H-D U.S.A., LLC v. Jean Doumens
Claim Number: FA1605001674547
Complainant is H-D U.S.A., LLC (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington D.C., USA. Respondent is Jean Doumens (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hd-bastia.com>, registered with Network Solutions, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 11, 2016; the Forum received payment on May 11, 2016.
On May 12, 2016, Network Solutions, LLC confirmed by e-mail to the Forum that the <hd-bastia.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 May 13, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 2, 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@hd-bastia.com. Also on May 13, 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 June 7, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant, Harley-Davidson, has manufactured, advertised, and sold motorcycles under the HARLEY DAVIDSON mark since 1903. The H-D mark has become synonymous with the HARLEY-DAVIDSON mark based on long-standing and interchangeable use between the marks HARLEY-DAVIDSON, H-D, and HD.
2. Complainant has rights in the HD mark based on registration of the mark with the United States Patent and Trademark Office along with other trademark agencies (“USPTO”) (e.g., Reg. No. 2,315,877, registered February 8, 2000).
3. Respondent’s <hd-bastia.com> domain name is confusingly similar to the HD mark as the domain includes the entire HD mark and merely differs from the mark through the addition of the generic top level domain (“gTLD”) “.com,” a hyphen, and the geographic term “bastia” denoting a town in France.
4. Respondent has no rights or legitimate interests in the disputed domain name. There is no evidence in the record showing that Respondent has been commonly known by the domain name, including WHOIS information.
5. Further, Respondent’s use of the domain name to operate a commercial website advertising or offering goods or services that compete with Complainant, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
6. Respondent has registered and is using the <hd-bastia.com> in bad faith. Respondent is selling goods or services that compete with Complainant’s own goods and services demonstrates bad faith under Policy ¶ 4(b)(iii).
7. Respondent also attempts to confuse and attract Internet users through use of Complainant’s HD mark in a domain name to resolve to a website that offers products and services that directly compete with Complainant.
8. Finally, based on the international fame and explicit reference to Complainant’s products on the resolving website it is clear that Respondent had knowledge of Complainant’s rights in the HD mark at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the HD mark. Respondent’s domain name is confusingly similar to Complainant’s HD mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <hd-bastia.com> domain name, and that Respondent registered and uses the 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 (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, Harley-Davidson has rights in the HD mark from registration of the mark with the USPTO and other trademark agencies such as the European Union Intellectual Property Office (e.g., Reg. No. 2,315,877, registered February 8, 2000). Registration of a mark with the USPTO is sufficient to demonstrate a complainant’s rights in a mark. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (FORUM Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.).
Complainant next claims that Respondent’s domain <hd-bastia.com> is confusingly similar to the HD mark. The domain includes the entire HD mark and adds the gTLD “.com,” a hyphen, and the geographic term “bastia,” referring to a town in France on the island of Corsica. Presence of the gTLD “.com” is not considered a relevant feature when conducting an analysis of confusing similarity. See Abt Elecs., Inc. v. Ricks, FA 904239 (FORUM Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Similarly, hyphens and other punctuation have been found to not distinguish a domain from a mark. 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"). Lastly, confusing similarity has been found in cases where a geographic term is added to another’s mark in a domain. See General Motors LLC v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, FA 1656166 (FORUM Feb. 12, 2016) (finding respondent’s <gm-uzbekistan.com> domain name confusingly similar to complainant’s GM mark as the addition of the geographic term “uzbekistan” is inconsequential to a Policy ¶ 4(a)(i) analysis). The Panel finds that Respondent’s <hd-bastia.com> domain name is confusingly similar to the HD mark for purposes of Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <hd-bastia.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant asserts, based on the WHOIS information and a lack of evidence to the contrary, that Respondent has not been commonly known by the <hd-bastia.com> domain name. The WHOIS information related to the domain identifies Respondent as “Jean Doumens,” which is not domain name. Based on this record, the Panel concludes Respondent is not commonly known by the domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name).
Complainant next asserts that Respondent’s domain is not being used in a manner that can be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and ¶ 4(c)(iii). Respondent’s domain resolves to a commercial website that offers products such as BELL helmets and services such as maintenance and customization of Complainant’s products. Complainant asserts the offering of these products and services directly competes with Complainant who provides similar products and services. Using a confusingly similar domain to offer products and services that compete with a complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Alcon, Inc. v. ARanked, FA 1306493 (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).”). Accordingly, the Panel finds that Respondent’s use of the <hd-bastia.com> domain name does not fall within the parameters of Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s domain competes and disrupts Complainant’s business in bad faith under Policy ¶ 4(b)(iii). Respondent’s domain resolves to a website that sells products which Complainant also offers and offers services similar to those of Complainant. This conduct has been found to constitute bad faith competition and disruption. See Fitness International, LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA1506001623644 (Forum July 9, 2015) (“Respondent uses the at-issue domain name to operate a website that purports to offer health club related services such as fitness experts, fitness models, fitness venues, exercise programs, and personal training, all of which are the exact services offered by Complainant. Doing so causes customer confusion, disrupts Complainant’s business, and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii).”). Respondent’s use of the domain establishes bad faith under Policy ¶ 4(b)(iii).
Complainant next argues that Respondent’s bad faith is evident through using the domain name to confuse and attract Internet users for commercial gain. Complainant claims that Respondent is using the HD mark to create a false association between Complainant and Respondent in the minds of Internet users who access the <hd-bastia.com> domain. Bad faith has been found where a respondent uses another’s mark in a domain that resolves to a website offering services similar to those offered by a Complainant. See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum October 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”). The Panel finds that Respondent has demonstrated bad faith by confusing and attracting Internet users for commercial gain.
Complainant also contends that in light of Respondent using the HARLEY-DAVIDSON mark at its website and the fame and notoriety of Complainant's HD mark, it is inconceivable that Respondent could have registered the <hd-bastia.com> domain name without knowledge of Complainant's rights in the mark. The Panel finds that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the domain name and finds 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).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hd-bastia.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: June 10, 2016
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