H-D U.S.A., LLC v. Ralf Schuster
Claim Number: FA1701001711525
Complainant is H-D U.S.A., LLC (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is Ralf Schuster (“Respondent”), Spain.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <harley-tour-canarias.com>, <harley-tour-fuerteventura.com>, and <harley-tour-teneriffa.com>, registered with Key-Systems GmbH.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 9, 2017; the Forum received payment on January 9, 2017.
On January 11, 2017, Key-Systems GmbH confirmed by e-mail to the Forum that the <harley-tour-canarias.com>, <harley-tour-fuerteventura.com>, and <harley-tour-teneriffa.com> domain names are registered with Key-Systems GmbH and that Respondent is the current registrant of the names. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 January 12, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 1, 2017 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-tour-canarias.com, postmaster@harley-tour-fuerteventura.com, postmaster@harley-tour-teneriffa.com. Also on January 12, 2017, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent in both English and German 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 February 10, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
preliminary issue: Supported Language Request
Complainant requests, pursuant to UDRP Rule 11(a), that this proceeding proceed in the English language. Complainant makes this request in light of the fact that the pertinent Registration Agreement is in the German language. It is customary for a panel to take into account UDRP Rules 10(b) and (c) in determining the appropriate language of the proceeding, with the objective of ensuring fairness and justice to all parties. In deciding Complainant’s request, we may look to, among other factors, evidence of Respondent familiarity with the English language. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (a panel there exercising discretion in determining that the language of a proceeding should be English, notwithstanding the language of the relevant Registration Agreement, in light of evidence that a respondent had command of the English language).
In this instance, Respondent does not oppose Complainant’s request that the language of this proceeding be English, and there is nothing in the record to suggest that Respondent is unfamiliar with English or that Respondent will be unfairly disadvantaged by the granting of Complainant’s request. Accordingly, it is our conclusion that this proceeding should be conducted in English.
A. Complainant
Complainant makes and sells motorcycles as well as related products and services worldwide, and Complainant uses the HARLEY trademark in the operation and marketing of its business.
Complainant holds a registration for the HARLEY trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 1,352,679, registered August 6, 1985.
Respondent registered the domain names <harley-tour-canarias.com> and <harley-tour-teneriffa.com> on March 16, 2013, and the domain name <harley-tour-fuerteventura.com> on November 17, 2008.
The domain names are confusingly similar to Complainant’s HARLEY mark.
Respondent has not been commonly known by any of the domain names.
Complainant has not licensed or otherwise authorized Respondent to use the HARLEY mark.
Respondent is not affiliated with Complainant in any way.
Respondent had not made a bona fide offering of goods or services by means of, or a legitimate non-commercial or fair use of, any of the domain names.
The domain names resolve to websites displaying the HARLEY mark and offering goods and services competing with the business of Complainant.
Respondent uses the domain names to attract internet users for Respondent’s financial gain by creating confusion as to the possibility of Complainant’s association with the domain names.
Respondent does not have any rights to or legitimate interests in any of the domain names.
Respondent’s uses the domain names and Complainant’s HARLEY mark, as well as Complainant’s orange and black color scheme, on its resolving website, in an effort to pass itself off as Complainant.
Respondent knew of Complainant and its rights to the HARLEY marks when it registered the domain names.
Respondent registered and is using the domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of any of the domain names; and
(3) the same domain names were registered and are being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out 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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Complainant has rights in the HARLEY trademark by reason of its registration of the mark with a national trademark authority, the USPTO. See Astute, Inc. v. Raviprasath C / Astute Solution Pvt Ltd, FA 1546283 (FORUM Apr. 9, 2014) (finding that registration with a major trademark agency was evidence enough of Policy ¶ 4(a)(i) rights in the mark of a UDRP complainant).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Spain). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (FORUM August 24, 2010):
[T]he 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.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <harley-tour-canarias.com>, <harley-tour-fuerteventura.com> and <harley-tour-teneriffa.com> domain names are confusingly similar to Complainant’s HARLEY trademark. The domain names incorporate the mark in its entirety, with the addition of extraneous hyphens, the generic term “tour,” geographic terms (“Canarias,” “Fuerteventura” or “Teneriffa”), and the generic Top Level Domain (“gTLD”) “.com”. These alterations of the mark, made in forming the domain names, do not save them from the realm of confusing similarity under the standards of the Policy. See AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO November 29, 2000):
[C]ommon geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights.
