national arbitration forum

 

DECISION

 

H-D Michigan, LLC v. Marquis Marriot

Claim Number: FA1208001457327

 

PARTIES

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 Marquis Marriot (“Respondent”), France.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <harley-davidson-partner.com>, registered with Namebay SAM.

 

PANEL

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.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 9, 2012; the National Arbitration Forum received payment on August 9, 2012.

 

On August 16, 2012, Namebay SAM confirmed by e-mail to the National Arbitration Forum that the <harley-davidson-partner.com> domain name is registered with Namebay SAM and that Respondent is the current registrant of the name.  Namebay SAM has verified that Respondent is bound by the Namebay SAM 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 16, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 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@harley-davidson-partner.com.  Also on August 16, 2012, the 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 September 12, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <harley-davidson-partner.com> domain name is confusingly similar to Complainant’s HARLEY-DAVIDSON mark.

 

2.    Respondent does not have any rights or legitimate interests in the <harley-davidson-partner.com> domain name.

 

3.    Respondent registered and used the <harley-davidson-partner.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant manufactures, advertises, and sells motorcycles and related products, including jackets, under the HARLEY-DAVIDSON mark.  Complainant owns trademark registrations for its HARLEY-DAVIDSON mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,078,871 registered December 6, 1977). 

 

Respondent registered the <harley-davidson-partner.com> domain name on September 2, 2011.  Respondent uses the <harley-davidson-partner.com> domain name to resolve to a website selling counterfeit versions of Complainant’s HARLEY-DAVIDSON jacket.

 

DISCUSSION

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.”).

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant’s USPTO trademark registrations sufficiently demonstrate Complainant’s rights in the HARLEY-DAVIDSON mark for purposes of Policy ¶ 4(a)(i), even though Respondent does not reside or operate in the United States.  In Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007), the panel found that it is irrelevant whether or not the complainant registered its trademark in the country of the respondent’s residence.  See also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).

 

Respondent’s <harley-davidson-partner.com> domain name is confusingly similar to Complainant’s HARLEY-DAVIDSON mark, since Respondent simply added the generic term “partner”, a hyphen, and the generic top-level domain (“gTLD”) “.com” to Complainant’s mark.  In Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005), the panel held that the domain name <suttonpromo.com> was confusingly similar to the SUTTON mark because the addition of a generic term and a generic top-level domain (“gTLD”) “.com” to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i).  In Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000), the panel concluded that the “addition of a hyphen to the registered mark is an insubstantial change.

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent 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 argues that Respondent is not commonly known by the <harley-davidson-partner.com> domain name.  The WHOIS information lists “Marquis Marriot” as the registrant, which does not indicate that Respondent is commonly known by the disputed domain name.  Complainant states that Respondent is not a licensee or an authorized dealer of Complainant.  Therefore, the Panel finds that Respondent is not commonly known by the <harley-davidson-partner.com> domain name according to Policy ¶ 4(c)(ii).  See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).

 

Complainant contends that Respondent uses the <harley-davidson-partner.com> domain name to resolve to a website selling counterfeit versions of Complainant’s HARLEY-DAVIDSON jacket.  In the absence of any evidence to the contrary, the Panel finds that Respondent’s offering of counterfeit products is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii).  See Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”).

 

The Panel notes, however, that Respondent does not appear to be making an active use of the disputed domain name at present.  The Panel finds that this is also an indication that Respondent lack rights and legitimate interests as it is not a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.  See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant claims that Respondent’s registration and use of the <harley-davidson-partner.com> domain name disrupts Complainant’s business.  Complainant argues that the selling of counterfeit HARLEY-DAVIDSON jackets unfairly competes with Complainant’s business and diverts potential customers away from Complainant’s genuine HARLEY-DAVIDSON products.  In Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Nat. Arb. Forum Mar. 5, 2008), the panel concluded that the complainant’s business was disrupted by the respondent’s registration and use of the disputed domain name for the purpose of selling counterfeit products.  In the absence of any evidence to the contrary, the Panel finds that Respondent registered and used the <harley-davidson-partner.com> domain name to disrupt Complainant’s business, in bad faith pursuant to Policy ¶ 4(b)(iii).

 

Complainant asserts that Respondent’s use of the disputed domain name to offer counterfeit versions of Complainant’s HARLEY-DAVIDSON products creates confusion among Internet users and commercial gain for Respondent, bad faith under Policy ¶ 4(b)(iv).  See Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products).

 

The Panel notes that the screenshot provided by Complainant indicates that Respondent is not currently making an active use of the disputed domain name. Respondent’s current failure to make an active use of the <harley-davidson-partner.com> domain name also indicates bad faith registration and use according to Policy ¶ 4(a)(iii).  See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith).

 

Complainant also argues that Respondent had actual knowledge of Complainant’s rights in the HARLEY-DAVIDSON mark based on Respondent’s sale of counterfeit products at its websites.  The Panel finds that Respondent’s offering of counterfeit versions of Complainant’s products indicates that Respondent had actual knowledge of Complainant’s rights in the HARLEY-DAVIDSON mark, further evidence of bad faith pursuant to 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).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

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-davidson-partner.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Sandra J. Franklin, Panelist

Dated:  September 19, 2012

 

 

 

 

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