H-D U.S.A., LLC v. Steffen Hönl
Claim Number: FA1312001533582
Complainant is H-D U.S.A., LLC (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington, D.C., USA Respondent is Steffen Hönl (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hob-harleydavidsonjackets.com>, registered with PSI-USA, Inc. dba Domain Robot.
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.
Ho Hyun Nahm as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 9, 2013; the National Arbitration Forum received payment on December 9, 2013.
On December 10, 2013, PSI-USA, Inc. dba Domain Robot confirmed by e-mail to the National Arbitration Forum that the <hob-harleydavidsonjackets.com> domain name is registered with PSI-USA, Inc. dba Domain Robot and that Respondent is the current registrant of the name. PSI-USA, Inc. dba Domain Robot has verified that Respondent is bound by the PSI-USA, Inc. dba Domain Robot 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 December 10, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 30, 2013 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@hob-harleydavidsonjackets.com. Also on December 10, 2013, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 3, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm as Panelist.
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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel issues 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
Complainant makes the following contentions:
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent registered the disputed domain name on June 5, 2013.
Complainant established that it had rights in the mark contained in the disputed domain name.
Respondent has no rights to or legitimate interests in the disputed domain name.
The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed 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(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.”).
Complainant asserts that it uses the HARLEY-DAVIDSON mark to identify its motorcycles and related products such as apparel, which it sells to the public through its website and through licensed HARLEY-DAVIDSON dealers. See Complainant’s Exhibits 3 & 5. Complainant further asserts that it owns rights in the HARLEY-DAVIDSON mark through registrations of the mark with the USPTO (e.g., Reg. No. 1,078,871 registered December 6, 1977). See Complainant’s Exhibit 6. The Panel notes that it has previously been held that a complainant establishes its rights in a mark under Policy ¶ 4(a)(i) through evidence of its registration of the mark with the USPTO. See, e.g., Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). It has also been held that a complainant does not need to register its mark in the respondent’s country of origin in order to sufficiently demonstrate its rights in the mark under the Policy. See, e.g., Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Therefore, the Panel holds that Complainant’s registration of the HARLEY-DAVIDSON mark with the USPTO sufficiently establishes Complainant’s rights in the mark under Policy ¶ 4(a)(i), even though Respondent appears to operate out of Germany.
Complainant next asserts that the <hob-harleydavidsonjackets.com> domain name is confusingly similar to Complainant’s HARLEY-DAVIDSON mark because it fully appropriates the mark and merely adds the gTLD “.com”, the generic term “jackets,” and the three letters “hob,” which can be viewed either as random letters or as an abbreviation of the term “Hall of Bikes.” The Panel also observes that the disputed domain name eliminates the hyphen found between words in the HARLEY-DAVIDSON mark while adding a hyphen in between the words “hob” and “HARLEY.” However, the Panel notes that previous panels have held that the use or absence of a hyphen in a disputed domain name does not sufficiently alter the disputed domain name from the appropriated mark. See, e.g., Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"); see also Ritz-Carlton Hotel Co. v. Club Car Executive Transp., D2000-0611 (WIPO Sept. 18, 2000) (finding that removing a hyphen in the domain names is not sufficient to differentiate the domain names from the mark). The Panel similarly notes that a domain name’s addition of a gTLD such as “.com” is typically found to be irrelevant for the purposes of a confusing similarity analysis under Policy ¶ 4(a)(i). See, e.g., Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). It has also been held that a domain name is confusingly similar to a complainant’s mark where the domain name appropriates the mark and adds words that are descriptive of the products offered under the complainant’s mark. See, e.g., Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business). In the instant proceedings, the Panel holds that the added term “jackets” is obviously connected to the motorcycle apparel offered by Complainant under its HARLEY-DAVIDSON mark. See Complainant’s Exhibit 5. Therefore, the Panel holds that the addition of the term “jackets” does not sufficiently distinguish the <hob‑harleydavidsonjackets.com> domain name from Complainant’s mark under the Policy. Similarly, the Panel notes that previous panels have held that a domain name is confusingly similar to a complainant’s mark where the disputed domain name fully appropriates the complainant’s mark and adds a string of indiscriminate letters. Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly similar to the complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”). In the instant proceedings, the Panel holds that the added letters “hob” are either a string of indiscriminate letters, or an abbreviation off the phrase “hall of bikes,” which is obviously connected to Complainant’s business in the motorcycle industry. See Complainant’s Exhibit 7. As such, the Panel holds that the added term “hob” does not distinguish the <hob-harleydavidsonjackets.com> domain name from Complainant’s HARLEY-DAVIDSON mark. Therefore, the Panel concludes that the disputed domain name is confusingly similar to Complainant’s HARLEY-DAVIDSON mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“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.”).