See also Am. Express Co. v. MustNeed.com, FA 257901 (FORUM June 7, 2004), finding that the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)).
Further, see Chernow Communications, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000):
[T]he use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark.
Finally, see Reese v. Morgan, FA 917029 (Forum April 5, 2007) (finding that the addition to the mark of another of the generic top-level domain “.com” in creating a domain name was insufficient to differentiate that domain name from the mark).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to or legitimate interests in a disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (FORUM Aug. 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (FORUM September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain names. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain names which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny, that Respondent has not been commonly known by any of the domain names <harley-tour-canarias.com>, <harley-tour-fuerteventura.com> or <harley-tour-teneriffa.com>, that Respondent is not affiliated with Complainant, and that Complainant has not licensed or otherwise authorized Respondent to use the HARLEY mark in any way. Moreover, the pertinent WHOIS information for the domain names identifies the registrant for each of them only as “Ralf Schuster,” which does not resemble any of them. On this record, we conclude that Respondent has not been commonly known by any of the domain names so as to have acquired rights to or legitimate interests in any of them within the purview of Policy ¶ 4(c)(ii). See, for example, Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006), concluding under Policy ¶ 4(c)(ii), that a UDRP respondent was not commonly known by a challenged domain name where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by that domain name.
We next observe that Complainant alleges, without objection from Respondent, that each of the domain names <harley-tour-canarias.com>, <harley-tour-fuerteventura.com> and <harley-tour-teneriffa.com> resolves to a website that, for Respondent’s financial gain, offers for sale goods and services competing with the business of Complainant. This employment of the domain names 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 Micron Consumer Products Group, Inc. v. Omer Faiyaz, FA1701001710747 (FORUM February 9, 2017):
[C]apitalizing 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).
Therefore, the Panel finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent registered and is using the domain names <harley-tour-canarias.com>, <harley-tour-fuerteventura.com> and <harley-tour-teneriffa.com>, which are confusingly similar to Complainant’s HARLEY trademark, to profit from the confusion thus caused among Internet users as to the possibility of Complainant’s affiliation with the domain names and their resolving web sites. Under Policy ¶ 4(b)(iv), this stands as proof of Respondent’s bad faith in registering and using the domain names. See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (FORUM May 13, 2015):
Respondent’s use of the website to display products similar to Complainant’s imputes intent to attract Internet users for commercial gain and finds bad faith per Policy ¶ 4(b)(iv).
On the related point of Respondent’s claimed efforts to pass itself off as Complainant at its resolving websites, see Am. Online, Inc. v. Miles, FA 105890 (FORUM May 31, 2002):
Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. [Panels have found] that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.
Finally, under this head of the Policy, it is plain from the record that Respondent knew of Complainant and its rights in the HARLEY mark when Respondent registered the <harley-tour-canarias.com>, <harley-tour-fuerteventura.com> and <harley-tour-teneriffa.com> domain names. This further demonstrates Respondent’s bad faith in registering those domain names. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (FORUM April 10, 2006) (finding that, where the attending circumstances indicate that a respondent had actual knowledge of a UDRP complainant's mark when it registered a challenged domain name, a panel can find bad faith in its registration). See also Yahoo! Inc. v. Butler, FA 744444 (FORUM August 17, 2006) (finding bad faith registration of a domain name where a UDRP respondent was "well-aware of the complainant's … mark at the time of registration.")
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the domain names <harley-tour-canarias.com>, <harley-tour-fuerteventura.com> and <harley-tour-teneriffa.com> be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: February 14, 2017
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