national arbitration forum

 

DECISION

 

H-D Michigan, LLC v. Private Whois Service

Claim Number: FA1006001328876

 

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 Private Whois Service (“Respondent”), Bahamas.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <harleydavidsonmotorcyclejackets.com>, registered with Internet.bs Corp.

 

PANEL

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.

 

James A. Carmody, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 8, 2010.

 

On June 8, 2010, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <harleydavidsonmotorcyclejackets.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name.  Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On June 9, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 29, 2010 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@harleydavidsonmotorcyclejackets.com.  Also on June 9, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 July 7, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 a Written Notice, as defined in Rule 1.  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 <harleydavidsonmotorcyclejackets.com> domain name is confusingly similar to Complainant’s HARLEY-DAVIDSON mark.

 

2.      Respondent does not have any rights or legitimate interests in the <harleydavidsonmotorcyclejackets.com> domain name.

 

3.      Respondent registered and used the <harleydavidsonmotorcyclejackets.com> domain name in bad faith.

 

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

 

FINDINGS

Complainant, H-D Michigan, LLC, manufactures and sells motorcycles, motorcycle parts and accessories, motorcycle clothing, and various other products and services.  Complainant owns numerous registrations for the HARLEY-DAVIDSON and related trademarks worldwide, including with the United States Patent and Trademark Office (“USPTO”):

 

HARLEY-DAVIDSON                                   526,750           issued June 27, 1950;

HARLEY-DAVIDSON                                   1,078,871        issued Dec. 6, 1977;

HARLEY-DAVIDSON                                   1,234,404        issued Apr. 12, 1983;

HARLEY-DAVIDSON                                   1,450,348        issued Aug. 4, 1987;

HARLEY-DAVIDSON MOTOR CYCLES    1,660,539        issued July 23, 1991; and

HARLEY-DAVIDSON                                   3,393,840        issued Mar. 11, 2008.

 

Respondent, Private Whois Service, registered the <harleydavidsonmotorcyclejackets.com> domain name on May 3, 2010.  The disputed domain name resolves to Respondent’s website offering counterfeit versions of Complainant’s jackets and vests.  Respondent’s website displays Complainant’s trademark protected logo and uses Complainant’s color scheme of black and orange.

 

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."

 

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.”).

 

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.

 

Identical and/or Confusingly Similar

 

Complainant owns numerous registrations for the HARLEY-DAVIDSON and related trademarks worldwide, including with the USPTO:

 

HARLEY-DAVIDSON                                   526,750           issued June 27, 1950;

HARLEY-DAVIDSON                                   1,078,871        issued Dec. 6, 1977;

HARLEY-DAVIDSON                                   1,234,404        issued Apr. 12, 1983;

HARLEY-DAVIDSON                                   1,450,348        issued Aug. 4, 1987;

HARLEY-DAVIDSON MOTOR CYCLES    1,660,539        issued July 23, 1991; and

HARLEY-DAVIDSON                                   3,393,840        issued Mar. 11, 2008.

 

The Panel finds that Complainant has sufficiently registered its HARLEY-DAVIDSON mark with the USPTO to prove Complainant’s rights in the mark according to Policy       ¶ 4(a)(i), regardless of the fact that Respondent lives or operates outside the United States.  See Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“The Panel finds that Complainant has established trademark rights in the CLEAR BLUE marks through introduction of the certificates for its U.S. registration for those trademarks.  The U.S. Trademark Act is clear that the certificate of registration on the Principal Register, as here, is prima facie evidence of the validity of the registered mark and the registrant's exclusive right to use the mark in commerce in on or in connection with the goods specified in the registration.”); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).

 

Complainant contends that Respondent’s <harleydavidsonmotorcyclejackets.com> domain name is confusingly similar to Complainant’s HARLEY-DAVIDSON mark because the domain name only makes minor changes to Complainant’s mark: the hyphen is deleted, the descriptive terms “motorcycle” and “jackets” are added, and the generic top-level domain (“gTLD”) “.com” is appended.  The Panel finds that omitting the hyphen and adding the gTLD do not remove the disputed domain name from the realm of confusing similarity with Complainant’s mark.  See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); see also Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June 19, 2000) (holding that the domain name <cspan.net>, which omitted the hyphen from the trademark spelling, C-SPAN, is confusingly similar to the complainant's mark).  The Panel also finds that terms that describe Complainant’s business or offered products do not distinguish the disputed domain name when added to Complainant’s mark.  See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)).  The Panel concludes that Respondent’s <harleydavidsonmotorcyclejackets.com> domain name is confusingly similar to Complainant’s HARLEY-DAVIDSON mark pursuant to Policy ¶ 4(a)(i).

