national arbitration forum

 

DECISION

 

H-D U.S.A., LLC v. Nobuyoshi Tanaka / Personal

Claim Number: FA1312001534740

 

PARTIES

Complainant is H-D U.S.A., LLC (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington, D.C., USA.  Respondent is Nobuyoshi Tanaka / Personal (“Respondent”), Japan.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <harley-davidsonsales.com>, registered with GMO Internet, Inc. d/b/a Onamae.com.

 

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.

 

Kenneth L. Port has been appointed as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 16, 2013; the National Arbitration Forum received payment on December 16, 2013. The Complaint was received in both English and Japanese.

 

On December 16, 2013, GMO Internet, Inc. d/b/a Onamae.com confirmed by e-mail to the National Arbitration Forum that the <harley-davidsonsales.com> domain name is registered with GMO Internet, Inc. d/b/a Onamae.com and that Respondent is the current registrant of the name.  GMO Internet, Inc. d/b/a Onamae.com has verified that Respondent is bound by the GMO Internet, Inc. d/b/a Onamae.com 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 December 20, 2013, the Forum served the Japanese language Complaint and all Annexes, including a Japanese language Written Notice of the Complaint, setting a deadline of January 9, 2014 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-davidsonsales.com.  Also on December 20, 2013, the Japanese language 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.

 

A timely Response was received and determined to be complete on January 8, 2014.

 

On January 17, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Kenneth L. Port 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

Complainant

a)         Complainant has been in business since 1903. Complainant manufactures, advertises and sells motorcycles. Complainant operates a website for U.S. customers at <harley-davidson.com> and for Japanese customers at <harley-davidson.co.jp>.

b)         Complainant has rights in the HARLEY-DAVIDSON mark, used in connection with the manufacture and distribution of motorcycles. Complainant owns registrations for the HARLEY-DAVIDSON mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,078,871 registered December 6, 1977).

c)         Respondent’s <harley-davidsonsales.com> domain name is confusingly similar to Complainant’s HARLEY-DAVIDSON mark. The disputed domain name incorporates Complainant’s mark in its entirety with the generic term “sales.”

d)         Respondent does not have any rights or legitimate interests in the <harley-davidsonsales.com> domain name.

a.         Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its HARLEY-DAVIDSON mark in any way.

b.         Respondent is using the <harley-davidsonsales.com> domain name to provide adult-oriented content regarding aphrodisiacs and erectile dysfunction. See Complainant’s Exhibit 6.

e)         Respondent registered and is using the <harley-davidsonsales.com> domain name in bad faith.

a.         Respondent is using the disputed domain name to intentionally attract Internet users for Respondent’s own commercial gain by creating a likelihood of confusion with Complainant’s mark. Respondent is benefiting from the use of Complainant’s mark to the detriment of Complainant.

b.         Respondent is tarnishing Complainant’s mark by using the <harley-davidsonsales.com> domain name to provide adult-oriented content regarding aphrodisiacs and erectile dysfunction. See Complainant’s Exhibit 6.

c.         Respondent had knowledge of Complainant’s HARLEY-DAVIDSON mark prior to registering the <harley-davidsonsales.com> domain name because Complainant has conducted business in Respondent’s country of operation for 100 years.

f)          Respondent registered the <harley-davidsonsales.com> domain name on March 18, 2013.

 

Respondent

a)            Respondent submitted a document classified as a Response by the Forum. However, the content was essentially non-responsive in its substance.  The Response consists of a three sentence statement in Japanese that the <harley-davidsonsales.com> domain name should be transferred, at no cost to the Complainant, if the Complainant merely contact the Respondent at a given e-mail address. 

Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Japanese language Complaint and Commencement Notification, and, faced with a substantive English-language Complainant and a substantively non-responsive Japanese-language Response, determines that the remainder of the proceedings may be conducted in English.  When translated into English, the Japanese language non-responsive Response consists of a complete acquiescence of Complainant’s Complaint.  The non-responsive Response merely recommends precisely what Complainant demands.

A substantive review further substantiates the conclusion that the <harley-davidsonsales.com> domain name should be transferred to Complainant.

 

Identical or Confusingly Similar: Policy ¶ 4(a)(i).

 

Complainant contends and this Panel finds that it has rights in and to the HARLEY-DAVIDSON mark, used in connection with the manufacture and distribution of motorcycles. Complainant states it owns registrations for the HARLEY-DAVIDSON mark with the USPTO (e.g., Reg. No. 1,078,871 registered December 6, 1977). The Panel notes that Respondent resides or operates in a different country than that in which Complainant holds its trademark registrations; however, past panels have determined that a complainant need not own a registration in a respondent’s country of operation, and it is sufficient that a complainant own a registration in a different country. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant has rights in the HARLEY-DAVIDSON mark under Policy ¶ 4(a)(i) because Complainant owns a valid trademark registration with the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).

 

Complainant alleges and this Panel finds that Respondent’s <harley-davidsonsales.com> domain name is confusingly similar to Complainant’s HARLEY-DAVIDSON mark. Complainant notes that the disputed domain name incorporates Complainant’s mark in its entirety while adding the generic term “sales.” The Panel notes that the disputed domain name also includes the generic top-level domain (“gTLD”) “.com.” First, the Panel finds that the addition of a generic term to a trademark in a disputed domain name does not sufficiently differentiate the disputed domain name from the trademark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Next, the Panel finds that the addition of a gTLD is not relevant for the purposes of confusing similarity analysis under Policy ¶ 4(a)(i). 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). Therefore, this Panel finds that Respondent’s <harley-davidsonsales.com> domain name is confusingly similar to Complainant’s HARLEY-DAVIDSON mark pursuant to Policy ¶ 4(a)(i).

