H-D U.S.A., LLC v. David Bowler / 01 creative solutions
Claim Number: FA1601001657408
Complainant is H-D U.S.A., LLC (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia. Respondent is David Bowler / 01 creative solutions (“Respondent”), Cambodia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <harleycambodia.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sebastian M W Hughes as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 20, 2016; the Forum received payment on January 20, 2016.
On January 21, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <harleycambodia.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 January 21, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 10, 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@harleycambodia.com. Also on January 21, 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.
A timely Response was received and determined to be complete on February 9, 2016.
Complainant submitted a Reply on February 15, 2016.
On February 15, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sebastian M W Hughes 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is the owner of numerous registrations worldwide for its well-known trademark HARLEY (the “Trademark”), the earliest dating from 1981.
Complainant has used the Trademark for many years in relation to its motorcycles, and also in relation to motorcycle rental, tour and travel services.
Complainant also actively licenses the use of the Trademark to licensed dealers, including licensing the use of domain names such as <harleysaigon.vn>, <harleykualalumpur.com> and <harleydavidsonbangkok.com>.
The domain name is confusingly similar to the Trademark.
Respondent has no rights or legitimate interests in the domain name, which has been used, without the authorization or approval of Complainant, in respect of motorcycle-related rental, travel, and tour services in Cambodia (the “Website”). The Website also features, prominently, Complainant’s well-known HARLEY- DAVIDSON MOTORCYCLES “Bar-and-Shield” logo mark (the “Logo Mark”).
Respondent has registered and used the domain name in bad faith, by intentionally attracting, for commercial gain, internet users to the Website by creating a likelihood of confusion with Complainant and its Trade Mark as to the source, sponsorship, affiliation, and/or endorsement of Respondent’s Website and the services advertised thereon.
B. Respondent
Respondent submitted as follows:
FA1601001657408
Dear Sir Madam,
With regards to my domain name <harleycambodia.com>
I have had this domain name since 2007.
I have lived permanently in Cambodia since 2000.
My name is Murray Heath but my friends generally use my nickname which is Harley Heath.
Yours Sincerely,
Murray Heath.
C. Additional Submissions
Complainant submitted a Reply on February 15, 2016.
Complainant has established all the elements entitling it to transfer of the domain name.
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.
The Panel finds that Complainant has rights in the Trademarks acquired through use and registration.
The domain name comprises the Trademark in its entirety, together with the non-distinctive geographical indicator “Cambodia”, which is descriptive of the country in which the Respondent is based, and does not serve to distinguish the domain name from the Trademark in any significant way.
The Panel finds that the disputed domain name is confusingly similar to the Trademark.
There is no evidence that Complainant has authorised, licensed, or permitted Respondent to register or use the domain name or to use the Trademark. Complainant has prior rights in the Trademark which precede Respondent’s registration of the domain name by decades. The Panel finds on the record that there is therefore a prima facie case that Respondent has no rights or legitimate interests in the domain name, and the burden is thus on Respondent to produce evidence to rebut this presumption.
Respondent is not an authorised distributor or reseller of Complainant’s motorcycle products, nor is Respondent authorised to provide motorcycle rental, tour and travel services under the Trademark. Even though it appears Respondent is offering such services using motorcycles manufactured by Complainant, there is apparently no disclaimer on the Website to alert consumers to the fact that Respondent’s business has not been authorised, approved or licensed by Complainant. Furthermore, Respondent’s prominent use of the Logo Mark on the Website – which strongly suggests endorsement or approval of the Website and of Respondent’s business by Complainant - has not been authorised by Complainant.
The Respondent (whose name, according to the WhoIS search for the domain name is “David Bowler”) claims that his name is Murray Heath and his nickname is Harley Heath. Whilst this may be the case, the mere fact of his nickname does not, of itself, without more, amount to rights or legitimate interests in the domain name for the purpose of the Policy. Respondent needs to provide cogent evidence to demonstrate that he has become commonly known by the domain name itself - <harleycambodia.com>. There is no evidence before the Panel that Respondent is commonly known by the name “Harley Cambodia”.
There has been no evidence adduced to show that Respondent is making a legitimate non-commercial or fair use of the domain name.
The Panel therefore finds that Respondent has failed to show, for the purposes of the Policy, that he has acquired any legitimate trademark rights in respect of the domain name or that the domain name has been used in connection with a bona fide offering of goods or services.
In light of the evidence of the Respondent’s use of the Website in the manner described above, the Panel finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <harleycambodia.com> domain name be TRANSFERRED from Respondent to Complainant.
Sebastian M W Hughes, Panelist
Dated: February 24, 2016
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