H-D U.S.A., LLC v. All Jackets
Claim Number: FA1310001527418
Complainant is H-D U.S.A., LLC (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington, D.C., USA. Respondent is All Jackets (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <harleydavidson-jackets.com>, registered with GoDaddy.com, LLC.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 30, 2013; the National Arbitration Forum received payment on October 30, 2013.
On October 31, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <harleydavidson-jackets.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 November 1, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 21, 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@harleydavidson-jackets.com. Also on November 1, 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 November 25, 2013, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <harleydavidson-jackets.com> domain name is confusingly similar to Complainant’s HARLEY-DAVIDSON mark.
2. Respondent does not have any rights or legitimate interests in the <harleydavidson-jackets.com> domain name.
3. Respondent registered and uses the <harleydavidson-jackets.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant uses the HARLEY-DAVIDSON mark to identify its motorcycle, apparel, and motorcycle accessory products. Complainant has registered the HARLEY-DAVIDSON mark with the United States Patent and Trademark Office ("USPTO") (e.g. Reg. No. 1,078,871 registered on December 6, 1977).
Respondent registered the <harleydavidson-jackets.com> domain name on October 13, 2013, and uses it to sell counterfeit HARLEY-DAVIDSON goods.
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.”).
Thus the Panel finds that Complainant has established rights in its HARLEY-DAVIDSON mark pursuant to Policy ¶ 4(a)(i) through its registration with the USPTO, despite Respondent’s purported China-based domicile. See Scripps Networks, LLC v. chen wenjie, FA 1523127 (Nat. Arb. Forum Nov. 12, 2013) (“The Panel finds that Complainant’s USPTO registration establishes Complainant’s rights in the mark under Policy ¶ 4(a)(i), even despite the fact that Respondent appears to reside out of the United States.”).
Respondent’s <harleydavidson-jackets.com> domain name is confusingly similar to Complainant’s HARLEY-DAVIDSON mark, as it merely adds the generic product descriptor “jackets” to the mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). The addition of a hyphen and the gTLD “.com” are irrelevant. See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also 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). The Panel finds that the <harleydavidson-jackets.com> domain name is confusingly similar to the HARLEY-DAVIDSON mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
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 known as the <harleydavidson-jackets.com> domain name, as there is no evidence in the record showing any relationship. Complainant states that it has not authorized or licensed Respondent’s use of the HARLEY-DAVIDSON mark in domain names. The WHOIS information lists “all jackets” as the registrant of the domain name. In the case of St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007), the panel declined to find under Policy ¶ 4(c)(ii) when the record provided no basis for determining that the respondent was ever known by the disputed domain name. The Panel finds that Respondent is not known as the <harleydavidson-jackets.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant argues that Respondent uses the <harleydavidson-jackets.com> domain name to sell counterfeit HARLEY-DAVIDSON goods. The Panel notes that the disputed domain name resolves to a website under the masthead “Winter-jackets-outlet.com” and features various tabs to clothing products, including an array of goods bearing the HARLEY-DAVIDSON mark. See Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) where the panel found “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 Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Thus, the Panel finds that Respondent is not making a legitimate noncommercial or fair use of the <harleydavidson-jackets.com> domain name.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent is disrupting Complainant’s business by selling counterfeit HARLEY-DAVIDSON goods through the WEBSITE AT <harleydavidson-jackets.com>. The Panel agrees and finds Policy ¶ 4(b)(iii) bad faith. In Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Nat. Arb. Forum Mar. 5, 2008), the panel agreed that Policy ¶ 4(b)(iii) bad faith could be found when the domain name was used to promote counterfeit goods that were neither authorized nor approved of by the mark-holding complainant.
Respondent is also creating a likelihood that Internet users who visit the website at <harleydavidson-jackets.com> will purchase the counterfeit HARLEY-DAVIDSON goods under the belief that Complainant sponsors or endorses the website. In the case of H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009), the panel determined that the presence of competing and counterfeit merchandise on the disputed domain name’s resolving website created a likelihood that Internet users would mistaken the complainant as a source or affiliate of the respondent’s business, and as such the respondent had illustrated Policy ¶ 4(b)(iv) bad faith. The Panel finds that Respondent’s sale of counterfeit HARLEY-DAVIDSON goods constitutes bad faith under Policy ¶ 4(b)(iv).
Complainant claims that Respondent certainly had knowledge of Complainant’s rights when registering the domain name, as the domain name is used to sell counterfeit goods that contain the unauthorized use of HARLEY-DAVIDSON mark. The Panel agrees and finds that the presence of goods bearing the HARLEY-DAVIDSON mark at <harleydavidson-jackets.com> is evidence of actual notice of Complainant’s rights in the mark, and constitutes evidence of Policy ¶ 4(a)(iii) bad faith. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name").
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <harleydavidson-jackets.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: December 2, 2013
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