the domain under Policy ¶ 4(b)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used a disputed do-main name to operate a search engine with links to the websites of a complain-ant’s commercial competitors); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a domain name which was confusingly similar to the mark of another in order to attract Internet users to a directory website containing links to the sites of a com-plainant’s commercial competitors represented bad faith registration and use of the domain under Policy ¶ 4(b)(iii)).
It is also evident from the record that Respondent uses the disputed domain name, which is confusingly similar to Complainant’s HARLEY trademark, to attract Internet users to its website, for its commercial gain, by creating a likelihood of confusion with Complainant and its mark. This is evidence that Respondent both registered and is using the disputed domain name in bad faith within the meaning of Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be misled to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003):
Respondent's prior use of the … domain name is evidence of bad faith pursuant to Policy ¶ 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.’
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <harleyinsurance.net> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 7, 2012
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