H-D U.S.A., LLC v. DomainAdministrator / harley davidson / D O M A I N I N D I S P U T ED O M A I N I N D I S P U T E / zhangzongze / zhangzong / salin
Claim Number: FA1511001646429
Complainant is H-D U.S.A., LLC (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is DomainAdministrator / harley davidson / D O M A I N I N D I S P U T ED O M A I N I N D I S P U T E / zhangzongze / zhangzong / salin (“Respondent”), Wisconsin, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <harley-davidsonus.com>, <harleydavidsonjacken.com>, <harleydavidsonleder.com>, <harleydavidsonvestes.com>, <harleygiacche.com>, <harleyleatherclothing.com>, <harleyleatherdealers.com>, <harleyparka.com>, <h-djackets.com>, <hdcoats.com>, <hdfurau.com>, <hdfurfr.com>, <hdfurclothing.com>, <hdjackor.com>, <hdleatherclothing.com>, <hdvestes.com>, <hdparka.com>, <hdcuir.com>, and <hdfurclothes.com>, registered with eName Technology Co., Ltd.
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 Forum electronically on November 11, 2015; the Forum received payment on November 11, 2015.
On November 12, 2015, eName Technology Co., Ltd. confirmed by e-mail to the Forum that the <harley-davidsonus.com>, <harleydavidsonjacken.com>, <harleydavidsonleder.com>, <harleydavidsonvestes.com>, <harleygiacche.com>, <harleyleatherclothing.com>, <harleyleatherdealers.com>, <harleyparka.com>, <h-djackets.com>, <hdcoats.com>, <hdfurau.com>, <hdfurfr.com>, <hdfurclothing.com>, <hdjackor.com>, <hdleatherclothing.com>, <hdvestes.com>, <hdparka.com>, <hdcuir.com>, <hdfurclothes.com> domain names are registered with eName Technology Co., Ltd. and that Respondent is the current registrant of the names. eName Technology Co., Ltd. has verified that Respondent is bound by the eName Technology Co., Ltd. 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 November 17, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 7, 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-davidsonus.com, postmaster@harleydavidsonjacken.com, postmaster@harleydavidsonleder.com, postmaster@harleydavidsonvestes.com, postmaster@harleygiacche.com, postmaster@harleyleatherclothing.com, postmaster@harleyleatherdealers.com, postmaster@harleyparka.com, postmaster@h-djackets.com, postmaster@hdcoats.com, postmaster@hdfurau.com, postmaster@hdfurfr.com, postmaster@hdfurclothing.com, postmaster@hdjackor.com, postmaster@hdleatherclothing.com, postmaster@hdvestes.com, postmaster@hdparka.com, postmaster@hdcuir.com, and postmaster@hdfurclothes.com. Also on November 17, 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 December 16, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been shown by Complainant to suggest Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
1. Complainant has registered with the United States Patent and Trademark Office (“USPTO”) the HD mark (Registry No. 2,315,877, registered Feb. 8, 2000), the H-D mark (Registry No. 1,239,313, registered May 24, 1983), the HARLEY mark (Registry No. 1,352,679, registered Aug. 1985), and the HARLEY-DAVIDSON mark (Registry No. 1,078,871, registered Dec. 6, 1977), which demonstrate rights in the marks.
2. Respondent’s domain names are confusingly similar to Complainant’s marks as they each fully incorporate one of the marks and merely add a generic term, a geographic term (or both), as well as the generic top-level domain (“gTLD”) “.com.” Hyphenation is also omitted from the HARLEY-DAVIDSON mark in the <harleydavidsonjacken.com>, <harleydavidsonleder.com> and <harleydavidsonvestes.com> domain names.
3. Respondent has no rights or legitimate interests in each of the domain names. Respondent has not been commonly known by any of the domain names per Policy ¶ 4(c)(ii).
4. Further, Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use of the domain names. Instead, Respondent has engaged in “passing-off” behavior to market and sell competing and counterfeit goods of Complainant.
5. Respondent has registered and used the domain names in bad faith through its registration of 19 domain names incorporating Complainant’s marks and as well as being the respondent in a prior adverse UDRP decision. Next, Respondent has sought to disrupt the business of Complainant by passing itself off as Complainant to confuse Internet users, thus amounting to bad faith under both Policy ¶¶ 4(b)(iii) and (iv). Last, Respondent registered and uses the domain names with actual knowledge of Complainant’s marks and Complainant’s rights in the marks.
