H-D U.S.A., LLC v. Whois Agent / Privacy
Claim Number: FA1603001666256
Complainant is H-D U.S.A., LLC (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington, D.C., USA. Respondent is Whois Agent / Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <harley-davidson-actions.com>, registered with Tucows Domains Inc.
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.
John J. Upchurch 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, Tucows Domains Inc. confirmed by e-mail to the Forum that the <harley-davidson-actions.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 March 18, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 7, 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-davidson-actions.com. Also on March 18, 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 Forum appointed John J. Upchurch 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’s Contentions
1. Complainant uses the HARLEY-DAVIDSON mark in connection with its business providing motorcycle products and services. Complainant has registered the HARLEY-DAVIDSON mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,078,871, registered December 6, 1977), which demonstrates rights in the mark. See Compl., at Attached Ex. 8. Respondent’s <harley-davidson-actions.com> domain name is confusingly similar to the HARLEY-DAVIDSON mark as it incorporates the mark in its entirety and only omits the spaces and adds a hyphen between the words “Davidson” and “actions,” the generic word “actions,” and the generic top-level domain (“gTLD") “.com.”
2. Respondent has no rights or legitimate interests in the <harley-davidson-actions.com> domain name. Respondent is not commonly known by the disputed domain name. Further, Respondent is neither making a bona fide offering of goods or services nor a legitimate noncommercial or fair use through the <harley-davidson-actions.com> domain name. Rather, the domain name resolves to a website where Respondent is attempting to pass itself off as Complainant in order to offer links purportedly to products in direct competition with Complainant’s products, but the links offered actually lead to a variety of websites, including websites in direct competition with Complainant.
3. Respondent’s registration and use of the <harley-davidson-actions.com> domain name serves as a disruption of Complainant’s legitimate business purposes pursuant to Policy ¶ 4(b)(iii) because of the inclusion of competing hyperlinks. Respondent has attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. Further, Respondent uses the domain in an attempt to pass itself off as Complainant. Finally, in light of the fame and notoriety of Complainant's HARLEY-DAVIDSON mark, it is inconceivable that Respondent could have registered the <harley-davidson-actions.com> domain name without actual or constructive knowledge of Complainant's rights in the mark.
B. Respondent’s Contentions
1. Respondent did not submit a response.
1. Respondent’s <harley-davidson-actions.com> domain name is confusingly similar to Complainant’s HARLEY-DAVIDSON mark.
2. Respondent does not have any rights or legitimate interests in the <harley-davidson-actions.com> domain name.
3. Respondent registered or used the <harley-davidson-actions.com> domain name 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(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 uses the HARLEY-DAVIDSON mark in connection with its business providing motorcycle products and services. Complainant claims it has registered the HARLEY-DAVIDSON mark with the USPTO (e.g., Reg. No. 1,078,871, registered December 6, 1977), which it contends demonstrates rights in the mark. See Compl., at Attached Ex. 8. Past Panels have found a valid USPTO registration to establish rights in a trademark, even where Respondent operates in a different country. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”). Therefore, the Panel finds that Complainant has demonstrated rights in the HARLEY DAVIDSON mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <harley-davidson-actions.com> domain name is confusingly similar to the HARLEY-DAVIDSON mark as it incorporates the mark in its entirety and only omits the spaces and adds a hyphen between the words “Davidson” and “actions,” the generic word “actions,” and the gTLD “.com.” Prior Panels have found such alterations to marks to be insufficient in overcoming a finding of confusing similarity under Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); 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.”). The Panel therefore agrees that Respondent’s <harley-davidson-actions.com> domain name is confusingly similar to the HARLEY-DAVIDSON mark under Policy ¶ 4(a)(i).
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), and 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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has no rights or legitimate interests in the <harley-davidson-actions.com> domain name. First, Complainant asserts that Respondent is not commonly known by the disputed domain name. The Panel sees that the WHOIS information regarding the <harley-davidson-actions.com> domain name lists “Whois Agent” as registrant. Complainant also asserts that it has not given Respondent permission to use its HARLEY-DAVIDSON mark. The Respondent has failed to submit a response in this proceeding. Therefore, in light of the available evidence, the Panel agrees that there is no basis to find Respondent commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Further, Complainant argues that Respondent is neither making a bona fide offering of goods or services nor a legitimate noncommercial or fair use through the <harley-davidson-actions.com> domain name. Rather, Complainant contends that the domain name resolves to a website where Respondent is attempting to pass itself off as Complainant in order to offer links purportedly to products in direct competition with Complainant’s products, but the links offered actually lead to a variety of websites, including websites in direct competition with Complainant. Complainant claims that Respondent is advertising “Harley Davidson Custom Made Badges” in direct competition with Complainant’s medallions. See Compl., at Attached Ex. 6 and 9. Complainant claims, however, that Respondent is not actually offering these badges for sale, but instead is directing users to third-party commercial websites through pay-per-click links. One of these websites, Master Cast Australia, does offer custom car badges, whereas others of the third-party websites, such as Australian Made, are not competing businesses. See Compl., at Attached Ex. 10. Complainant further contends that Respondent’s site uses the same black and orange color scheme utilized by Complainant and that Respondent’s site also has the same background as Complainant’s site. See Id. Panels have found a respondent’s use of a complainant’s mark either to operate a pay-per-click website containing links to competitors’ goods or to pass itself off as a complainant not to constitute either a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)). Therefore, the Panel agrees that Respondent’s <harley-davidson-actions.com> domain name constitutes neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Complainant contends that Respondent’s registration and use of the <harley-davidson-actions.com> domain name serves as a disruption of Complainant’s legitimate business purposes pursuant to Policy ¶ 4(b)(iii) because of the inclusion of competing hyperlinks. See Compl., at Attached Ex. 9 and 10. Panels have found that where a respondent has purported to divert Internet users to competitors via hyperlinks related to a complainant’s legitimate business, such use constitutes bad faith disruption pursuant to Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”). Therefore, the Panel agrees that Respondent’s registration and use of the <harley-davidson-actions.com> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iii).
Further, Complainant argues that Respondent has attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. Complainant contends that Respondent registered the domain name to create a likelihood of confusion with Complainant’s mark in order to profit from users looking for Complainant’s site. Complainant argues that Respondent is attempting to pass its website off as belonging to Complainant in order to increase a likelihood of confusion by instituting a similar color scheme and background, as well as by using Complainant’s logo. See Compl., at Attached Ex. 6 and 9. Complainant further contends that Respondent’s inclusion of pay-per-click links is evidence of bad faith under Policy ¶ 4(b)(iv). See Compl., at Attached Ex. 9 and 10. The Panel agrees with Complainant and hold that Internet user confusion that results in the redirection to Respondent’s site with links to goods competing with those offered by Complainant constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”).
Complainant alleges that Respondent is using the disputed domain in an attempt to pass itself off as Complainant through the use of Complainant’s explicit references to Complainant’s HARLEY-DAVIDSON mark on Respondent’s resolving website. Previous panels have held that a Respondent demonstrates bad faith registration and use pursuant to Policy ¶ 4(a)(iii) where it uses a domain to impersonate a complainant. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”). For this reason, the Panel finds that Respondent engaged in bad faith registration and use per Policy ¶ 4(a)(iii).
Complainant also contends that in light of the fame and notoriety of Complainant's HARLEY-DAVIDSON mark, it is inconceivable that Respondent could have registered the <harley-davidson-actions.com> domain name without actual or constructive knowledge of Complainant's rights in the mark. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and find that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION 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 <harley-davidson-actions.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
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