 

Respondent makes no contentions with regards to Policy ¶ 4(a)(i).

 

Rights and Legitimate Interests: Policy ¶ 4(a)(ii).

 

Complainant claims and this Panel finds that Respondent does not have any rights or legitimate interests in the <harley-davidsonsales.com> domain name. Complainant asserts that Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its HARLEY-DAVIDSON mark in any way. The Panel notes that the WHOIS record for the disputed domain name lists “Nobuyoshi Tanaka” as the domain name registrant. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on record as a whole in determining whether the respondent is commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, because Respondent was not authorized by Complainant to use the HARLEY-DAVIDSON mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the <harley-davidsonsales.com> domain name under Policy ¶ 4(c)(ii).

 

Complainant alleges and this Panel finds that Respondent is using the <harley-davidsonsales.com> domain name to provide adult-oriented content regarding aphrodisiacs and erectile dysfunction. See Complainant’s Exhibit 6. Panels have generally found that adult-oriented content includes some kind of pornographic content. See Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding that the respondent’s use of its domain name to link unsuspecting Internet traffic to an adult orientated website, containing images of scantily clad women in provocative poses, did not constitute a connection with a bona fide offering of goods or services or a noncommercial or fair use); see also MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third-party sites offering sexually explicit and adult-oriented material where such use is calculated to mislead consumers and to tarnish the complainant’s mark). Therefore, the Panel notes that the content on the resolving website is entirely unrelated to Complainant’s business, and past panels have held that such use of a disputed domain name does not constitute a legitimate use under Policy ¶ 4(c)(i) or 4(c)(iii). See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Therefore, the Panel finds that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because Respondent is using the <harley-davidsonsales.com> domain name to provide content unrelated to Complainant’s business.

 

Respondent makes no contentions regarding Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).

 

Complainant contends and this Panel finds that Respondent registered and is using the <harley-davidsonsales.com> domain name in bad faith. Complainant asserts that Respondent is using the disputed domain name to intentionally attract Internet users for Respondent’s own commercial gain by creating a likelihood of confusion with Complainant’s mark. Complainant argues that Respondent is benefiting from the use of Complainant’s mark to the detriment of Complainant. In Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005), the panel found bad faith under Policy ¶ 4(b)(iv) where the respondent was capitalizing on the “valuable goodwill” the complainant had established in its marks through the use of a confusingly similar domain name. Therefore, the Panel finds that Respondent registered and is using the <harley-davidsonsales.com> domain name in bad faith under Policy ¶ 4(b)(iv) because Respondent is using a confusingly similar domain name to capitalize on the goodwill Complainant has accumulated in its HARLEY-DAVIDSON mark.

 

Complainant asserts that Respondent is tarnishing Complainant’s mark by using the <harley-davidsonsales.com> domain name to provide adult-oriented content regarding aphrodisiacs and erectile dysfunction. See Complainant’s Exhibit 6. In Google Inc. v. Java Den Web Solutions, FA 1355351 (Nat. Arb. Forum Mar. 20, 2011), the panel explained that “tarnishment usually involves a deliberate attempt to devalue a mark by associating it with things that dilute or damage its commercial value.” Past panels have found tarnishment by use of adult-oriented content constitutes bad faith. See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith). However, panels have generally only found tarnishment by adult-oriented content if the content on the resolving website includes pornographic materials, such as graphic pornographic photos. See Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith) (emphasis added); see also Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that the respondent’s use of the complainant’s mark to post adult-oriented photographs and to publicize hyperlinks to additional adult-oriented websites evidenced bad faith use and registration of the domain name). Therefore, the Panel concludes that Respondent is acting in bad faith because Respondent is using the <harley-davidsonsales.com> domain name to tarnish Complainant’s HARLEY-DAVIDSON as the Panel also finds that the content displayed on the resolving website constitutes adult-oriented content.

 

Complainant alleges that Respondent had knowledge of Complainant’s HARLEY-DAVIDSON mark prior to registering the <harley-davidsonsales.com> domain name because Complainant has conducted business in Respondent’s country of operation for 100 years. The Panel notes that constructive notice is generally regarded as insufficient to support a finding of bad faith. See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith). However, the Panel determines that the Respondent was well aware of Complainant’s mark; therefore the Panel concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware” of the complainant's YAHOO! mark at the time of registration).

 

Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).

 

FINDINGS

This Panel, therefore, finds that the Complainant has satisfactorily established each element of the requisite Paragraphs 4(a)(i), 4(a)(ii) and 4(a)(iii) and hereby orders the <harley-davidsonsales.com> domain name be transferred.  In addition, the Panel finds that the non-responsive Response filed by the Respondent in Japanese acts as a complete acquiescence of or to Complainant’s contentions.

 

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-davidsonsales.com> domain name be transferred from the Respondent to the Complainant.

 

 

Kenneth L. Port, Panelist

Dated:  January 31, 2014

 

 

 

 

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