H-D U.S.A., LLC v. YUUSUKE ASANO / various marketing co,.ltd
Claim Number: FA1603001666192
Complainant is H-D U.S.A., LLC (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is YUUSUKE ASANO / various marketing co,.ltd (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <harley-japan.net>, registered with GMO Internet, Inc. d/b/a Onamae.com.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 17, 2016; the Forum received payment on March 17, 2016.
On March 18, 2016, GMO Internet, Inc. d/b/a Onamae.com confirmed by e-mail to the Forum that the <harley-japan.net> domain name is registered with GMO Internet, Inc. d/b/a Onamae.com and that Respondent is the current registrant of the name. GMO Internet, Inc. d/b/a Onamae.com has verified that Respondent is bound by the GMO Internet, Inc. d/b/a Onamae.com 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 21, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 11, 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@harley-japan.net. Also on March 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 13, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Harley-Davidson, has manufactured, advertised, and sold motorcycles under the HARLEY-DAVIDSON and HARLEY marks since 1903. Complainant has registered the HARLEY mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,352,679, registered Aug. 6, 1985). Respondent’s domain <harley-japan.net> is confusingly similar to the HARLEY mark as the domain includes the entire HARLEY mark and merely adds the generic top-level domain (“gTLD”) “.net,” a hyphen, and the geographic term “japan.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not, and has not been, commonly known by the disputed domain name based on WHOIS information. Further, Respondent’s use of the domain, to offer unauthorized HARLEY-DAVIDSON products in competition with Complainant’s own products, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has registered and is using the disputed domain name in bad faith. Respondent’s use of the domain competes and disrupts Complainant’s business in bad faith. Additionally, Respondent’s use of a confusingly similar domain is intended to confuse and attract Internet users who mistakenly believe that Respondent is affiliated with Complainant and selling Complainant’s goods. Finally, based on the prominence and longstanding use of the HARLEY mark, it is inconceivable that Respondent did not have knowledge of the mark at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is H-D U.S.A., LLC of Milwaukee, WI, USA. Complainant is the owner of the domestic registration for the mark HARLEY, which it has continuously used since at least as early as 1982, in connection with motorcycle production and sales as well as sales of related goods and services.
Respondent is Yuusuke Asano/Various Marketing Co, Ltd. of Japan. Respondent’s registrar’s address is listed as Tokyo, Japan. The Panel notes that the <harley-japan.net> was created on or about October 21, 2011.
Panel Note: Supported Language Request
The Panel notes that Complainant request that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Japanese language Registration Agreement. Complainant argues that Respondent has demonstrated knowledge of the English language through use of the language on the website that resolves from the disputed domain names.
It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which prior panels have found compelling include: WHOIS information which establishes Respondent in a country which would evince a familiarity with the English language, filing of a trademark registration with an entity which evinces an understanding of the English language, and any evidence evincing Respondent’s understanding of English language included in the Registration Agreement. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel 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).
The Panel here finds that pursuant to UDRP Rule 11(a), persuasive evidence has been adduced by the Complainant to suggest the likely possibility that 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.
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.”).
Complainant claims that its rights in the HARLEY mark stem from registration of the mark with the USPTO (Reg. No. 1,352,679, registered Aug. 6, 1985). Prior panels have held that registration of a mark with the USPTO is sufficient to establish rights to a mark. See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that, where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i)”). The Panel here finds Complainant’s registration evidence sufficient to indicate that Complainant has rights in the HARLEY mark according to Policy ¶ 4(a)(i).
Complainant argues that Respondent’s domain <harley-japan.net> is confusingly similar to the HARLEY mark as the domain includes the entire HARLEY mark and merely adds the gTLD “.net,” a hyphen, and the geographic term “japan.” Previous panels have held that adding a gTLD, hyphen, and geographic term is insufficient to differentiate a domain from a mark to which the additions are attached. See Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that the respondent’s <hess-uk.com> domain name was confusingly similar to the complainant’s HESS mark, as the mere addition of “uk” and a hyphen failed to sufficiently differentiate the disputed domain name from the registered mark). The Panel here finds that Respondent’s <harley-japan.net> domain is confusingly similar to the HARLEY mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Complainant has met this burden.
Complainant contends that Respondent has not been commonly known by the disputed domain name. WHOIS information for the disputed domain identifies Respondent as “YUUSUKE ASANO,” which does not resemble the disputed domain name. Past panels have held a respondent to not be commonly known by a disputed domain name based on WHOIS information and a lack of evidence to the contrary. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). The Panel finds the record lacking in any evidence that might establish Respondent as commonly known by the disputed domain. The Panel also notes that Respondent has failed to file any response in this proceeding. As such the Panel finds that Respondent is not commonly known by <harley-japan.net> pursuant to Policy ¶ 4(c)(ii).
Complainant argues that Respondent’s use of the disputed domain is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s domain name resolves to a website offering unauthorized apparel using the HARLEY-DAVIDSON marks. Prior panels have held that a respondent’s use of a confusingly similar domain to sell counterfeit or unauthorized goods of a complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. 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). The Panel here finds that Respondent’s use of the domain does not fall within the parameters of Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As the Respondent has not provided a response to this action, the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant argues that Respondent’s bad faith use of the domain competes with and disrupts Complainant’s business. Respondent’s domain resolves to a website that sells unauthorized apparel decorated with the HARLEY mark. Previous panels have found respondents registered and used a domain in bad faith based on their offering of counterfeit or unauthorized goods. See Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Nat. Arb. Forum Mar. 5, 2008) (concluding that the complainant’s business is disrupted by the respondent’s registration and use of the disputed domain name for the purpose of selling counterfeit products). The Panel here finds that Respondent’s actions demonstrate bad faith registration and use under Policy ¶ 4(b)(iii).
Complainant next asserts that Respondent’s bad faith is evident through use of a confusingly similar domain to confuse and attract Internet users who mistakenly believe that Respondent is affiliated with Complainant, as well as the offering of Complainant’s goods for sale. Past panels have held that a respondent registered and used a domain in bad faith based on using a confusingly similar domain to sell illegitimate goods. See H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion). The Panel here finds that Respondent’s use of a domain name including the HARLEY mark, and unauthorized sale of goods with the HARLEY mark, indicates a bad faith attempt to confuse and attract Internet users for commercial profit pursuant to Policy ¶ 4(b)(iv).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <harley-japan.net> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: April 27, 2016
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