Complainant alleges that Respondent is not commonly known as <hob‑harleydavidsonjackets.com>. The Panel notes that previous panel decisions hold that a respondent is not commonly known by a disputed domain name pursuant to Policy ¶ 4(c)(ii) where there is no evidence in the record, including the WHOIS information, to indicate otherwise. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). In the instant case, the Panel observes that the WHOIS information identifies the registrant of the disputed domain name as “Steffen Hönl,” and the Panel concludes that this does not suggest that Respondent is commonly known as <hob‑harleydavidsonjackets.com>. Thus, as the Panel determines that nothing else in the record suggests that Respondent is commonly known as <hob‑harleydavidsonjackets.com>, the Panel holds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant next asserts that Respondent is using the <hob‑harleydavidsonjackets.com> domain name to offer counterfeit HARLEY-DAVIDSON products, which does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Complainant’s Exhibit 7. The Panel notes that according to a screenshot submitted by Complainant, the at-issue website purports to offer “Harley Davidson Clothing” at a fraction of the cost charged by Complainant. See Complainant’s Exhibits 5, 7. The Panel concludes from this evidence that Respondent is using the <hob-harleydavidsonjackets.com> domain name to offer counterfeit versions of Complainant’s HARLEY-DAVIDSON apparel. The Panel notes that it has previously been held that such a use of a disputed domain name is not protected under Policy ¶¶ 4(c)(i) or 4(c)(iii). See, e.g., eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name). Here, the Panel similarly holds that the use of the <hob-harleydavidsonjackets.com> domain name to offer counterfeit HARLEY-DAVIDSON apparel does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant next asserts that Respondent is using the <hob‑harleydavidsonjackets.com> domain name to pass itself off as Complainant or as Complainant’s authorized HARLEY-DAVIDSON dealer located in West Fargo, North Dakota, which is further evidence that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Complainant’s Exhibits 7 & 8. The Panel notes that according to a screenshot submitted by Complainant, Respondent lists its contact information as “Harley Davidson Clothing 600 West Main Avenue West Fargo, North Dakota,” which is allegedly the contact information of one of Complainant’s legitimate, authorized dealers. See Complainant’s Exhibit 7. Complainant also points out that the at-issue website prominently displays Complainant’s logo, which is further evidence of Respondent’s intent to pass itself off as Complainant. See Complainant’s Exhibits 7 & 8. The Panel notes that it has previously been held that a respondent’s use of a disputed domain name to try to pass itself off as the complainant is evidence that the respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent that attempts to pass itself off as the complainant online, which includes blatant unauthorized use of the complainant’s mark, is evidence that the respondent has no rights or legitimate interests in the disputed domain name). The Panel concludes that here, as in Am. Int’l Group, supra, the at-issue website blatantly displays Complainant’s HARLEY-DAVIDSON mark and corresponding logo without authorization. The Panel further determines that the display of the West Fargo, North Dakota, contact information also bolsters Complainant’s claim that Respondent is attempting to pass itself off as Complainant. The Panel concludes that Respondent’s passing off behavior is further evidence of Respondent’s lack of rights or legitimate interests in <hob-harleydavidsonjackets.com> domain name under Policy ¶ 4(a)(ii).
Complainant alleges that the <hob-harleydavidsonjackets.com> domain name disrupts Complainant’s business under Policy ¶ 4(b)(iii) by offering counterfeit HARLEY-DAVIDSON products, which unfairly competes with Complainant’s own offering of genuine HARLEY-DAVIDSON products. See Complainant’s Exhibit 7. As discussed above, the at-issue website appears to offer “Harley Davidson Clothing” at a “fraction of the cost” charged by Complainant. See Complainant’s Exhibits 5 & 7. The Panel concludes from this evidence that Respondent is using the <hob-harleydavidsonjackets.com> domain name to offer counterfeit versions of Complainant’s HARLEY-DAVIDSON apparel. The Panel notes that it has previously been held that a respondent demonstrates bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) where the disputed domain name is used to offer counterfeit versions of the complainant’s products. See, e.g., Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Nat. Arb. Forum Mar. 5, 2008) (concluding that the complainant’s business is disrupted by the respondent’s registration and use of the disputed domain name for the purpose of selling counterfeit products). Here, the Panel similarly concludes that Respondent has demonstrated bad faith registration and use of the <hob‑harleydavidsonjackets.com> domain name under Policy ¶ 4(b)(iii) by using the disputed domain name to offer counterfeit HARLEY-DAVIDSON apparel.
