H-D Michigan, LLC v. Steve Maman
Claim Number: FA1205001444286
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 Steve Maman (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <harleymontreal.com>, 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 16, 2012; the National Arbitration Forum received payment on May 16, 2012.
On May 16, 2012, Godaddy.com, LLC. confirmed by e-mail to the National Arbi-tration Forum that the <harleymontreal.com> domain name is registered with Godaddy.com, LLC. and that Respondent is the current registrant of the name. Godaddy.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 16, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 5, 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@harleymontreal.com. Also on May 16, 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 June 8, 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 registered the HARLEY mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,352,679, registered August 6, 1985);
Complainant also registered the HARLEY mark with the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA294796, registered September 7, 1984);
Respondent’s <harleymontreal.com> domain name is confusingly similar to Complainant’s HARLEY mark;
Respondent is not authorized to use Complainant’s HARLEY mark;
Respondent has not been commonly known by the <harleymontreal.com> domain name;
Respondent is not making a bona fide offering of goods or services or a legit-imate noncommercial or fair use of the <harleymontreal.com> domain name;
Respondent’s <harleymontreal.com> domain name resolves to a website offering for sale, among other things, used Harley-Davidson motorcycles;
Respondent has no rights to or legitimate interests in the disputed domain name;
Respondent disrupts Complainant’s business and unfairly competes with Com-plainant through its use of the <harleymontreal.com> domain name;
Respondent uses the disputed domain name to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant and its HARLEY mark as to the source, sponsorship, affiliation, and/or endorsement of Respondent’s website and the products offered there;
Respondent registered the <harleymontreal.com> domain name in bad faith and with knowledge of Complainant’s rights in its HARLEY mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark or service 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 representa-tions 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 Ver-tical 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 reason-able 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 reason of its registration of the mark with national trademark authorities, in this instance the USPTO and CIPO. See Dollar Fin. Group, Inc. v. Bankshire Corp., FA 1013686 (Nat. Arb. Forum July 30, 2007) (finding that a complainant estab-lished rights in its mark by registering it with the USPTO and CIPO).
Turning then to the question of confusing similarity, we are persuaded that Re-spondent’s <harleymontreal.com> domain name is confusingly similar to Com-plainant’s HARLEY trademark under Policy ¶ 4(a)(i). The disputed domain name includes the entire mark, merely adding the geographic term “montreal” and the generic top-level domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not distinguish the domain name from the mark under the standards of the Policy. See, for example, Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004):
[It] is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the 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) … is irrele-vant 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 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 several con-siderations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the dis-puted 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 <harleymontreal.com> domain name, and that Respondent is not authorized to use Complainant’s HARLEY. Moreover, the pertinent WHOIS information identifies the registrant of the disputed domain name only as “Steve Maman,” which does not resemble the contested domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have rights to or legitimate interests in the contested domain name under Policy ¶ 4(a)(i). See 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 them under to Policy ¶ 4(a)(i), where the relevant WHOIS information, as well as 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 for sale, among other things, used Harley-Davidson motorcycles. We concur. See, for example, H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because a “[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 disputed domain names for either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncom-mercial or fair use under Policy ¶ 4(c)(iii)).
The Panel therefore finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The record demonstrates that Respondent’s domain name resolves to a website offering motorcycle products in competition with the business of Complainant and its authorized dealers. This disrupts Complainant’s business, and stands as evidence of bad faith registration and use of the domain name under Policy ¶ 4(b)(iii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that a respondent registered and used disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using them to operate websites that competed with a complainant’s business); see also Caterpillar Inc. v. Vine, FA 97097 (Nat. Arb. Forum June 22, 2001) (“Respondent registered each of the disputed domain names in order to gain customers and to disrupt Complainant's business of authorizing dealers to sell its CATERPILLAR equipment.”).
The evidence also convinces us that Respondent uses the disputed domain name to attract Internet users to its website for its commercial gain, by creating a likelihood of confusion among users as to the possibility of Complainant’s spon-sorship of, or affiliation with, that website. This is evidence of bad faith registra-tion and use of the domain name under Policy ¶ 4(b)(iv). See Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where a re-spondent used a disputed domain name to sell a complainant’s products without permission and misled Internet users by implying that that respondent was affil-iated with a UDRP complainant).
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 <harleymontreal.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 20, 2012
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