H-D Michigan, Inc. v. Wan-Fu China, Ltd.
Claim Number: FA0705000992015
Complainant is H-D Michigan, Inc. (“Complainant”), represented by David
M. Kelly, of Finnegan,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <dublinharleydavidson.com>, registered with Belgiumdomains, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 23, 2007; the National Arbitration Forum received a hard copy of the Complaint on May 24, 2007.
On May 24, 2007, Belgiumdomains, LLC confirmed by e-mail to the National Arbitration Forum that the <dublinharleydavidson.com> domain name is registered with Belgiumdomains, LLC and that Respondent is the current registrant of the name. Belgiumdomains, LLC has verified that Respondent is bound by the Belgiumdomains, LLC registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On May 25, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 14, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@dublinharleydavidson.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 20, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
Complainant is a producer and manufacturer of motorcycles, motorcycle parts and accessories, and motorcycle clothing.
In conjunction with the provision of these goods and services, Complainant has registered a number of trademarks and service marks with the United States Patent and Trademark Office (“USPTO”) including the HARLEY-DAVIDSON trademark (Reg. No. 518,062, issued November 29, 1949).
Respondent registered the disputed domain name on December 26, 2006.
Respondent is not commonly known by the disputed domain name.
The disputed domain name resolves to a website offering links to various third-party commercial websites, some of which directly compete with Complainant’s business.
Respondent’s <dublinharleydavidson.com> domain name is confusingly similar to Complainant’s HARLEY-DAVIDSON mark.
Respondent does not have any rights or legitimate interests in the domain name <dublinharleydavidson.com>.
Respondent has registered and uses the <dublinharleydavidson.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is 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."
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(e), 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.”
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.
Complainant claims rights in the HARLEY-DAVIDSON marks through registration with the USPTO. Complainant’s registration and extensive use of the HARLEY-DAVIDSON mark sufficiently establishes its rights in the mark pursuant to Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003): “Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.” See also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) (finding that a complainant’s registration of the MADD mark with the United States Patent and Trademark Office established its rights in the mark for purposes of Policy ¶ 4(a)(i)).
Respondent’s <dublinharleydavidson.com> domain name contains Complainant’s HARLEY-DAVIDSON mark in its entirety, and merely adds the geographical identifier “dublin” and the generic top-level domain (“gTLD”) “.com,” and eliminates the hyphen in the mark. The addition of a geographical identifier and a gTLD, as well as the elimination of a hyphen from a protected mark, fails to distinguish the domain name from the mark pursuant to Policy ¶ 4(a)(i). See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000): "[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . ." See also Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June 19, 2000) (holding that the domain name <cspan.net>, which omitted the hyphen from the trademark spelling, C-SPAN, is confusingly similar to a complainant's mark); see also Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that a respondent’s domain name is confusingly similar to a complainant’s mark because “the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar”).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
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.
To the same effect, see also F. Hoffman-La Roche AG v. Tomasso Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007)
We are persuaded that Complainant’s assertions are sufficient to establish a prima facie case under the Policy. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, as here, the assertion by a complainant that a respondent has no rights or legitimate interests is sufficient to shift the burden of proof to that respondent to demonstrate that such a right or legitimate interest nonetheless exists).
On the record before us, it is undisputed that the disputed domain name resolves to a website offering unsuspecting Internet users links to third-party commercial websites, some of which compete with Complainant’s business. Presumably, Respondent receives click-through referral fees for each misdirected Internet user. Such use is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See The Royal Bank of Scot. Group plc v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also Hale Prods., Inc. v. Hart Int’l Inc., FA 198031 (Nat. Arb. Forum Dec. 2, 2003) (finding that a respondent had no rights or legitimate interests in the <jawsoflife.com> domain name because that respondent was diverting Internet users to the website of one of a complainant’s competitors).
Complainant asserts that Respondent is not commonly known by the disputed domain name. An examination of Respondent’s WHOIS registration information reveals that the registrant of the <dublinharleydavidson.com> domain name is “Wan-Fu China, Ltd.” The Panel has not received any information to lead it to believe that Respondent is commonly known by the disputed domain name. In light of this, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also DIMC, Inc. v. Phan, D2000-1519 (WIPO Feb. 20, 2001) (rejecting the claim that a respondent was commonly known by the “Krylon” nickname because there was no evidence indicating when the alleged nickname was adopted and how it was used).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
We presume from the facts of record that Respondent receives financial remuneration, in the form of click-through fees, from its diversionary use of the disputed domain name. Such use is likely to create confusion among unsuspecting Internet users as to the possible source and affiliation of the resulting websites. We conclude therefore that Respondent’s behavior indicates registration and use in bad faith pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where a respondent diverted Internet users searching for a complainant to its own website and likely profited from click-through fees); see also BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002): “Complainants are in the music and entertainment business. The links associated with <billboard.tv> and <boogie.tv> appear to be in competition for the same Internet users, which Complainants are trying to attract with the <billboard.com> web site. There is clearly a likelihood of confusion between <billboard.tv> and BILLBOARD as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on the web site.”
In addition, it appears that Respondent registered the <dublinharleydavidson.com> domain name with at least constructive knowledge of
Complainant’s rights in the HARLEY-DAVIDSON
trademark by virtue of Complainant’s prior
registration of that mark with the United States Patent and Trademark
Office. Registration of a confusingly
similar domain name despite such constructive knowledge is, without more,
evidence of bad faith registration and use of the domain name pursuant to
Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb.
Forum Oct. 4, 2002).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <dublinharleydavidson.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 26, 2007
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