Complainant also alleges that Respondent has demonstrated bad faith pursuant to Policy ¶ 4(b)(iv), because the disputed domain name intentionally attracts Internet users to Respondent’s website by creating a likelihood of confusion with Complainant, and Respondent is commercially profiting therefrom. See Complainant’s Exhibit 7. The Panel notes that it has previously been held that a respondent demonstrates bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent is exploiting an obvious connection between the disputed domain name and a complainant’s mark. See, e.g., Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). Previous panels have also determined that a respondent can be said to commercially profit where the disputed domain name is used to offer counterfeit versions of the complainant’s products. Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products). Here, the Panel determines that the evidence supports Complainant’s allegation that the disputed domain name is being used to sell counterfeit HARLEY-DAVIDSON apparel. See Complainant’s Exhibits 5, 7, & 8. The Panel also determines that there is an obvious connection between the HARLEY-DAVIDSON mark and the <hob‑harleydavidsonjackets.com> domain name, since the disputed domain name fully appropriates the HARLEY-DAVIDSON mark. Accordingly, the Panel holds that the disputed domain name creates a likelihood of confusion with Complainant’s HARLEY-DAVIDSON mark and that Respondent is profiting from this confusion through its sale of counterfeit goods. Thus, the Panel holds that Respondent has demonstrated bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iv).
Complainant next alleges that Respondent has demonstrated bad faith under Policy ¶ 4(a)(iii), because Respondent is using the <hob‑harleydavidsonjackets.com> domain name to pass itself off as Complainant or as Complainant’s authorized HARLEY-DAVIDSON dealer located in West Fargo, North Dakota. See Complainant’s Exhibits 7 & 8. The Panel recalls that according to a screenshot submitted by Complainant, Respondent lists its contact information as “Harley Davidson Clothing 600 West Main Avenue West Fargo, North Dakota,” which is allegedly the contact information of one of Complainant’s legitimate, authorized dealers. See Complainant’s Exhibit 7. Complainant also points out that the at-issue website prominently displays Complainant’s logo, which is further evidence of Respondent’s intent to pass itself off as Complainant. See Complainant’s Exhibits 7 & 8. The Panel notes that it has previously been held that a respondent demonstrates under Policy ¶ 4(a)(iii) where the respondent uses the disputed domain name to pass itself off as the complainant, which includes the blatant and unauthorized display of the complainant’s mark on the disputed domain name’s resolving website. See, e.g., Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”). Here, the Panel concludes from the evidence submitted that Respondent has duplicated Complainant’s HARLEY-DAVIDSON mark and its corresponding logo on the website resolving from <hob-harleydavidsonjackets.com> as was the case in Target Brands, Inc., supra. The Panel also concludes that Respondent’s display of the contact information of Complainant’s North Dakota dealer is further evidence of Respondent’s attempt to pass itself off as Complainant. Therefore, the Panel holds that Respondent has used the dispute domain name to attempt to pass itself off as Complainant, which demonstrates Respondent’s bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii).
Finally, Complainant asserts that Respondent registered the <hob‑harleydavidsonjackets.com> domain name with actual notice of Complainant’s rights in the HARLEY-DAVIDSON mark, which evidences Respondent’s bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii). Previous panels have held that a respondent demonstrates bad faith under Policy ¶ 4(a)(iii) by registering an infringing domain name with actual notice of the complainant’s rights in the appropriated mark. See, e.g., Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Previous panels have also inferred that a respondent had such actual knowledge indicating bad faith where there is an obvious link between the mark and the content promoted on the at-issue website, or where the appropriated mark is extremely well-known. See, e.g., Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”); see also Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that the respondent’s registration and use of an identical and/or confusingly similar domain name was in bad faith where the complainant’s BEANIE BABIES mark was famous and the respondent should have been aware of it). In the instant proceedings, the Panel observes that there is a clear link between the motorcycle apparel promoted on Respondent’s website and the HARLEY-DAVIDSON mark. See Complainant’s Exhibits 5 & 7. The Panel also notes that the HARLEY-DAVIDSON mark is so well-known that Respondent’s actual notice of the mark can be inferred. Therefore, the Panel holds that Respondent registered the <hob-harleydavidsonjackets.com> domain name with actual knowledge of Complainant’s rights in the HARLEY-DAVIDSON mark, which is further evidence of Respondent’s bad faith registration and use of the disputed domain name pursuant to 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 <hob-harleydavidsonjackets.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Panelist
Dated: January 8, 2014
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