H-D U.S.A., LLC v. Chris Geras / MAY be for sale. Serious Inquiries Only Please.
Claim Number: FA1510001641440
Complainant is H-D U.S.A., LLC (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is Chris Geras / MAY be for sale. Serious Inquiries Only Please. (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <customharley.com>, registered with Wild West Domains, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 7, 2015; the Forum received payment on October 7, 2015.
On October 8, 2015, Wild West Domains, LLC confirmed by e-mail to the Forum that the <customharley.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, LLC 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 October 9, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 29, 2015 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@customharley.com. Also on October 9, 2015, 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.
A timely Response was received and determined to be complete on October 19, 2015.
Complainant’s additional submission was received and determined to be compliant on October 26, 2015.
On October 28, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant sells and manufactures motorcycles under the HARLEY-DAVIDSON and HARLEY marks. Complainant has established rights in the HARLEY-DAVIDSON and HARLEY marks based on longstanding use and registration with the United States Patent and Trademark Office (“USPTO”). See Reg. No. 1078871, registered December 6, 1977, for HARLEY-DAVIDSON and Reg. No. 1,352,679, registered August 6, 1985, for HARLEY. Respondent’s disputed <customharley.com> domain name is confusingly similar to the HARLEY-DAVIDSON and HARLEY marks because the domain only differs from the mark through the addition of the generic term “custom” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. There is no evidence in the record, including WHOIS information, to indicate that Respondent has been commonly known by the disputed domain name. Further, Respondent’s use of the disputed domain name, to operate a pay-per-click website and offer the domain for sale, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has registered and is using the disputed domain name in bad faith. First, Respondent registered the domain for the purposes of selling the domain in excess of out of pocket costs. Second, Respondent’s display of advertisements for competing products and services at the disputed domain name disrupts and competes with Complainant’s business. Third, Respondent registered the domain to attract and confuse internet users who are under the impression that Respondent’s domain is connected to Complainant’s legitimate business. Lastly, Respondent had knowledge of Complainant’s rights in the HARLEY and HARLEY-DAVIDSON marks based on the fame of the marks and Respondent’s use of motorcycle pictures in offers to sell the domain.
B. Respondent
Respondent’s domain refers to customization of Complainant’s motorcycles which is done primarily through third-party vendors therefore the <customharley.com> domain name is not confusingly similar. Respondent has rights and legitimate interests in the disputed domain name through longstanding use and promotion of Complainant’s products. Respondent did not originally register the disputed domain name and thus could not have registered the domain in bad faith. Also, Complainant is attempting to reverse domain name hijack Respondent’s legitimate domain name.
C. Complainant’s Additional Submissions
Respondent expressly admits to many facts that should allow for Complainant to prevail in this proceeding. First, Respondent admits that he had knowledge of Complainant’s rights in the HARLEY mark prior to his registration of the disputed domain name. Second, Respondent admits the domain name contains Complainant’s HARLEY mark. Third, Respondent admits that he intended to sell the domain for revenue. Fourth, Respondent admits that the domain was used to operate a pay-per-click website.
Relating to Policy ¶ 4(a)(i), Respondent’s arguments lack merit because a Complainant is not required to have exclusive rights in each word in a domain for the domain to be confusingly similar. Additionally, despite Respondent’s arguments to the contrary, Complainant extensively engages in the business of customizing motorcycles.
Relating to Policy ¶ 4(a)(ii), it is immaterial that Respondent is not the original registrant of the disputed domain because numerous decisions have held that a Respondent to have “registered” a domain when they acquire it through transfer. Further, despite his claims, Respondent has shown no evidence of any attempt to make a legitimate use of the domain.
Relating to Policy ¶ 4(a)(iii), despite Respondent’s assertions, Respondent advertising third-party products does not reduce the confusion and attraction of users to the disputed domain name.
Finally, Respondent has no legitimate grounds on which he may base a claim of reverse domain name hijacking.
Complainant, H-D U.S.A., LLC, owns and licenses intellectual property to various Harley-Davidson companies, including Harley-Davidson Motor Company, LLC (collectively referred to as “Harley”). Since 1903, Harley has manufactured, advertised, and sold motorcycles under the HARLEY-DAVIDSON trademark and trade name. In addition, Harley has offered for decades a full array of motorcycle parts and accessories, apparel, and other products and services under the HARLEY marks. Harley has established rights in the HARLEY-DAVIDSON and HARLEY marks under Policy ¶ 4(a)(i) based on longstanding use and registration with the United States Patent and Trademark Office (“USPTO”). See Reg. No. 1078871, registered December 6, 1977, for HARLEY-DAVIDSON and Reg. No. 1,352,679, registered August 6, 1985, for HARLEY. Harley’s HARLEY-DAVIDSON and HARLEY marks have been famous worldwide for many years.
