H-D U.S.A., LLC v. jiangjun / jiang jun
Claim Number: FA1402001542393
Complainant is H-D U.S.A., LLC (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington D.C., USA. Respondent is jiangjun / jiang jun (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sunsonharley.com>, registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 6, 2014; the National Arbitration Forum received payment on February 6, 2014. The Complaint was received in both Chinese and English.
On February 13, 2014, Beijing Innovative Linkage Technology Ltd. dba dns.com.cn confirmed by e-mail to the National Arbitration Forum that the <sunsonharley.com> domain name is registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn and that Respondent is the current registrant of the name. Beijing Innovative Linkage Technology Ltd. dba dns.com.cn has verified that Respondent is bound by the Beijing Innovative Linkage Technology Ltd. dba dns.com.cn 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 February 14, 2014, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of March 6, 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@sunsonharley.com. Also on February 14, 2014, the Chinese 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 12, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.
LANGUAGE OF THE PROCEEDINGS
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and absent a Response, determines that the remainder of the proceedings may be conducted in English.
1. Complainant has rights in the HARLEY mark under Policy ¶ 4(a)(i).
a. Complainant has used the HARLEY-DAVIDSON trademark to manufacture, advertise, and market motorcycles since 1903. Complainant has offered a full array of motorcycle parts and accessories, apparel, and other products and services under the HARLEY mark for decades.
b. Complainant has more than 1,500 authorized dealers around the world including in China.
c. Complainant owns hundreds of trademark registration for the HARLEY mark around the world including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No 1,352,679 registered August 6, 1985).
d. Respondent’s <sunsonharley.com> domain name is confusingly similar to Complainant’s HARLEY mark.
i. Respondent’s <sunsonharley.com> domain name contains Complainant’s mark in its entirety. Respondent includes the term “Sunson” presumably because Respondent’s trade name is Sunson. Respondent also adds the generic top-level domain (“gTLD”) “.com” to Complainant’s mark.
2. Respondent has no rights or legitimate interests in the <sunsonharley.com> domain name.
a. Respondent is not commonly known by the disputed domain name.
i. There is no evidence on the record, including the WHOIS information, to demonstrate that Respondent is commonly known by the disputed domain name. Additionally, Respondent is not licensed or authorized by Complainant to use the HARLEY mark in any way.
b. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
i. Respondent is offering counterfeit products and thereby unfairly competing with Complainant’s offering of genuine HARLEY products.
ii. Respondent is attempting to pass itself off as Complainant’s legitimate business.
3. Respondent registered and is using the <sunsonharley.com> domain name in bad faith.
a. Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
i. Respondent disrupts Complainant’s business by offering counterfeit HARLEY products that unfairly compete with Complainant’s own offering of its genuine products.
b. Respondent registered and is using the <sunsonharley.com> domain name in bad faith under Policy ¶ 4(b)(iv).
i. Respondent uses the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant and its famous HARLEY mark as to the source of Respondent’s website and the products offered therein.
ii. Respondent is attempting to pass itself off as Complainant by using a confusingly similar domain name and offering counterfeit products.
c. Respondent registered the disputed domain name with complete knowledge of Complainant and Complainant’s HARLEY mark.
The Panel notes that Respondent’s <sunsonharley.com> domain name was registered August 17, 2013.
1. Respondent’s <sunsonharley.com> domain name is confusingly similar to Complainant’s HARLEY mark.
2. Respondent does not have any rights or legitimate interests in the <sunsonharley.com> domain name.
3. Respondent registered or used the <sunsonharley.com> domain name in bad faith.
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.”).
Complainant contends that it has used the HARLEY-DAVIDSON trademark to manufacture, advertise, and market motorcycles since 1903. Complainant states that it has offered a full array of motorcycle parts and accessories, apparel, and other products and services under the HARLEY mark for decades. Complainant states that it has more than 1,500 authorized dealers around the world including in China. Complainant asserts that it owns hundreds of trademark registrations for the HARLEY mark around the world, for example, with the USPTO (e.g., Reg. No 1352679 registered August 6, 1985). Complainant thus asserts that it has rights in the HARLEY mark under Policy ¶ 4(a)(i) through its use and registrations. The Panel notes that Complainant does not provide any further registrations. Prior panels have concluded that submitting evidence of a registration with a recognized trademark authority is sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that, where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i)”). The Panel concludes that Complainant has rights in the <sunsonharley.com> domain name under Policy ¶ 4(a)(i).
