H-D U.S.A., LLC v. MURAT SARI / MS INC / TARIK SUCU / NA / NicProxy Customer / Whois Privacy Protection Service
Claim Number: FA1601001657406
Complainant is H-D U.S.A., LLC (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is MURAT SARI / MS INC / TARIK SUCU / NA / NicProxy Customer / Whois Privacy Protection Service (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <harleydavidsonindirim.com>, registered with Name.com, Inc.; <harlley-davidson.com>, <harleydavidson-firsati.com>, and <botharleydavidson.com>, registered with eNom, Inc.; and <bot-harleydavidson.com>, registered with Nics Telekomünikasyon Ticaret Ltd. Sti.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 20, 2016; the Forum received payment on January 20, 2016.
On January 20, 2016, Name.com, Inc. confirmed by e-mail to the Forum that the <harleydavidsonindirim.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, 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 January 21, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <harlley-davidson.com>, <harleydavidson-firsati.com> and <botharleydavidson.com> domain names are registered with eNom, Inc. and that Respondent is the current registrant of the names. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the Policy.
On January 21, 2016, Nics Telekomünikasyon Ticaret Ltd. Sti. confirmed by e-mail to the Forum that the <bot-harleydavidson.com> domain name is registered with Nics Telekomünikasyon Ticaret Ltd. Sti. and that Respondent is the current registrant of the name. Nics Telekomünikasyon Ticaret Ltd. Sti. has verified that Respondent is bound by the Nics Telekomünikasyon Ticaret Ltd. Sti. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the Policy.
On January 25, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 16, 2016 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@harlley-davidson.com, postmaster@harleydavidson-firsati.com, postmaster@botharleydavidson.com, postmaster@harleydavidsonindirim.com, and postmaster@bot-harleydavidson.com. Also on January 25, 2016, 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 February 19, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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.
Panel notes that the Registration Agreement associated with the <bot-harleydavidson.com> domain name is written in Turkish, thereby making the language of the proceedings Turkish. Nevertheless, Complainant petitions Panel for the proceedings to continue in English. Panel must assess whether doing so would be prejudicial to Respondent. As noted, a formal Response was not filed but Respondent wrote to the Forum in English as follows:
Hello,
i am not good at english but i understand its about trade mark rights. if H.D Usa wants to the domain acquire, thats ok. no problem. They can take the domain. its already inactive domain and webpage and no meaning for me. if they wanna, who is the domain register? its no problem. you can tell about my contact information.
Pursuant to UDRP Rule 11(a), Panel is persuaded by that correspondence (and by additional facts which emerge in the Discussion below) that Respondent is conversant in the English language. After considering the circumstances of the present case, the Panel decides that the proceeding should continue in English (see The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) panel there exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language).
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in HARLEY-DAVIDSON and alleges that the disputed domain names are confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a formal Response in this proceeding.
Preliminary Issue: (i) Multiple Respondents
Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Here, Complainant has alleged that the entities which control the domain names are effectively controlled by the same person operating under several aliases.
The evidence before Panel is that the disputed domain names are being used in a nearly identical manner. Although this is a weak indicator of common control, absent a Response, Panel is just willing to allow the proceedings to continue against the named Respondent in this single Complaint.
Preliminary Issue: (ii) Consent to transfer
As indicated above, Respondent wrote to the Forum appearing to consent to the transfer of ownership of at least one domain name, although does not specify which. Ignoring that uncertainty, Panel observes that Complainant has not reacted to that offer and given Complainant’s allegations that Respondent is a serial cyber-squatter Panel concludes that it should continue to apply the Policy.
The factual findings pertinent to the decision in this case are that:
1. Complainant manufactures, advertises, and sells motorcycles and motorcycling clothing and accessories under the HARLEY-DAVIDSON trademark.
2. Complainant owns United States Trademark Reg. No. 1,078,871, registered December 6, 1977, for the word mark HARLEY-DAVIDSON.
3. The disputed domain names were registered in October and November 2015.
4. The domain names resolve to an online location showing goods of the same kind as those sold by the Complainant, offered for sale by reference to Complainant’s trademark.
5. There is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
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(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Since Complainant provides evidence of its United States Patent and Trademark Office trademark registration, the Panel is satisfied that it has trademark rights in HARLEY-DAVIDSON (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”).
Complainant argues that the disputed domain names are confusingly similar to the trademark because they either contain the mark or entail trivial variations of the mark in addition to added matter of a non-distinctive nature either in the form of the gTLD or generic Turkish words. In regard to that last matter, Complainant has provided Turkish-English language translations showing that “firsati” means “event,” “bot” means “boot,” and “indirim” means “discount.”
Panel is satisfied that the disputed domain names are confusingly similar to Complainant’s trademark since none add matter which distinguishes the domain name from the trademark in any significant way so as to avoid confusion (see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar; see also Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) finding <westfieldshopping.com> confusingly similar to the WESTFIELD trademark; see Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”).
Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy with respect to all of the disputed domain names.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000)).
The publicly available WHOIS information lists “WHOISGUARD PROTECTED,” “Whois Agent,” and “NicProxy Customer” as registrants. Accordingly, there is no prima facie evidence that Respondent might be commonly known by any of the disputed domain names. There is no evidence that Respondent has any trademark rights. There is no evidence that Complainant has authorized Respondent to use the trademark and Complainant denies any such authorization.
Complainant contends that Respondent fails to use the disputed domain names to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving websites are used in an attempt to pass off counterfeit goods as those put on the market by Complainant.
The evidence is that the resolving websites are used to sell boots by reference to the expression “Harley Davidson Turkey Kampanyasi 2015.” Complainant has provided a translation of the Turkish word “Kampanyasi” showing it to mean “campaign”.
There is no conclusive evidence that the goods promoted at the resolving websites are counterfeit. Nevertheless, 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). Numerous UPRP panel have held that sale of counterfeit goods by reference to a complainant’s trademark gives no rights or interests in a disputed domain name incorporating the trademark (see eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007) concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name).
In any event, whether or not the goods are genuine does not require scrutiny since, for the purposes of paragraph 4(c) of the Policy, it is enough for Panel to adopt the reasoning in the case of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, and observe that the conditions of use sufficient to establish rights or legitimate interests laid out in that case have not been met here.
Panel finds that the Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in all of the disputed domain names, and that the Respondent in failing to reply has not rebutted such prima facie case.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names and so the Complainant has satisfied the second element of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
Panel finds that Respondent’s actions fall squarely under paragraph 4(b)(iv) above. Panel has already found the disputed domain names to be confusingly similar to Complainant’s trademark. Complainant submits evidence of screenshots of the web pages corresponding with the disputed domain names. Panel notes the sale of goods competitive with Complainant’s goods. Panel accepts as more likely than not to be true Complainant’s allegation that those goods are counterfeit. The website exists for commercial gain. In terms of paragraph 4(b)(iv) of the Policy, Panel finds that it is more likely than not that Respondent is using the domain names to attract, for commercial gain, internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s trademark (see, for example, Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008)).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED in respect of all of the disputed domain names.
Accordingly, it is Ordered that the <harlley-davidson.com>, <harleydavidson-firsati.com>, <botharleydavidson.com>, <harleydavidsonindirim.com> and <bot-harleydavidson.com> domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: February 22, 2016
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