Respondent, Chris Geras / MAY be for sale. Serious Inquiries Only Please., registered or acquired the <customharley.com> domain name in Fall 2014.
Respondent had knowledge of Harley’s rights in its famous and registered HARLEY mark when he registered or acquired the domain name <customharley.com>. Respondent offers to sell the domain name for profit. Respondent has used the domain name for a commercial pay-per-click website with sponsored-link advertisements for directly competing motorcycle-related websites and other commercial websites. Respondent intends to use the domain name in the future to generate revenue via advertisements. Respondent is not and has not been commonly known by the domain name.
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.
Complainant has rights in the HARLEY-DAVIDSON and HARLEY marks under Policy ¶ 4(a)(i) through registration with USPTO. See SDC Media, Inc. v. SCMedia, FA 960250 (Nat. Arb. Forum June 7, 2007) (holding that “[t]his trademark registration [with the USPTO] establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).
Respondent’s <customharley.com> domain name is confusingly similar to the HARLEY-DAVIDSON and HARLEY marks under Policy ¶ 4(a)(i). The domain name is comprised of HARLEY, Complainant’ HARLEY mark in its entirety and the shorthand of Complainant’s HARLEY-DAVIDSON mark, and the term “custom” that directly relates to Complainant’s custom motorcycle offerings. When analyzing confusing similarity, the presence of the gTLD “.com” is not relevant. 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). Generic terms added to a mark have also not been found to alter a domain in a manner that prevents a finding of confusing similarity. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because 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)). The generic or descriptive term “custom” directly describes Harley’s own custom HARLEY motorcycles and Harley’s customization services. The addition of a generic or descriptive term that directly relates to the trademark owner’s business renders the domain name confusingly similar to the mark at issue. See H-D Michigan, LLC v. hayley Ross FA 1250712)(Nat. Arb. Forum April 23, 2009) (“The disputed <harley-davidsonjacket.com> domain name adds the generic and descriptive word ‘jacket’ to the HARLEY-DAVIDSON mark as well as the generic top-level domain ‘.com.’ The mark is clearly the dominant element, and the alterations either describe Complainant’s business (i.e. ‘jacket’) or are considered irrelevant under the Policy (i.e. ‘.com’). Therefore the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).”).
There is no basis for Respondent’s contention that Harley must have exclusive rights in each of the individual terms in the domain name to meet its burden under the UDRP.
Respondent does not have rights or legitimate interests in the <customharley.com> domain name. Respondent is not commonly known by the domain name. The WHOIS information identifies the Respondent as, “Chris Geras.” Additionally, Complainant has not authorized Respondent to use the HARLEY-DAVIDSON and HARLEY marks. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent’s claims that he registered the domain name with “the intention” of using it for a motorcycle-related “forum site” with revenue-generating advertising. However, Respondent’s use of the <customharley.com> domain name, to operate a pay-per-click website and offer the domain for sale, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent uses the domain name to resolve to a generic parked website that displays click through links titled, “Custom Harley,” “Custom Harley Exhaust Pipes,” and “Harley Davidson Road King.” Additionally, Respondent has listed the domain for sale. Panels have found that using a confusingly similar domain to operate a website hosting click through links is not a bona fide offering or a legitimate noncommercial or fair use. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
Additionally, Respondent’s lack of rights or legitimate interests in the <customharley.com> domain name is evident from Respondent’s attempt to sell the domain. Respondent has listed the domain for sale on the disputed domain itself and on the website <sedo.com>. A willingness to sell a disputed domain can indicate a lack of rights and legitimate interests in the domain. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)).
Respondent has registered and is using the <customharley.com> domain name in bad faith. First, Respondent registered the domain for the purposes of listing it for sale. Respondent has listed the domain name for sale through multiple avenues for costs such as, $9,950 and $8,875. Panels have found bad faith under Policy ¶ 4(b)(i) where the respondent listed a domain for sale and the value in the domain was based on its relationship to a complainant’s mark. See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (finding that when the domain name itself notes that it is “available for lease or sale,” evidence that the domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(i) can be inferred from the fact that “the sole value of the [<wwwdinersclub.com] domain name is dictated by its relation to the complainant’s registered DINERS CLUB mark). The Panel finds that Respondent has acted in bad faith under Policy ¶ 4(b)(i).
