H-D U.S.A., LLC v. dustin farthing
Claim Number: FA1507001629413
Complainant is H-D U.S.A., LLC (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington, D.C., United States. Respondent is dustin farthing (“Respondent”), Georgia, United States.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <harley-davidsonatlanta.com>, <harley-davidsonfl.com>, <harley-davidsonflorida.com>, <harley-davidsonga.com>, <harley-davidsongeorgia.com>, <harleydavidsonoffl.com>, <harleydavidsonofga.com>, <harleydavidsonofgeorgia.com>, <mmsharley-davidson.com>, <mmsharleydavidson.com>, <mountainmotorsportsharleydavidson.com>, and <mountainmotorsportsharley.com>, registered with GoDaddy.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 17, 2015; the Forum received payment on July 17, 2015.
On July 17, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <harley-davidsonatlanta.com>, <harley-davidsonfl.com>, <harley-davidsonflorida.com>, <harley-davidsonga.com>, <harley-davidsongeorgia.com>, <harleydavidsonoffl.com>, <harleydavidsonofga.com>, <harleydavidsonofgeorgia.com>, <mmsharley-davidson.com>, <mmsharleydavidson.com>, <mountainmotorsportsharleydavidson.com>, and <mountainmotorsportsharley.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 July 20, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 10, 2015 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-davidsonatlanta.com, postmaster@harley-davidsonfl.com, postmaster@harley-davidsonflorida.com, postmaster@harley-davidsonga.com, postmaster@harley-davidsongeorgia.com, postmaster@harleydavidsonoffl.com, postmaster@harleydavidsonofga.com, postmaster@harleydavidsonofgeorgia.com, postmaster@mmsharley-davidson.com, postmaster@mmsharleydavidson.com, postmaster@mountainmotorsportsharleydavidson.com, postmaster@mountainmotorsportsharley.com. Also on July 20, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On August 14, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
Complainant contends as follows:
Complainant manufactures, advertises, and sells motorcycles under the HARLEY-DAVIDSON trademark and trade name; Complainant also offers a full array of motorcycle parts and accessories, apparel, and other products and services under this mark. Complainant also offers motorcycle parts and accessories, clothing, and various other products and services under the HARLEY mark.
Complainant has registered the HARLEY-DAVIDSON mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,078,871, registered December 6, 1977). Complainant also registered the HARLEY mark with the USPTO (e.g., Reg. No. 1,352,679, registered August 6, 1985). These USPTO registrations demonstrate Complainant’s rights in its marks.
The <harley-davidsonatlanta.com>, <harley-davidsonfl.com>, <harley-davidsonflorida.com>, <harley-davidsonga.com>, <harley-davidsongeorgia.com>, <harleydavidsonoffl.com>, <harleydavidsonofga.com>, and <harleydavidsonofgeorgia.com> domain names are confusingly similar to Complainant’s marks as they contain Complainant’s HARLEY-DAVIDSON mark in its virtual entirety combined with the geographic terms “atlanta,” “fl,” “florida,” “ga,” “georgia,” “of fl,” and “of georgia.” The <mmsharley-davidson.com>, <mmsharleydavidson.com>, <mountainmotorsportsharleydavidson.com>, and <mountainmotorsportsharley.com> domain names are confusingly similar to Complainant’s marks because each contains Complainant’s marks in its entirety combined with Respondent’s business names “Mountain Motorsports” or “MMS.” Additionally, the omission of hyphens from the disputed domain names and the addition of generic top-level domains (“gTLD”) to the disputed domain names are irrelevant to the confusing similarity analysis.
Respondent has no rights or legitimate interests in the disputed domain names. First, Respondent is not commonly known by the disputed domain names or any variant of Complainant’s marks. Second, Respondent is not licensed or authorized to use Complainant’s marks. Finally, Respondent is not making a bona fide offering of goods or services through the disputed domain names or a legitimate noncommercial or fair use. All of Respondent’s disputed domain names resolve to webpages that display a “Website Coming Soon!” notification, thereby making it clear that Respondent has made no active use of the disputed domain names. Respondent also uses the disputed domain names to advertise and/or offer products and services in direct competition with Complainant.
