H-D U.S.A., LLC v. Nguyen Duc Thuan
Claim Number: FA1411001588916
Complainant is H-D U.S.A., LLC (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is Nguyen Duc Thuan (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hoghanoi.com>, registered with P.A. Viet Nam Company Limited.
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, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 6, 2014; the National Arbitration Forum received payment on November 6, 2014. The Complaint was submitted in both English and Vietnamese.
On November 17, 2014, P.A. Viet Nam Company Limited confirmed by e-mail to the National Arbitration Forum that the <hoghanoi.com> domain name is registered with P.A. Viet Nam Company Limited and that Respondent is the current registrant of the names. P.A. Viet Nam Company Limited has verified that Respondent is bound by the P.A. Viet Nam Company Limited 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 November 20, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 10, 2014 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@hoghanoi.com. Also on November 20, 2014, 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 December 18, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm, Esq. 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 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
i) Complainant uses HOG to identify its motorcycle-club, which offers members exclusive services such as transportation, access to local chapter meetings, magazines, and product offerings. Complainant owns United States Patent and Trademark Office registrations for the HOG mark, including Registration Number 1,458,778, registered September 22, 1987, for motorcycle services. The <hoghanoi.com> domain name is confusingly similar to HOG because it takes the mark, adds the geographic term “Hanoi” (a city in Vietnam) and adds the functional gTLD “.com.”
ii) Respondent has no rights or legitimate interests in the domain name. Respondent is known as “Nguyen Duc Thuan,” and not by the name <hoghanoi.com>. Respondent has no license to use HOG in domain names. Further, to remove any chance at a random appropriation of the term “hog,” the domain name’s website purports to be a HOG branch in Hanoi, Vietnam, and appropriates Complainant’s own trademarks to promote Respondent’s business. See Compl., at Attached Ex. 10. The mere fact that Respondent is attempting to pass itself off as Complainant is evidence in itself of Respondent’s lack of rights in this domain name.
iii) Respondent has registered and is using the <hoghanoi.com> domain name in bad faith. First, Respondent holds other domain names that are infringing the HOG mark. Second, the use of the domain name to house a competing website is suggestive of Respondent’s aim to disrupt Complainant’s business. There is likelihood for Internet users to be confused as to Respondent’s affiliation with the legitimate HOG club, and Respondent stands to profit from Internet users who might believe they have reached a Hanoi-based legitimate HOG website. Respondent is passing off as Complainant by misappropriating the HOG mark. Finally, Respondent has to have actual knowledge of Complainant’s mark prior to registering the domain name (due to use of the mark on the website itself), and as such Respondent has registered in bad faith.
B. Respondent
Respondent did not submit a response. The Panel notes the <hoghanoi.com> domain name was registered January 16, 2011.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
Preliminary Issue: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Vietnamese, thereby making Vietnamese the language of the proceedings. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Vietnamese language Complaint and Commencement Notification, and, absent a Response, concludes that the remainder of the proceedings shall be conducted in English.
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 uses HOG to identify its motorcycle-club, which offers members exclusive services such as transportation, access to local chapter meetings, magazines, and product offerings. Complainant owns United States Patent and Trademark Office registrations for the HOG mark, including Registration Number 1,458,778, registered September 22, 1987, for motorcycle services. The Panel agrees that registrations such as this USPTO registration satisfy the Complainant’s showing of rights under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant claims that the <hoghanoi.com> domain name is confusingly similar to HOG because it takes the mark, adds the geographic term “Hanoi” (a city in Vietnam) and adds the functional gTLD “.com.” The Panel agrees that the gTLD is not relevant as a distinctive addition. 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). The Panel further agrees that the <hoghanoi.com> domain name is confusingly similar to the HOG mark in that the only substantive difference is the geographic phrase “hanoi” which is considered as being non-distinctive. See Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark).
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 points out that Respondent is known as “Nguyen Duc Thuan,” and not by the name <hoghanoi.com>. The Panel agrees that the referenced name is the one found in the WHOIS record for this domain name. Complainant adds that this Respondent has no license to use HOG in domain names. Therefore, the Panel finds there is no basis for finding that Respondent is commonly known by this domain name under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant further argues that the domain name’s website purports to be a HOG branch in Hanoi, Vietnam, and appropriates Complainant’s own trademarks to promote Respondent’s business. See Compl., at Attached Ex. 10. Complainant adds that the mere fact that Respondent is attempting to pass itself off as Complainant is evidence in itself of Respondent’s lack of rights in this domain name. Taken together, this Panel agrees that Respondent’s attempt to pass itself off and run its own competing and unlicensed motorcycle club under the HOG mark is suggestive of Respondent’s lack of rights under Policy ¶¶ 4(c)(i), or (iii). See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
Complainant argues that Respondent holds other domain names that are infringing the HOG mark. The Panel notes that the other referenced domain names are not subject to this dispute, nor is there any evidence in the record to suggest that the referenced domain names were subject to a prior UDRP decision. As such, the Panel is of the view that there is insufficient basis to establish a pattern of bad faith registration under Policy ¶ 4(b)(ii).
Complainant goes on to argue that the use of the domain name to house a competing website is suggestive of Respondent’s aim to disrupt Complainant’s business. The Panel again notes that Respondent appears to operate its own motorcycle club, using the HOG mark, through the disputed domain name’s website. See Compl., at Attached Ex. 10. This Panel finds such a use to stand as evidence of a Policy ¶ 4(b)(iii) bad faith attempt to disrupt Complainant’s endeavors. See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
Complainant goes on to claim that there is likelihood for Internet users to be confused as to Respondent’s affiliation with the legitimate HOG club, and Respondent stands to profit from Internet users who might believe they have reached a Hanoi-based legitimate HOG website. Complainant thus suggests that Respondent is passing off as Complainant by misappropriating the HOG mark. In examining Exhibit 10 provided by Complainant, the Panel agrees that the scope of this “passing off” is sufficient to illustrate Respondent’s aim to profit through a likelihood of Internet user confusion. See Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. 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. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
Finally, Complainant argues that Respondent has to have actual knowledge of Complainant’s mark prior to registering the domain name (due to use of the mark on the website itself), and as such Respondent has registered in bad faith. As such, the Panel agrees that Respondent actually knew of Complainant’s rights in the mark and as such Respondent is liable of bad faith under Policy ¶ 4(a)(iii). See, e.g., Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hoghanoi.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: December 26, 2014
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