H-D U.S.A., LLC v. Auliya ulfiyanto
Claim Number: FA1606001682051
Complainant is H-D U.S.A., LLC (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is Auliya ulfiyanto (“Respondent”), Indonesia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is/are <harleypictures.top>, registered with NameCheap, Inc.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 30, 2016; the Forum received payment on June 30, 2016.
On July 1, 2016, NameCheap, Inc. confirmed by e-mail to the Forum that the <harleypictures.top> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 July 6, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 26, 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@harleypictures.top. Also on July 6, 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 August 3, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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, H-D Inc., through various subordinate companies, has sold, manufactured, and advertised motorcycles since 1903. In connection with this business, Complainant has registered and has rights in the HARLEY mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,352,679, registered Aug. 6, 1985). Respondent’s domain <harleypictures.top> is confusingly similar to the HARLEY mark as the domain includes the entire mark.
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 as shown through WHOIS information. Respondent’s use of the domain, to host pictures of Complainant’s products and collect click-through fees from ads located on the website, 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 in bad faith. Respondent has competed and disrupted Complainant’s business through operating a website whose activities are in opposition to Complainant. Respondent has attempted to confuse and attract internet users for commercial gain through using Complainant’s marks on a website with click-through advertisements. Lastly, Respondent registered the disputed domain with knowledge of Complainant’s rights in the HARLEY marks given the fame of the marks, the explicit references to Complainant’s products, and the copying of Complainant’s content.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that the disputed domain name was created on March 3, 2016.
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, H-D Inc., through various subordinate companies, claims to have sold, manufactured, and advertised motorcycles since 1903. Complainant claims that its rights in the HARLEY mark and family of marks stem from registration with the USPTO (e.g., Reg. No. 1,352,679, registered Aug. 6, 1985). Panels have consistently found, and this Panel also finds, that registration of a mark with the USPTO adequately establishes rights in the registered mark. See Paisley Park Enters. v. Lawson, FA 384834 (Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Complainant argues that Respondent’s domain, <harleypictures.top>, is confusingly similar to the HARLEY mark in which Complainant asserts rights. Respondent’s domain includes the entire HARLEY mark and differs from the mark through the addition of the generic term “pictures.” The addition of a generic term or terms has not been found to distinguish a domain from the mark to which the terms are attached. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). Accordingly, this Panel concludes that Respondent’s <harleypictures.top> domain is confusingly similar to the HARLEY mark for purposes of Policy ¶ 4(a)(i).
Complainant claims that Respondent has not been commonly known by the disputed domain name. WHOIS information associated with the <harleypictures.top> domain identifies Respondent as, “Auliya ulfiyanto,” which does not appear to resemble the disputed domain. Panels have found a respondent to not be commonly known by a disputed domain name based on WHOIS information and a lack of information in the record to the contrary. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA 1613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). This Panel similarly concludes that Respondent is not commonly known by the disputed domain.
Complainant next claims that Respondent’s use of the domain is neither a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent appears to use the disputed domain to host various pictures of Complainant’s motorcycles, including images apparently sourced from Complainant’s website. Complainant argues that Respondent hosts these images in an attempt to drive users to the site from which advertising revenue will be derived. Although from Complainant’s exhibits there does not appear to be any clear advertisements, the presence of advertisements may be implied from Respondent’s privacy policy which discusses, “…advertising partners,” who, “…may use cookies and web beacons on our site.” Panels have held that using another’s marks and products to derive advertising revenue is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites 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) because the registrant presumably receives compensation for each misdirected Internet user). The Panel therefore finds that Respondent is not operating the disputed domain within the parameters of Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent has competed with and disrupted Complainant’s business through operating a website whose activities are in opposition to Complainant. As stated previously, Respondent operates a website, which states that advertisements are present, to hosts images of Complainant’s products. Panels have broadly interpreted the phrase, “compete and disrupt,” and have found bad faith under Policy ¶ 4(b)(iii) where a respondent acted illegitimately in opposition to a complainant. See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”). The Panel thus finds evidence that Respondent is competing and disrupting Complainant’s business under Policy ¶ 4(b)(iii).
Complainant next argues that Respondent has attempted to confuse and attract internet users for commercial gain through using Complainant’s marks on a website with click-through advertisements. Although screenshots of the website resolving from the disputed domain do not seem to display advertisements, Respondent’s privacy policy states that it works with advertising partners to display advertisements. Panels have held that using a confusingly similar domain to operate advertisements demonstrates bad faith under Policy ¶ 4(b)(iv). See MySpace, Inc. v. Myspace Bot, FA 672161 (Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme). The Panel finds that Respondent is commercially exploiting the similarity between the HARLEY mark and the confusion that results, and that Respondent has therefore demonstrated bad faith under Policy ¶ 4(b)(iv).
Lastly, the Panel finds that Respondent registered the disputed domain with knowledge of Complainant’s rights in the HARLEY marks given the fame of the marks, the explicit references to Complainant’s products, and the copying of Complainant’s content.
Complainant has therefore also 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 <harleypictures.top> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: August 17, 2016
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