Respondent has registered and is using the disputed domain names in bad faith. First, Respondent has engaged in a pattern of bad faith pursuant to Policy ¶ 4(b)(ii) by registering numerous infringing domain names. Second, Respondent has disrupted Complainant’s business by using the disputed domain names to divert Internet users from Complainant’s website to Respondent’s websites, thereby engaging in conduct proscribed by Policy ¶ 4(b)(iii). Further, Respondent has demonstrated bad faith by using the disputed domain names to promote products and services that compete directly with Complainant’s business, thereby violating Policy ¶ 4(b)(iv). Finally, Respondent engaged in bad faith pursuant to Policy ¶ 4(a)(iii) by not making an active use of any of the domain names, and by having actual knowledge of Complainant’s marks at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the HARLEY-DAVIDSON mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in its relevant trademarks.
Respondent uses the domain names to display a webpage with the notification that a website will be coming soon.
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.”).
The at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of USPTO trademark registrations for the HARLEY-DAVIDSON and HARLEY trademarks demonstrates its rights in such marks for the purposes of Policy ¶4(a)(i). SeeMicrosoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Each of the at-issue domain names incorporates Complainant’s HARLEY-DAVIDSON (in some cases less its hyphen), or HARLEY trademarks. Some add one of the descriptive geographic terms “atlanta,” “georgia,” or “ofgeorgia,” “ga,” or “ofga” “florida,” “fl,” or “offl” and others similarly contain Complainant’s mark in its entirety, but are instead combined it with Respondent’s business name “Mountain Motorsports” or “MMS.” Each at-issue domain name has the top level domain name, “.com,” appended to its trademark laden second level string. The resulting deviations from Complainant’s trademarks are insufficient to distinguish any of the at-issue domain names from such trademarks for the purposes of the Policy. Therefore, the Panel finds that the <harley-davidsonatlanta.com>, <harley-davidsonfl.com>, <harley-davidsonflorida.com>, <harley-davidsonga.com>, <harley-davidsongeorgia.com>, <harleydavidsonoffl.com>, <harleydavidsonofga.com>, <harleydavidsonofgeorgia.com>, <mmsharley-davidson.com>, <mmsharleydavidson.com>, <mountainmotorsportsharleydavidson.com>, and <mountainmotorsportsharley.com> domain names are each confusingly similar to Complainant’s HARLEY-DAVIDSON or HARLEY mark pursuant to Policy ¶4(a)(i). See H-D Michigan v. Chip Kastelnik (FA 622012 (Nat. Arb. Forum Feb. 16, 2006) (“The <sandiegohd.com> domain name combines Complainant’s HD mark in its entirety with the geographic term ‘San Diego.’ The addition of a geographic term to Complainant’s registered mark renders the disputed domain name confusingly similar to the mark.”); see also, H-D U.S.A., LLC v jiangjun / jiang jun FA 1542393 (Nat. Arb. Forum March 31, 2014) (finding the domain name <sunsonharley.com> that contains Complainant’s HARLEY mark in its entirety combined with Respondent’s presumed trade name “Sunson” confusing similar to Complainant’s mark); see also, Cargill, Incorporated v. Domain Privacy Grp., FA 1501652 (Nat. Arb. Forum Jul. 5, 2013) (determining that the disputed domain name, which contains the complainant’s mark, along with two generic terms and a generic top-level domain, is the equivalent of the mark itself for the purposes of Policy ¶ 4(a)(i)); see also, Ritz-Carlton Hotel Co. v. Club Car Executive Transp., D2000-0611 (WIPO Sept. 18, 2000) (finding that removing a hyphen in the domain names is not sufficient to differentiate the domain names from the mark).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of each of the at-issue domain names. Respondent is not authorized to use Complainant’s trademarks in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of any of the at-issue domain names.
WHOIS information for the at-issue domain names lists “dustin farthing” as the domain names’ registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by any one of the <harley-davidsonatlanta.com>, <harley-davidsonfl.com>, <harley-davidsonflorida.com>, <harley-davidsonga.com>, <harley-davidsongeorgia.com>, <harleydavidsonoffl.com>, <harleydavidsonofga.com>, <harleydavidsonofgeorgia.com>, <mmsharley-davidson.com>, <mmsharleydavidson.com>, <mountainmotorsportsharleydavidson.com>, and <mountainmotorsportsharley.com>domain names. Therefore, the Panel finds that Respondent is not commonly known by any of the at-issue domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
According to Complainant, Respondent is using the at-issue domain names to advertise and/or offer directly competing motorcycle brands. While Complainant has not provided any direct evidence with respect to any current or past competing use of the domain names by Respondent, without some benign explanation from Respondent regarding it plans for the domain names, the fact that the webpages addressed by the at-issue domain names currently display a “Website Coming Soon!” message leads to an inference that Respondent intends to trade on Complainant’s marks. Importantly, such circumstances do not demonstrate Respondent’s use of any of the at-issue domain names in connection with either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate non-commercial or fair use of the domain names under Policy ¶ 4(c)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use). Likewise, since the domain names each address a webpage that displays a “Website Coming Soon!” notification, Respondent fails to make an active use of any at-issue domain name. Such inactivity can be neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain names.