Second, Respondent displays advertisements for competing products and services at the disputed domain name and thus disrupts and competes with Complainant’s business. Respondent’s domain displays various advertisements for products and services with titles that include, “Motorcycle Accessories,” “Parts for Harley-Davidson,” and “Custom Harley Parts.” Panels have found that use of a disputed domain name was in bad faith where the respondent hosted a website listing links to complainant and complainant’s competitors’ products. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names). The Panel finds that Respondent has acted in bad faith under Policy ¶ 4(b)(iii).
Third, Respondent registered the domain to attract and confuse internet users who are under the impression that Respondent’s domain is connected to Complainant’s legitimate business. Panels have consistently found bad faith under Policy ¶ 4(b)(iv) where a respondent commercially benefited from internet users who were attracted to the disputed domain because of the confusing similarity of the domain to a complainant’s mark. See CMG Worldwide, Inc. v. Lombardi, FA 95966 (Nat. Arb. Forum Jan. 12, 2001) (finding that the respondent’s use of the complainant’s VINCE LOMBARDI mark to divert Internet users to its commercial website located at the <vincelombardi.com> domain name constituted bad faith use and registration of the disputed domain name). The Panel finds that Respondent has acted in bad faith under Policy ¶ 4(b)(iv) through attracting and confusing internet users for commercial gain.
Respondent’s claims that the domain name does not create a likelihood of confusion because his website is different than Harley’s website and because he advertises third-party motorcycle websites rather than Harley’s website have no merit. The domain name communicates Harley’s registered HARLEY mark and Harley’s own “custom” products and services offered under its mark. Respondent registered and uses the domain name for the purpose of attracting Internet traffic through his unauthorized use of Harley’s HARLEY mark in the domain name.
Moreover, Respondent’s posting of a disclaimer on his website does not avoid the likelihood of confusion or the bad-faith disruption created by Respondent’s unauthorized use of the HARLEY mark in the domain name. Caterpillar Inc. v. Strphen R. Vine, FA 97097 (Nat. Arb. Forum June 22, 2001) (“a disclaimer cannot prevent the diversion of Internet users caused by the use of a famous mark in the domain name itself.”).
Fourth, Respondent had actual knowledge of Complainant's rights in the mark prior to registering the <customharley.com> domain name. Actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
The domain was initially registered on September 5, 1997, by Cycle City in Tennessee. Respondent contends that he did not the domain name and, therefore, could not have registered it in bad faith. He purchased the domain name from a third party with the intention of doing a forum site where people could post pictures of their bikes and share information. The prior registration of the domain name does not confer any rights to Respondent.
Respondent’s acquisition date is the registration date in cases where the domain name was initially registered by a third party. See CafePress.com Inc. v. Domain registrar, FA 1191346 (Nat. Arb. Forum July 27, 2008) (“For purposes of determining a respondent’s intent in situations where the respondent is not the initial registrant of the disputed domain name, the date of registration is the date on which the respondent acquired the domain name.”); see also Google Inc., v. Yi Wu Shi Shuangfeng Jixie Youxian Gongsi, FA 1159972 (Nat. Arb. Forum May 5, 2008) (finding that the Respondent’s relevant registration date was the date on which it acquired the disputed domain name that had been previously registered by a third party); see also Gewista-Werbegesellschaft mbH v. Unasi Inc., D2005-1051 (WIPO) November 22, 2005) (“[T]here is no reason to differentiate between a direct registration and registration after transfer.” The domain name was “registered” within the meaning of the policy when it was acquired by the respondent from a prior registrant.).
Finally, Respondent’s suggestion that he was able to register the domain name because it was available for acquisition or registration has been uniformly rejected by UDRP Panels. See, e.g., H-D Michigan LLC v. Nathan Bingham, FA 1248203(Nat. Arb. Forum) (Respondent “. . . did not have the right, in the first place, to register the Domain Name with full knowledge that it wholly encompassed the Complainant’s trademark and would trade on that mark’s goodwill, without first seeking permission from Complainant.”).
Reverse Domain Name Hijacking
As Complainant has satisfied all of the elements of Policy ¶ 4(a), the Panel finds that Complainant has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <customharley.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret., Panelist
Dated: November 11, 2015
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