DECISION

 

H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin  ContactID 5645550 / FBS INC / Whoisprotection biz

Claim Number: FA1805001785313

PARTIES

Complainant is H-D U.S.A., LLC, (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA.  Respondent is ilyas Aslan / uok / Domain Admin  ContactID 5645550 / FBS INC / Whoisprotection biz (“Respondent”), Turkey.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <harleybot.bid> registered with NameCheap, Inc.; and <harleybot.com>, registered with FBS Inc.

 

PANEL

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.

 

Debrett G. Lyons as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on May 7, 2018; the Forum received payment on May 7, 2018.

 

On May 8, 2018; May 10, 2018, NameCheap, Inc.; FBS Inc. confirmed by e-mail to the Forum that the <harleybot.bid> and <harleybot.com> domain names are registered with NameCheap, Inc.; and FBS Inc., respectively, and that Respondent is the current registrant of the names.  NameCheap, Inc. and FBS Inc. have verified that Respondent is bound by the respective registration agreements 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 21, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 11, 2018 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@harleybot.bid and postmaster@harleybot.com.  Also on May 21, 2018, 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 14, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

Complainant asserts trademark rights in HARLEY and alleges that the disputed domain names are confusingly similar to its trademark. 

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.

 

Complainant alleges that Respondent registered and used the disputed domain names in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The factual findings pertinent to the decision in this case are that:

1.    Complainant manufactures, advertises, and sells motorcycles and motorcycling clothing and accessories by reference, inter alia, to the registered trademark HARLEY;

2.    Complainant owns, inter alia, United States Trademark Reg. No. 1,406,876, registered August 26, 1986 for the mark HARLEY;

3.    The disputed domain name <harleybot.bid> was registered on January 19, 2018 and the name <harleybot.com> was registered on January 2, 2015;

4.    The domain names resolve to websites offering boots and showing use of the HARLEY-DAVIDSON name and Complainant’s so-called “bar and shield” logo;

5.    There is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.

 

DISCUSSION

Preliminary Issue: Language of Proceeding

The Registration Agreement is written in Turkish thus making Turkish the language of the proceedings.  According to Rule 11 the Panel may therefore require that the Complaint be resubmitted in Turkish and the case recommenced.  The Panel nevertheless has discretion to permit the proceedings to continue in English taking into consideration the particular circumstances of the case.  Here Complainant has alleged that Respondent is proficient in English in support of which it refers to the fact that advertisements placed on the resolving websites are exclusively in English. Further, that Respondent appears to have registered numerous domain names based on English language words or brands.

 

Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likelihood that the Respondent is conversant and proficient in the English language.  After considering the circumstances of the present case, the Panel decides that the proceeding should be in English.


Primary Issues: the Policy

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.”).

 

Identical and/or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.

 

Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights.  It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights.  Since Complainant provides evidence of its United States Patent and Trademark Office trademark registration, the Panel is satisfied that it has trademark rights in HARLEY (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”)).

 

The Panel is also satisfied that both disputed domain names are confusingly similar to Complainant’s trademark.  The disputed domain names take the trademark and add non-distinctive elements – namely, the gTLDs, “.com”,  or “.bid”, together with the term “bot” which the evidence shows to be the Turkish word for “boot”, an article of clothing which has been sold by Complainant under the trademark and which is in the circumstances of no distinguishing value (see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar; see finally 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").

The Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. 

 

Rights or Legitimate Interests

Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:

 

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;  or

 

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights;  or

 

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

 

Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000)).

 

The publicly available WHOIS information identifies Respondent as Ilyas Aslanand so there is no prima facie evidence that Respondent might be commonly known by either of the disputed domain names.  There is no evidence that Respondent has any trademark rights.  There is no evidence that Complainant has authorized Respondent to use the trademark and Complainant denies any such authorization.

 

There is no evidence that the domain name has been used in relation to a bona fide offering of goods or services.  The Complaint includes screenshots of the resolving website from which it can be seen that Respondent is offering boots in the nature of motor cycling boots for sale.  Those boots appear in close proximity to the HARLEY-DAVIDSON name and logo.  Complainant alleges that the goods are counterfeit.  That assertion is not unreasonable but need not be critically examined since the goods bear the trademark and are being offered for sale without Complainant’s authority by a person who is not an authorized reseller of Complainant’s goods.

 

Panel finds that Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in this disputed domain names, and that Respondent in failing to reply has not rebutted such prima facie case.

 

The Panel finds that Respondent has no rights or legitimate interests in the disputed domain names and so Complainant has satisfied the second element of the Policy.

 

Registration and Use in Bad Faith

Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and used in bad faith. 

 

Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.

 

The four specified circumstances are:

 

‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

 

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

 

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

 

(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’

 

Panel finds that Respondent’s actions fall squarely under paragraph 4(b)(iv) above.  Panel has already found the disputed domain names to be confusingly similar to Complainant’s trademark.  Complainant submits evidence of screenshots of the web pages corresponding with the disputed domain names.  Panel notes the promotion of goods competitive with Complainant’s goods but offered without any apparent permission from Complainant.  The website relates to a business which exists for commercial gain.  In terms of paragraph 4(b)(iv) of the Policy, Panel finds that it is more likely than not that Respondent is using the domain names to attract, for commercial gain, internet users to Respondent’s websites by creating a likelihood of confusion with Complainant’s trademark (see, for example, Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008)).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <harleybot.bid> and <harleybot.com> <hd-jacket.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Debrett G. Lyons, Panelist

Dated: June 25, 2018

 

 

 

 

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