Complainant additionally claims that Respondent’s <sunsonharley.com> domain name is confusingly similar to Complainant’s HARLEY mark under Policy ¶ 4(a)(i). Complainant states that Respondent’s <sunsonharley.com> domain name contains Complainant’s mark in its entirety. Complainant adds that Respondent presumably includes the term “Sunson” because Respondent’s trade name is Sunson. Complainant states that Respondent also adds the gTLD “.com” to Complainant’s mark. Prior panels have concluded that adding a gTLD and a descriptive term does not distinguish a disputed domain name from a given mark. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant); see also Christie’s Inc. v. Tiffany’s Jewelry Auction, Inc., D2001-0075 (WIPO Mar. 6, 2001) (finding that the domain name <christiesauction.com> is confusingly similar to the complainant's mark since it merely adds the word “auction” used in its generic sense). The Panel concludes that Respondent’s <sunsonharley.com> domain name is confusingly similar to Complainant’s HARLEY mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then 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 contends that Respondent has no rights or legitimate interests in the <sunsonharley.com> domain name. Complainant argues that Respondent is not commonly known by the disputed domain name. Complainant points out that there is no evidence on the record, including the WHOIS information, to demonstrate that Respondent is commonly known by the disputed domain name. Additionally, Complainant states that Respondent is not licensed or authorized by Complainant to use the HARLEY mark in any way. The Panel notes that the WHOIS information for Respondent’s disputed domain name lists “jiangjun” as registrant. Prior panels have found that a respondent is not commonly known by the disputed domain name where there is no evidence on the record indicating that there is a relationship between the two. 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The Panel concludes that Respondent is not commonly known by the <sunsonharley.com> domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent has no rights or legitimate interests in the <sunsonharley.com> domain name because Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Complainant claims that Respondent is offering counterfeit products and thereby unfairly competing with Complainant’s offering of genuine HARLEY products. Complainant further states that Respondent is attempting to pass itself off as Complainant’s legitimate business. The Panel notes Exhibit 7 displaying a website with the heading “Harley-Davidson.” The Panel sees that Respondent displays a variety of jackets that appear to be leather Harley Davidson jackets. Additionally, the Panel notes the side panel displaying links, some of which include, “H-D women,” “H-D Leather jacket,” “H-D Leather Vest,” “H-D Nylon jacket,” “H-D T-shirt,” “H-D Hoodie,” “H-D Gloves,” and “H-D bags.” Prior panels have concluded that using a confusingly similar domain name to resolve to a website attempting to pass itself off as complainant as well as offering allegedly counterfeit products does not convey rights or legitimate interests to a respondent. 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); see also Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as 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 pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). The Panel concludes that Respondent has no rights or legitimate interests in the <sunsonharley.com> domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii).
Complainant claims that Respondent registered and is using the <sunsonharley.com> domain name in bad faith under Policy ¶ 4(b)(iii). Complainant asserts that Respondent disrupts Complainant’s business by offering counterfeit HARLEY products that unfairly compete with Complainant’s own offering of its genuine products. Panels have routinely found that offering counterfeit versions of a complainant’s products disrupts a complainant’s business by unfairly competing. 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). The Panel concludes that Respondent registered and is using the <sunsonharley.com> domain name in bad faith under Policy ¶ 4(b)(iii).
Additionally, Complainant argues that Respondent registered and is using the <sunsonharley.com> domain name in bad faith under Policy ¶ 4(b)(iv). Complainant explains that Respondent uses the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant and its famous HARLEY mark as to the source of Respondent’s website and the products offered therein. Complainant states that Respondent does this by attempting to pass itself off as Complainant by using a confusingly similar domain name and offering counterfeit products. Panels have often found that using a confusingly similar domain name to resolve to a website attempting to pass itself off as a complainant and offering counterfeit versions of a complainant’s products for commercial profit indicate bad faith use and registration. 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); see also H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion). The Panel concludes that Respondent registered and is using the <sunsonharley.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant argues that Respondent registered the disputed domain name with complete knowledge of Complainant and Complainant’s HARLEY mark. Complainant argues that its HARLEY mark is famous internationally, and the fact that Respondent is offering counterfeit products of Complainant’s bolsters the claim that Respondent had actual knowledge of Complainant’s mark. The Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under 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 disputed 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 <sunsonharley.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: March 31, 2014
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