 

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

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name.  In keeping with the requirements of Policy ¶ 4(a)(ii), the Panel finds that Complainant has sufficiently presented a prima facie case against Respondent to now transfer the burden to demonstrate rights and legitimate interests to Respondent.  Respondent’s failure to respond, however, does not satisfy this burden, and the Panel accordingly infers that Respondent lacks and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).  See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”).  In the interest of making a complete determination on Respondent’s rights and legitimate interests, however, the Panel elects to consider the record in light of the Policy ¶ 4(c) factors.

 

Complainant contends that the failure of the WHOIS information to indicate that Respondent is commonly known by the <harleydavidsonmotorcyclejackets.com> domain supports a finding that Respondent is not commonly known by and has no association with the disputed domain name.  Complainant also asserts that Respondent is not a licensee of Complainant and is not authorized to use Complainant’s mark in any way.  The Panel finds that these facts support a finding that Respondent is not commonly known by the disputed domain name and lacks rights and legitimate interests under Policy ¶ 4(c)(ii).  See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).

 

Complainant argues that Respondent uses the <harleydavidsonmotorcyclejackets.com> domain name to sell counterfeit versions of Complainant’s motorcycle jackets and vests.  The Panel finds that Respondent’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 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).”); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).

 

Complainant also asserts that Respondent’s resolving website at the <harleydavidsonmotorcyclejackets.com> domain name attempts to pass itself off as Complainant and mislead consumers into believing they are purchasing Complainant’s authentic apparel instead of counterfeit versions.  Complainant alleges that Respondent prominently displays Complainant’s logo on the website and even mimics Complainant’s recognizable orange and black color scheme, which makes it difficult for Internet users to realize that Respondent’s site is not an official site sponsored by Complainant.  The Panel finds that Respondent’s efforts to pass itself off as Complainant and market counterfeit versions of Complainant’s products does not give Respondent rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  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)); see also Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)).

 

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

 

Registration and Use in Bad Faith

 

Complainant alleges that Respondent offers counterfeit versions of Complainant’s products for sale at the <harleydavidsonmotorcyclejackets.com> domain name. As a result of such action, Respondent becomes a competitor of Complainant and attempts to disrupt Complainant’s business by offering these competing and fake products under Complainant’s own mark.  The Panel finds Respondent’s activities reveal bad faith registration and use according to Policy ¶ 4(b)(iii).  See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business.  The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).

 

Complainant argues that Respondent uses Complainant’s HARLEY-DAVIDSON mark in the <harleydavidsonmotorcyclejackets.com> domain name, features Complainant’s logo on the resolving website, and mimics Complainant’s distinctive black and orange color scheme.  Complainant contends that these actions are all intended to attract Complainant’s intending customers to Respondent’s website, confuse them into believing Respondent’s website is Complainant’s authentic website, and profit from their subsequent potential purchases of counterfeit jackets and vests.  The Panel finds that Respondent’s clear intent to attract and mislead Complainant’s consumers for Respondent’s own commercial gain demonstrates bad faith registration and use under Policy ¶ 4(b)(iv).  See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (concluding that the respondent registered and used the <wwfauction.com> domain name in bad faith because the name resolved to a commercial website that the complainant’s customers were likely to confuse with the source of the complainant’s products, especially because of the respondent’s prominent use of the complainant’s logo on the site); see also Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant.  Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).

 

Complainant also asserts that Respondent’s website design, which incorporates Complainant’s logo and color scheme, in combination with the use of Complainant’s mark in the <harleydavidsonmotorcyclejackets.com> domain name, creates the impression that Respondent is Complainant and indicates that Respondent is aiming to pass itself off as Complainant.  The Panel finds that efforts to pass Respondent off as Complainant represent bad faith registration and use for the purposes of Policy ¶ 4(a)(iii).  See 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”); see also Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed.  Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).

 

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


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 <harleydavidsonmotorcyclejackets.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

James A. Carmody, Esq., Panelist

Dated:  July 12, 2010

 

 

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