H-D U.S.A, LLC v. attraction mich
Claim Number: FA1309001518206
Complainant is H-D U.S.A., LLC (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington, D.C., USA Respondent is attraction mich (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <harley-davidsonjackets.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 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 September 6, 2013; the National Arbitration Forum received payment on September 6, 2013.
On September 6, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <harley-davidsonjackets.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 September 9, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 30, 2013 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-davidsonjackets.com. Also on September 9, 2013, 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 October 2, 2013, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant has manufactured, advertised, and sold motorcycles using the HARLEY-DAVIDSON mark since 1903, and currently offers a full array of motorcycle parts and accessories, apparel, and other products and services under the mark. Complainant has sold billions of dollars’ worth of merchandise under the HARLEY-DAVIDSON mark. Complainant has utilized a network of authorized dealers to market its products to consumers throughout the world, including in Japan.
Complainant has extensively promoted its products and services under the HARLEY-DAVIDSON mark on the Internet since 1996. Complainants owns the <harley-davidson.com> domain name, at which it sells apparel and provides information on its products.
Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the HARLEY-DAVIDSON mark (e.g., Reg. No. 1,078,871 registered December 6, 1977).
Respondent registered the <harley-davidsonjackets.com> domain name on June 30, 2013. The disputed domain name resolves to a commercial website that offers counterfeit jackets bearing the HARLEY-DAVIDSON mark, and copies web pages from Complainant’s online apparel store.
The <harley-davidsonjackets.com> domain name is virtually identical to Complainant’s HARLEY-DAVIDSON mark. Respondent uses Complainant’s famous HARLEY-DAVIDSON mark, its bar-and-shield logo, its well-known orange and black corporate color scheme, Complainant’s “Worn to be Wild” ad campaign, and product photographs, descriptions, website text, and layout at the resolving website.
Respondent has failed to show any rights or legitimate interests in the disputed domain name, as Respondent makes a commercial use of the resolving website by offering counterfeit products for sale, and mimics Complainant’s website in nearly every respect. Respondent has not been commonly known by the disputed domain name, as shown by the evidence in the record, including the WHOIS information.
Respondent registered and uses the <harley-davidsonjackets.com> domain name in bad faith, because Respondent use of the domain name disrupts Complainant’s business and attempts to make a profit by confusing Internet users and driving traffic to the resolving website to make sales. Respondent’s bad faith is also shown by its attempt to sell counterfeit HARLEY-DAVIDSON goods at the resolving website, and by substantially mimicking Complainant’s website. Respondent unquestionably had knowledge of Complainant’s rights in the HARLEY-DAVIDSON mark when it registered the <harley-davidsonjackets.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns a USPTO registered trademarks for HARLEY-DAVIDSON.
Respondent is not affiliated with Complainant and had not been authorized to use the HARLEY-DAVIDSON mark in any capacity.
Respondent registered the at-issue domain name after Complainant acquired trademark rights in HARLEY-DAVIDSON.
Respondent is using the <harley-davidsonjackets.com> domain name to pass itself off as Complainant and promote the online sale of counterfeit HARLEY-DAVIDSON branded products.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the HARLEY-DAVIDSON mark with the USPTO establishes Complainant’s rights in a mark for the purposes of the Policy. This is true notwithstanding that Respondent may operate outside the jurisdiction of Complainant’s trademark registrar. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
Respondent’s <harley-davidsonjackets.com> domain name incorporates Complainant’s entire trademark, adds the generic term “jackets,” and appends the top-level domain name “.com” thereto. The inclusion of the term “jackets” in the domain name only serves to increase confusion between the domain name and Complainant mark as the term suggests Complainant’s business interest in selling HARLEY-DAVIDSON branded jackets. The top-level domain name is immaterial to the Panel’s analysis under Policy ¶4(a)(i). Therefore, the Panel concludes that Respondent’s <harley-davidsonjackets.com> domain name is confusingly similar to Complainant’s HARLEY-DAVIDSON trademark. See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond and since as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information identifies “attraction mich” as the at-issue domain name’s registrant. Moreover, the record before the Panel contains no evidence that suggests Respondent is otherwise commonly known by the domain name. The Panel thus concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also 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).
Respondent mimics Complainant’s official website on its <harley-davidsonjackets.com> website in an obvious attempt to pass itself off as Complainant. Respondent uses the confusingly similar website to sell counterfeit HARLEY-DAVIDSON merchandise. Such use of the at-issue domain name is neither a is neither a bona fide offering of goods or services under Policy ¶¶ 4(c)(i), nor a legitimate noncommercial or fair use of the at-issue domain name under Policy ¶¶ 4(c)(iii). See, e.g., Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent that attempts to pass itself off as the complainant online, which includes blatant unauthorized use of the complainant’s mark, is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also See Keihin Corp. v. Youli Ltd., FA 1106190 (Nat. Arb. Forum Dec. 18, 2007) (finding no rights and legitimate interests when the respondent sold counterfeit versions of the complainant’s products in competition with the complainant’s business).
In light of the uncontroverted evidence, Complainant satisfies its burden and conclusively demonstrates Respondent’s lack of rights, and lack of interests, in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶ 4(b) circumstance are present as well as other circumstances which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Respondent disrupts Complainant’s business by hosting a website that offers counterfeit HARLEY-DAVIDSON products and thereby competes unfairly with Complainant. Indeed, Respondent’s essentially copies Complainant’s website in order to pass itself off as Complainant. Respondent’s disruptive use of the at-issue domain name demonstrates bad faith under Policy ¶ 4(b)(iii). See 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); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”).
Furthermore, Respondent uses the domain name to intentionally attract Internet traffic for commercial gain by creating a likelihood of confusion between the domain name and Complainant’s HARLEY-DAVIDSON mark. Respondent has endeavored to cause confusion between the <harley-davidsonjackets.com> domain name and Complainant’s mark by the use of the confusingly similar domain name, and by the wholesale copying of Complainant’s website on Respondent’s <harley-davidsonjackets.com> website. This undertaking is ultimately intended to drive confused Internet traffic to Respondent’s <harley-davidsonjackets.com> website where Respondent may then cash-in by selling counterfeit HARLEY DAVIDSON jackets. Given the foregoing, Respondent’s use of the domain name demonstrates that Respondent registered and uses the <harley-davidsonjackets.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008) (finding bad faith where the respondent attempts to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products).
Finally, Respondent undoubtedly registered the <harley-davidsonjackets.com> domain name with knowledge of Complainant’s rights in the HARLEY-DAVIDSON mark. Respondent’s prior knowledge of Complainant’s trademark is inferred given the international fame of the mark, Complainant’s 100 years of conducting business in Japan, where Respondent is located, as well as Respondent’s extensive use of the materials from Complainant’s website on its own <harley-davidsonjackets.com> website. Registering and using a confusingly similar domain name with knowledge of a complainant’s rights in such domain name indicates bad faith registration and use pursuant to Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the at-issue domain name).
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-davidsonjackets.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: October 3, 2013
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