H-D U.S.A., LLC v. Chung Hoa
Claim Number: FA1507001629451
Complainant is H-D U.S.A., LLC (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is Chung Hoa (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <harleydavidsontshirts.net>, <harleydavidsontshirt.net>, and <harleydavidsontshirt.com>, registered with Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA.
The undersigned certifies that he has acted independently and impartially and to the best of his her 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 20, 2015, Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA confirmed by e-mail to the Forum that the <harleydavidsontshirts.net>, <harleydavidsontshirt.net>, and <harleydavidsontshirt.com> domain names are registered with Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA and that Respondent is the current registrant of the names. Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA has verified that Respondent is bound by the Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA 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@harleydavidsontshirts.net, postmaster@harleydavidsontshirt.net, postmaster@harleydavidsontshirt.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 11, 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 has registered the HARLEY-DAVIDSON trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,078,871, registered Dec. 6, 1977).
The mark is used in connection with the sale of motorcycles, motorcycle parts and accessories, and other products including clothing and jewelry, as well as services such as insurance and financing.
The <harleydavidsontshirts.net>, <harleydavidsontshirt.net>, and <harleydavidsontshirt.com> domain names are confusingly similar to the HARLEY-DAVIDSON trademark because the domain names contain the entire mark (besides the removal of the hyphen between words) and differ only by the addition of the generic term “tshirt” (in either singular or plural form) along with the generic top-level domains (“gTLDs”) “.net” and “.com.”
Respondent has no rights or legitimate interests in respect of the domain names. Respondent is not commonly known by the disputed domain names, nor is Respondent a licensee of Complainant. Further, Respondent has failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain names. Rather, at least one of the domain names resolve to a webpage that advertises competing products.
Respondent has engaged in bad faith registration and use. By registering multiple domain names in this proceeding, Respondent has engaged in a pattern of bad faith registrations. Respondent is also disrupting Complainant’s business by offering competing products. Respondent also tries to commercially profit from a likelihood of confusion through its use of the domain names. Respondent’s registration and non-use, i.e. “passive holding,” of the Domain Names constitutes bad faith because (1) the Domain Names are confusingly similar to Complainant’s HARLEY-DAVIDSON mark, (2) there is no conceivable use of the Domain Names by Respondent that would be legitimate, and (3) the most likely use of the Domain Names would be for Respondent’s affiliate website advertising competing products, which would infringe Complainant’s rights. Lastly, Respondent had actual knowledge of Complainant’s trademark rights.
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 at least one of the at-issue domain names to address a website which advertises products that compete with those of Complainant. The other domain names were registered for, and intended to be used for, the same purpose.
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 trademark demonstrates its rights in such mark for the purposes of Policy ¶4(a)(i). Complainant’s rights exist notwithstanding that Respondent may operate outside the jurisdiction of the trademark’s registrar. 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.”); see also, 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).
Each of the at-issue domain names incorporates Complainant’s HARLEY-DAVIDSON trademark less its hyphen, with either the descriptive term “shirt” or “shirts” added and a top level domain name, either “.com” or “.net,” appended to the resulting string. These alterations to Complainant’s HARLEY-DAVIDSON trademark are insufficient to distinguish any of the at-issue domain names from Complainant’s trademark for the purposes of the Policy. Therefore, the Panel finds that the<harleydavidsontshirts.net>, <harleydavidsontshirt.net>, and <harleydavidsontshirt.com> domain names are each confusingly similar to Complainant’s HARLEY-DAVIDSON mark pursuant to Policy ¶4(a)(i). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to the 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)).
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 trademark 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 name lists “Chung Hoa” as the domain names’ registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by any of the <harleydavidsontshirts.net>, <harleydavidsontshirt.net>, or <harleydavidsontshirt.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).
At least one domain name addresses a webpage containing advertisements for clothing products that compete with those offered by Complainant. It is no great leap to assume that the other domain names were registered with a similar intent to trade on Complainant’s trademark. Using the domain names in this manner is 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 H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that using a domain name to promote related advertising was a commercial use that was not bona fide); 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).”).
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 three domain names each of which is confusingly similar to the renown HARLEY-DAVIDSON trademark. 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)).
Next as mentioned above, at least one of the domain names, <harleydavidsontshirts.net>, resolves to a webpage advertising clothing products that compete with those offered by Complainant. There, the competing products are offered for sale. Using the domain name in this manner disrupts Complainant’s business and demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Since this use of the domain name is commercial and designed to benefit Respondent, the Panel further concludes that Respondent registered each of the confusingly similar domain names as part of a scheme to financially capitalize on the goodwill inherent in Complainant’s trademark. Such circumstances demonstrate Respondent’s bad faith registration and use of the domain names under Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Finally, Respondent registered the confusingly similar <harleydavidsontshirts.net>, <harleydavidsontshirt.net>, and <harleydavidsontshirt.com> domain names knowing that Complainant had trademark rights in the HARLEY-DAVIDSON mark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark, from Respondent’s multiple registrations of domain names incorporating that trademark and from Respondent’s offering of products which compete with the products offered by Complainant via one or more of the at-issue domain name. 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>]. Given the forgoing, it is 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 trademark further indicates that Respondent registered and used the <harleydavidsontshirts.net>, <harleydavidsontshirt.net>, and <harleydavidsontshirt.com> domain name 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 <harleydavidsontshirts.net>, <harleydavidsontshirt.net>, and <harleydavidsontshirt.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: August 11, 2015
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