H-D U.S.A., LLC, v. Artie Zabel / NA_
Claim Number: FA1410001585895
Complainant is H-D U.S.A., LLC, (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington D.C., USA. Respondent is Artie Zabel / NA_ (“Respondent”), Wisconsin, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <harleydavidsonmuseum.net>, and <vintageharleydavidson.net>, registered with TUCOWS, INC. and <harleydavidsonmuseum.com> registered with Domainroyale.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 21, 2014; the National Arbitration Forum received payment on October 21, 2014.
On October 21, 2014 TUCOWS, INC. confirmed by e-mail to the National Arbitration Forum that the <harleydavidsonmuseum.net> and <vintageharleydavidson.net> domain names are registered with TUCWOS, INC. TUCOWS, INC. affirmed that Respondent is the current registrant of the names. TUCOWS, INC. has verified that Respondent is bound by the TUCOWS, INC. 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 October 24, 2014 Domainroyale.com LLC confirmed by e-mail to the National Arbitration Forum that the <harleydavidsonmuseum.com> domain name is registered with Domainroyale.com LLC. Domainroyale.com LLC affirmed that Respondent is the current registrant of the name. Domainroyale.com LLC has verified that Respondent is bound by the Domainroyale.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 October 24, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 13, 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@harleydavidsonmuseum.com,
postmaster@harleydavidsonmuseum.net, and postmaster@vintageharleydavidson.net. Also on October 24, 2014, 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 20, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 names be transferred from Respondent to Complainant.
A. Complainant
1. Complainant has manufactured, advertised, and sold motorcycles under the HARLEY-DAVIDSON mark since 1903.
2. Respondent’s disputed domain names are confusingly similar to Complainant’s marks.
3. Complainant owns hundreds of trademark registrations for the HARLEY-DAVIDSON mark around the world and with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,078,871 registered December 6, 1977); (Reg. No. 1,234,404 registered April 12, 1983).
4. Complainant owns a registration for the HARLEY-DAVIDSON MUSEUM mark with the USPTO (Reg. No. 3,541,745 filed June 9, 2004 registered December 2, 2008). Complainant further states that it has common law rights in the HARLEY-DAVIDSON MUSEUM mark established through its continuous use of the mark for entertainment and education services and exhibitions for numerous years prior to Respondent’s registration of the disputed domain names.
5. Respondent has never been commonly known by the disputed domain names. There is no evidence on the record, including the WHOIS information, to demonstrate that Respondent is commonly known by the disputed domain names.
6. Respondent uses the disputed domain names to resolve to pay-per-click websites.
7. Respondent is opportunistically taking advantage of Complainant’s goodwill and reputation.
8. Respondent is attempting to pass itself off as Complainant.
9. Respondent’s registration of the three disputed domain names demonstrated a bad faith pattern of registrations.
10. Respondent’s competing use of the disputed domain names disrupts Complainant’s business in bad faith.
11. Respondent uses the disputed domain names to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant and its famous HARLEY-DAVIDSON marks as to the source, sponsorship, affiliation and endorsement of Respondent’s websites.
12. Respondent causes confusion with its use of the <harleydavidsonmuseum.com> domain names by attempting to pass itself off as Complainant.
13. Complainant registered the <harleydavidsonmuseum.com> domain name in 2001, and used the name to direct to its <harley-davidson.com> and <h-dmuseum.com> websites. In 2008 Complainant’s registration for the <harleydavidsonmuseum.com> domain name lapsed, and Respondent subsequently registered it.
14. Respondent had actual knowledge of Complainant and Complainant’s rights in the HARLEY-DAVIDSON marks.
1. Respondent registered the disputed domain names on the following dates;
a. <harleydavidsonmuseum.com> created on December 6, 2008.
b. <harleydavidsonmuseum.net> created on April 30, 2008.
c. <vintageharleydavidson.net> created on April 30, 2008.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the HARLEY-DAVIDSON and HARLEY-DAVIDSON MUSEUM marks. Respondent’s domain names are confusingly similar to Complainant’s marks. Complainant has established that Respondent lacks rights or legitimate interests in the use of the harleydavidsonmuseum.net>, <vintageharleydavidson.net>, and <harleydavidsonmuseum.com> domain names, and that Respondent registered and uses the domain names 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 asserts that it has rights in the HARLEY-DAVIDSON and HARLEY-DAVIDSON MUSEUM marks under Policy ¶ 4(a)(i). Complainant has manufactured, advertised, and sold motorcycles under the HARLEY-DAVIDSON mark since 1903. Complainant owns hundreds of trademark registrations for the HARLEY-DAVIDSON mark around the world including with the USPTO (Reg. No. 1,078,871 registered December 6, 1977) and (Reg. No. 1,234,404 registered April 12, 1983). Complainant further owns a registration for the HARLEY-DAVIDSON MUSEUM mark with the USPTO (Reg. No. 3,541,745 filed June 9, 2004 registered December 2, 2008). The Panel finds that Complainant’s rights in the marks are satisfied through its showing of longstanding USPTO registration. See, e.g., 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.”). Further, the relevant date for establishing rights in a mark is the filing date. See Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”). The Panel concludes that Complainant has rights in the HARLEY-DAVIDSON and HARLEY-DAVIDSON MUSEUM marks that predate Respondent’s registrations for the disputed domain names which are as follows:
<harleydavidsonmuseum.com> created on December 6, 2008.