B. Respondent
1. Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the HD, H-D, HARLEY and HARLEY-DAVIDSON 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 <harley-davidsonus.com>, <harleydavidsonjacken.com>, <harleydavidsonleder.com>, <harleydavidsonvestes.com>, <harleygiacche.com>, <harleyleatherclothing.com>, <harleyleatherdealers.com>, <harleyparka.com>, <h-djackets.com>, <hdcoats.com>, <hdfurau.com>, <hdfurfr.com>, <hdfurclothing.com>, <hdjackor.com>, <hdleatherclothing.com>, <hdvestes.com>, <hdparka.com>, <hdcuir.com> and <hdfurclothes.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 has registered the USPTO the HD, H-D, HARLEY and HARLEY-DAVIDSON marks with the USPTO. USPTO registration confers rights under Policy ¶ 4(a)(i) in the corresponding marks. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
Complainant argues that Respondent’s domain names, registered in 2014 and 2015, are confusingly similar to the HD, H-D, HARLEY and HARLEY-DAVIDSON marks as they each fully incorporate one of the marks and merely add a generic term, a geographic term (or both), as well as the gTLD “.com.” Hyphenation is also omitted from the HARLEY-DAVIDSON mark in the <harleydavidsonjacken.com>, <harleydavidsonleder.com> and <harleydavidsonvestes.com> domain names. Such changes are unpersuasive in distinguishing a domain from a mark in which a complainant has rights. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”); see also Skype Ltd. & Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”); 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); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Therefore, the Panel agrees that Respondent’s domain names fail to incorporate differences which would overcome a finding of confusing similarity 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 respect of the disputed domain names. The record shows that Respondent has not been commonly known by any of the domain names within the meaning of Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Further, Complainant urges that Respondent has not shown any bona fide offering of goods or services or any legitimate noncommercial or fair use of the domain names. Instead, Complainant established that Respondent has engaged in “passing-off” behavior to market and sell competing and counterfeit goods of Complainant. Such activity demonstrates a clear lack of rights and legitimate interests. 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). Therefore, the Panel agrees that Respondent has shown neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent has registered and uses the domain names in bad faith. Because Respondent has registered 19 domain names in the instant proceeding and has been involved in a prior adverse UDRP decision, the Panel concludes bad faith is evident pursuant to Policy ¶ 4(b)(ii). See, e.g., H-D v. zhangzongze, FA 1587625 (Nat. Arb. Forum Dec. 10, 2014); see also Yahoo! Inc. v. Deiana, FA 339579 (Nat. Arb. Forum Nov. 22, 2004) (“It is found and determined that Respondent is in violation of Policy ¶ 4(b)(ii) because Respondent registered the disputed domain names to prevent Complainant from reflecting its YAHOO! mark in the corresponding domain names. The registration of the [<ayhooo.com>, <ayhooo.net >, <ayhooo.org>, <ayhoooindia.com>, <ayhoookids.com>, <ayhooorealty.com>, <ayhooorealty.net>, <ayhoooshopping.com>, <ayhooo-uk.com>, and <searchayhooo.com>] domain names herein constitutes a pattern of registering trademark-related domain names in bad faith.”); see also Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005) (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another UDRP proceeding against the respondent to find that “this is part of a pattern of such registrations”).
Complainant further alleges that Respondent must have had actual notice of Complainant's rights in the HD, H-D, HARLEY and HARLEY-DAVIDSON marks prior to registration of the domain names because of Complainant's widespread use of the marks and its trademark registrations with the USPTO. Thus, the Panel concludes that Respondent had actual notice of Complainant's marks and thus registered the domain names in bad faith under Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant's mark when it registered the domain name, panels can find bad faith); see also 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").
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 <harley-davidsonus.com>, <harleydavidsonjacken.com>, <harleydavidsonleder.com>, <harleydavidsonvestes.com>, <harleygiacche.com>, <harleyleatherclothing.com>, <harleyleatherdealers.com>, <harleyparka.com>, <h-djackets.com>, <hdcoats.com>, <hdfurau.com>, <hdfurfr.com>, <hdfurclothing.com>, <hdjackor.com>, <hdleatherclothing.com>, <hdvestes.com>, <hdparka.com>, <hdcuir.com>, and <hdfurclothes.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: December 28, 2016
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