H-D U.S.A., LLC v. Faith Caldeira / Paradise Rent A Car
Claim Number: FA1603001664984
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 Faith Caldeira / Paradise Rent A Car (“Respondent”), Hawaii, United States.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <harleyrentalswaikiki.com>, <waikikiharleyrentals.com>, <harleyrentalshonolulu.com>, and <honoluluharleyrentals.com>, registered with Wild West Domains, 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 March 10, 2016; the Forum received payment on March 10, 2016.
On March 11, 2016, Wild West Domains, LLC confirmed by e-mail to the Forum that the <harleyrentalswaikiki.com>, <waikikiharleyrentals.com>, <harleyrentalshonolulu.com>, and <honoluluharleyrentals.com> domain names are registered with Wild West Domains, LLC and that Respondent is the current registrant of the names. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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 March 11, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 4, 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@harleyrentalswaikiki.com, postmaster@waikikiharleyrentals.com, postmaster@harleyrentalshonolulu.com, postmaster@honoluluharleyrentals.com. Also on March 11, 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 April 8, 2016, 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 offers motorcycles, motorcycle parts, and accessories, clothing, and motorcycle-related services under the HARLEY mark. Complainant has registered the HARLEY mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,352,679, registered August 6, 1985), which demonstrates Complainant’s rights in its mark.
The <harleyrentalswaikiki.com>, <waikikiharleyrentals.com>, <harleyrentalshonolulu.com>, and <honoluluharleyrentals.com> domains are confusingly similar to Complainant’s mark as they wholly incorporate the HARLEY mark and merely add the geographic terms “Waikiki” or “Honolulu,” the generic term “rentals,” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the domains. First, Respondent is not commonly known by the domain names or any variant of Complainant’s mark. Second, Respondent is not licensed or authorized to use Complainant’s mark. 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. Rather, Respondent uses its disputed domain names to offer services that compete directly with Complainant’s business. Additionally, Respondent uses the <waikikiharleyrentals.com> domain in an attempt to pass itself off as Complainant.
Respondent has registered and is using the disputed domain names in bad faith. First, Respondent has demonstrated a pattern of bad faith registration and use by registering four domains in the instant proceeding. Second, Respondent uses the domains to operate websites that compete directly with Complainant’s business, thereby engaging in conduct proscribed by Policy ¶¶ 4(b)(iii) and 4(b)(iv). Third, Respondent uses the <waikikiharleyrentals.com> domain in an attempt to pass itself off as Complainant. Finally, based on the international fame of Complainant’s HARLEY mark, it is inconceivable that Respondent registered the domains without actual knowledge of Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the HARLEY 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 trademark.
Respondent uses the at-issue domain names to advertise motorcycle related services that compete with those offered by Complainant. Respondent used at least one of the domain names to pass itself off as Complainant.
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. 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 trademark demonstrates its rights in such mark 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 trademark combined with the descriptive term “rentals” and either the geographical term “honolulu” or “waikiki” all followed by the top level domain name “.com.” These additions to Complainant’s HARLEY 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 <harleyrentalswaikiki.com>, <waikikiharleyrentals.com>, <harleyrentalshonolulu.com>, and <honoluluharleyrentals.com> domain names are each confusingly similar to Complainant’s HARLEY mark pursuant to Policy ¶4(a)(i). See 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 Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (finding that the generic term “INC” does not change the confusing similarity). Previous panels have also held that the affixation of the gTLD “.com” is irrelevant to a Policy ¶ 4(a)(i) analysis. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant).
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 names lists “Faith Caldeira / Paradise Rent A Car” as the domain names’ registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by any of the <harleyrentalswaikiki.com>, <waikikiharleyrentals.com>, <harleyrentalshonolulu.com>, and <honoluluharleyrentals.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).
Respondent uses the at-issue domain names to offer motorcycle related services that compete with those of Complainant. Additionally, it appears that Respondent used the <waikikiharleyrentals.com> domain name to pass itself off as Complainant. 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 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).”); see also, Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
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 four domain names each of which is confusingly similar to the HARLEY trademark. Respondent’s pattern of registering confusingly similar HARLEY incorporating 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 the at-issue domain names are used to advertise motorcycle related services that compete with those offered by Complainant. 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).”). Moreover, 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 <harleyrentalswaikiki.com>, <waikikiharleyrentals.com>, <harleyrentalshonolulu.com>, and <honoluluharleyrentals.com> domain names knowing that Complainant had trademark rights in the HARLEY mark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark, from Respondent’s multiple registrations of domain names incorporating the HARLEY trademark and from Respondent’s offering of services which compete with those offered by Complainant. 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 <harleyrentalswaikiki.com>, <waikikiharleyrentals.com>, <harleyrentalshonolulu.com>, and <honoluluharleyrentals.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 <harleyrentalswaikiki.com>, <waikikiharleyrentals.com>, <harleyrentalshonolulu.com>, and <honoluluharleyrentals.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco Panelist
Dated: April 17, 2016
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