The domain names were each registered and used in bad faith. As discussed below, Policy ¶ 4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent registered an array of domain names each of which is confusingly similar to Complainant’s renowned HARLEY-DAVIDSON or HARLEY trademarks. Respondent’s pattern of registering confusingly similar domain names suggests bad faith under Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)).
Second, it is apparent that Respondent will likely use the at-issue domain names to promote business activity that competes directly with Complainant’s business. Using the confusingly similar domain names to sell products and services that compete with Complainant’s business demonstrates bad faith under Policy ¶ 4(b)(iv). See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market). However, as Respondent has not as yet used the any of the domain names to compete, and since UDRP panels are not tasked with making determinations based on a presumed future intent to use domain names, the Panel does not find bad faith simply because of some speculative future ill-use. See Griffin Technology, Inc. v. xiangrong shi, FA 1623876 (Nat. Arb. Forum July 10, 2015) (holding, “Complainant’s initial claim is Respondent may well build a competing web site in the future. This Panel will not speculate about what might, or might not, occur in the future. The Panel is only concerned with what has happened.”) Notwithstanding the foregoing, panels have found bad faith under Policy ¶ 4(a)(iii) where a respondent, such as the instant Respondent, holds a domain name but fails to use it actively. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
Finally, it is a compelling indication of bad faith that Respondent registered the trademark loaded confusingly similar <harley-davidsonatlanta.com>, <harley-davidsonfl.com>, <harley-davidsonflorida.com>, <harley-davidsonga.com>, <harley-davidsongeorgia.com>, <harleydavidsonoffl.com>, <harleydavidsonofga.com>, <harleydavidsonofgeorgia.com>, <mmsharley-davidson.com>, <mmsharleydavidson.com>, <mountainmotorsportsharleydavidson.com>, and <mountainmotorsportsharley.com> domain names while knowing that Complainant had trademark rights in the well-known HARLEY-DAVIDSON and HARLEY trademarks. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademarks and from Respondent’s multiple registrations of domain names incorporating those marks. See H-D Michigan, Inc. v. Domain for sale -- Contact Us a/k/a Internet Associates Inc., FA 127721 (NAF Dec. 2, 2002) (“Based on the fame of Complainant’s HARLEY-DAVIDSON MOTOR COMPANY and HARLEY-DAVIDSON family of marks it can be inferred that Respondent had knowledge of Complainant’s rights when it registered the disputed domain names [<harley-davidsonmotorcompany.com>, and <harleydavidsonmotorcompany.net>]). It is thus clear that Respondent intentionally registered the at-issue domains name precisely to improperly exploit their trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademarks further indicates that Respondent registered and used each of the<harley-davidsonatlanta.com>, <harley-davidsonfl.com>, <harley-davidsonflorida.com>, <harley-davidsonga.com>, <harley-davidsongeorgia.com>, <harleydavidsonoffl.com>, <harleydavidsonofga.com>, <harleydavidsonofgeorgia.com>, <mmsharley-davidson.com>, <mmsharleydavidson.com>, <mountainmotorsportsharleydavidson.com>, and <mountainmotorsportsharley.com> domain names in bad faith pursuant to 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 <harley-davidsonatlanta.com>, <harley-davidsonfl.com>, <harley-davidsonflorida.com>, <harley-davidsonga.com>, <harley-davidsongeorgia.com>, <harleydavidsonoffl.com>, <harleydavidsonofga.com>, <harleydavidsonofgeorgia.com>, <mmsharley-davidson.com>, <mmsharleydavidson.com>, <mountainmotorsportsharleydavidson.com>, and <mountainmotorsportsharley.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: August 17, 2015
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