<harleydavidsonmuseum.net> created on April 30, 2008.
<vintageharleydavidson.net> created on April 30, 2008.
Complainant next claims that Respondent’s <harleydavidsonmuseum.com>, <harleydavidsonmuseum.net> domain names are confusingly similar to Complainant’s HARLEY-DAVIDSON and HARLEY-DAVIDSON MUSEUM marks. Respondent removes the hyphen in complainant’s HARLEY-DAVIDSON and HARLEY-DAVIDSON MUSEUM marks and adds the generic top-level domain (“gTLD”) “.com” or “.net.” Respondent removes the space in Complainant’s HARLEY-DAVIDSON MUSEUM mark or adds the term “museum” to Complainant’s HARLEY-DAVIDSON mark.
Complainant also contends that Respondent’s <vintageharleydavidson.net> domain name is confusingly similar to complainant’s HARLEY-DAVIDSON mark. Respondent removes the hyphen in Complainant’s HARLEY-DAVIDSON mark and adds the gTLD “.net.” Respondent also adds the term “vintage.” The removal of a hyphen or space and the addition of a gTLD or descriptive term does not sufficiently differentiate a disputed domain name from a given mark under Policy ¶ 4(a)(i). See Mattel v. Rukes (NAF FA0109000099678) (finding the domain
name <barbievintage.com> among others confusingly similar to complainant’s BARBIE mark); see also H-D v. Ross (NAF FA0903001250712) (“The disputed <harley-davidsonjacket.com> domain name adds the generic and descriptive word ‘jacket’ to the HARLEY-DAVIDSON mark as well as the generic top-level domain ‘.com.’ The mark is clearly the dominant element, and the alterations either describe Complainant’s business . . . or are considered irrelevant under the Policy . . . . Therefore the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).”); see also Albertson’s, Inc. v. Bennett, FA 117013 (Nat. Arb. Forum Sept. 5, 2002) (“[T]he absence of a space and the hyphen between the words of the mark are not changes that are capable of overcoming a Policy ¶ 4(a)(i) identical analysis.”). Accordingly, the Panel concludes that Respondent’s <harleydavidsonmuseum.com>, <harleydavidsonmuseum.net> domain names are confusingly similar to Complainant’s HARLEY-DAVIDSON and HARLEY-DAVIDSON MUSEUM marks and Respondent’s <vintageharleydavidson.net> domain name is confusingly similar to complainant’s HARLEY-DAVIDSON mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). Complainant alleges that Respondent has never been commonly known by the disputed domain names. Additionally, Complainant states there is no evidence in the record, including the WHOIS information, to demonstrate that Respondent is commonly known by the disputed domain names. The WHOIS information lists “Artie Zabel” as registrant for the disputed domain names. Respondent has provided no evidence to suggest that it is in fact commonly known as the <harleydavidsonmuseum.com>, <harleydavidsonmuseum.net>, or <vintageharleydavidson.net> domain names. As such, the Panel holds that Respondent is not commonly known by any of the disputed domain names under Policy ¶ 4(c)(ii). See, e.g., True Value Co. v. Andrew Bucklin d/ba True Value Web, FA 1497691 (Nat. Arb. Forum June 13, 2013) (“The Panel is hesitant to recognize Respondent’s company as being commonly known by the disputed domain name when he has demonstrated little evidence of that company’s existence other than . . . the disputed domain name. . . every respondent in a UDRP proceeding could claim a legitimate interest in a disputed domain name merely by virtue of ownership of that name.”).
Respondent uses Complainant’s HARLEY-DAVIDSON MUSEUM mark prominently as the heading of the resolving website from the <harleydavidsonmuseum.com> domain name. Respondent also copies Complainant’s logos and website content from Complainant’s original <harleydavidsonmuseum.com> website. Attempting to compete with a complainant by mimicking its website amounts to passing off, and does not indicate rights or legitimate interests in a disputed domain name. See 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).
Complainant has shown that it registered the <harleydavidsonmuseum.com> domain name in 2001, and used the name to direct Internet users to its <harley-davidson.com> and <h-dmuseum.com> websites. In 2008 Complainant’s registration for the <harleydavidsonmuseum.com> domain name lapsed, and Respondent subsequently registered it. Previous ownership of a disputed domain name by a complainant is further evidence that respondent has no rights or legitimate interests in the disputed domain name. See RH-Interactive Jobfinance v. Mooburi Servs., FA 137041 (Nat. Arb. Forum Jan. 16, 2003) (“Complainant’s prior registration of the domain name, coupled with Respondent’s failure to respond to this dispute, is evidence that Respondent has no rights or legitimate interests in the domain name pursuant to Policy 4(a)(ii).”). The Panel agrees that Respondent’s registration of the <harleydavidsonmuseum.com> domain name subsequent to Complainant’s lapse further demonstrates Respondent’s lack of Policy ¶ 4(a)(ii) rights in the name.
Complainant claims that Respondent’s use of the <harleydavidsonmuseum.net> and <vintageharleydavidson.net> domain names competes with Complainant by resolving to pay-per-click websites. Respondent’s resolving websites display links such as “Motorcycle helmet,” “Harley Davidson,” “Suzuki Atv,” “Mens Clothing,” “Honda Motorcycle Part,” and “Harley Davidson Boots.” The promotion of related motorcycle dealerships and repair businesses—businesses not approved of by Complainant—shows that Respondent lacks rights pursuant to Policy ¶ 4(a)(ii). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(a)(iii). Complainant states that Respondent’s registration of the three disputed domain names demonstrated a bad faith pattern of registrations. The panel inYAHOO! INC v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) held that it was bad faith pursuant to Policy ¶ 4(b)(ii) where respondent registered two domain names incorporating the complainant's YAHOO! Mark. The Panel similarly find that Respondent’s registration and use of the <harleydavidsonmuseum.com>, <harleydavidsonmuseum.net>, and <vintageharleydavidson.net> domain names indicates bad faith use and registration under Policy ¶ 4(b)(ii).
Complainant next asserts that Respondent’s competing use of the disputed domain names disrupts Complainant’s business. As discussed above, Respondent uses the <harleydavidsonmuseum.com> domain name to display Complainant’s logos and products. Respondent uses the <harleydavidsonmuseum.net>, and <vintageharleydavidson.net> domain names to display various pay-per-click links for third-parties that compete with Complainant. Using a domain name to display third party links or content that competes with a complainant, disrupts complainant’s business in bad faith under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent). The Panel concludes that Respondent registered and is using the <harleydavidsonmuseum.com>, <harleydavidsonmuseum.net>, and <vintageharleydavidson.net> domain names in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant also claims that Respondent uses the disputed domain names to intentionally attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant and its famous HARLEY-DAVIDSON marks as to the source, sponsorship, affiliation and endorsement of Respondent’s websites. In addition to Respondent’s use of pay-per-click links, Complainant claims that Respondent causes confusion with its use of the <harleydavidsonmuseum.com> domain name by attempting to pass itself off as Complainant. Using a complainant’s mark in a domain name to attract Internet users to a website where respondent likely financially profits, indicates bad faith use and registration under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); 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 agrees that Complainant has established bad faith within the meaning of Paragraph 4(b)(iv) of the Policy.
Complainant states that it registered the <harleydavidsonmuseum.com> domain name in 2001, and used the name to redirect to its <harley-davidson.com> and <h-dmuseum.com> websites. In 2008 Complainant states that its registration for the <harleydavidsonmuseum.com> domain name lapsed, and Respondent subsequently registered it. The panel in Red Nacional De Los Ferrocarriles Espanoles v. Ox90, D2001-0981 (WIPO Nov. 21, 2001) stated, “The Panel holds that where there is an intentional registration of a domain name by one with obvious reason to believe that it might be the trademarked name of another, combined with an intentional or reckless failure to verify whether that is the case and without making even the most basic inquiry, constitutes registration of that domain name in bad faith.” The Panel agrees and concludes that Respondent’s registration and use of the <harleydavidsonmuseum.com> domain name after Complainant owned it, amounts to bad faith under and registration under Policiy ¶ 4(a)(iii).
Complainant argues that Respondent had actual knowledge of Complainant and Complainant’s rights in the HARLEY-DAVIDSON marks at the time Respondent registered the <harleydavidsonmuseum.com>, <harleydavidsonmuseum.net>, and <vintageharleydavidson.net> domain names. Complainant believes that it follows logically that Respondent knew of Complainant’s rights when Respondent uses the domain names to display Complainant’s marks and offer products that compete with Complainant’s business. This further evidence of Respondent’s bad faith. See, e.g., Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
The Panel finds 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 <harleydavidsonmuseum.com>, <harleydavidsonmuseum.net>, and <vintageharleydavidson.net> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: December 1, 2014
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