H-D U.S.A., LLC v. Toshimitsu Imai / edano mitsuhiro / koji sato / DNS ADMIN / FC2,INC.
Claim Number: FA1707001740913
Complainant is H-D U.S.A., LLC (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington D.C., USA. Respondent is Toshimitsu Imai / edano mitsuhiro / koji sato / DNS ADMIN / FC2,INC. (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <h-dstore.com>, <h-d-stars.com>, <harley-riders.net>, and <harley-bikers.net>, registered with Godaddy.Com, Llc, Gmo Internet, Inc., and Enom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 20, 2017; the Forum received payment on July 20, 2017.
On Jul 21, 2017; Jul 27, 2017; Jul 28, 2017, Godaddy.Com, Llc, Gmo Internet, Inc., Enom, Inc confirmed by e-mail to the Forum that the <h-dstore.com>, <h-d-stars.com>, <harley-riders.net>, and <harley-bikers.net> domain names are registered with Godaddy.Com, Llc, Gmo Internet, Inc., and Enom, Inc and that Respondent is the current registrant of the names. Godaddy.Com, Llc, Gmo Internet, Inc., and Enom, Inc has verified that Respondent is bound by the Godaddy.Com, Llc, Gmo Internet, Inc., and Enom, Inc 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 August 2, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 22, 2017 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@h-dstore.com, postmaster@h-d-stars.com, postmaster@harley-riders.net, and postmaster@harley-bikers.net. Also on August 2, 2017, 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 August 17, 2017.
On August 21, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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 names be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <h-dstore.com>, <h-d-stars.com>, <harley-riders.net>, and <harley-bikers.net> domain names are confusingly similar to Complainant’s HARLEY-DAVIDSON and H-D marks.
2. Respondent does not have any rights or legitimate interests in the <h-dstore.com>, <h-d-stars.com>, <harley-riders.net>, and <harley-bikers.net> domain names.
3. Respondent registered and uses the <h-dstore.com>, <h-d-stars.com>, <harley-riders.net>, and <harley-bikers.net> domain names in bad faith.
B. Respondent admitted all of Complainant’s allegations and asked that Complainant’s requested remedy be granted.
Since 1903, Complainant has manufactured, advertised, and sold motorcycles and related goods and services under the HARLEY-DAVIDSON mark. Complainant has registered the related H-D mark (Reg. No. 1,239,313, registered May 24, 1983) and the HARLEY mark (Reg. No. 1,352,679, registered Aug. 6, 1985) with the United States Patent and Trademark Office (“USPTO”).
Respondent registered the <h-dstore.com> domain name on November 10, 2014, <h-d-stars.com> on April 7, 2011, <harley-riders.net> on October 18, 2012, and <harley-bikers.net> on December 17, 2011, and uses them to compete with Complainant.
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.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities that control the disputed domain names are the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Since Respondent Toshimitsu Imai has admitted to all of the allegations in the Complaint, the Panel finds that the listed Respondents are effectively the same, and will refer to them as “Respondent.”
Preliminary Issue: Language of Proceeding
Pursuant to UDRP Rule 11(a), the Panel finds that there is persuasive evidence that the Respondent is conversant and proficient in the English language. The Response is in English, and thus the Panel decides that the proceeding will be conducted in English.
The Panel finds that Complainant has established rights in the H-D and HARLEY marks through registration with the USPTO. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”).
Respondent’s <h-dstore.com>, <h-d-stars.com>, <harley-riders.net>, and <harley-bikers.net> domain names are each comprised of one of Complainant’s marks and one of the generic terms “store,” “stars,” “riders,” or “bikers,” along with a gTLD. Similar changes to registered marks have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Thus, the Panel finds that the disputed domain names are confusingly similar to Complainant’s H-D and HARLEY marks.
The Panel finds that complainant has satisfied Policy ¶4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 (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 (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 contends that Respondent has no rights or legitimate interests in the <h-dstore.com>, <h-d-stars.com>, <harley-riders.net>, and <harley-bikers.net> domain names and that Respondent is not commonly known by the H-D or HARLEY marks. Complainant states that Respondent is not affiliated with Complainant, and has no permission to use Complainant’s marks in the disputed domain names. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Complainant argues that Respondent doesn’t use the disputed domain names for any bona fide offering of goods or services or a legitimate noncommercial or fair use because it attempts to pass off as Complainant for its own commercial gain. Complainant provides screenshots of Respondent’s resolving webpages, which display Complainant’s marks and products for sale. The Panel thus finds that Respondent has failed to provide a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii). See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”).
Complainant also argues that Respondent uses the disputed domain names to offer products in direct competition with Complainant. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii). See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum February 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use).
The Panel finds that complainant has satisfied Policy ¶4(a)(ii).
Complainant argues that Respondent registered and is using the <h-dstore.com>, <h-d-stars.com>, <harley-riders.net>, and <harley-bikers.net> domain names to disrupt Complainant’s business by creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain names, and to commercially benefit by offering competing goods or services. Using a disputed domain name to trade upon the goodwill of a complainant for commercial gain while disrupting its business is evidence of bad faith under Policy ¶¶ 4(b)(iii)-(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Thus, the Panel finds that Respondent is disrupting Complainant’s business in bad faith under Policy ¶ 4(b)(iii), and attempting to commercially benefit from Complainant’s marks in bad faith under Policy ¶ 4(b)(iv).
Respondent attempt to pass off as Complainant is further evidence of bad faith registration and use. See Target Brands, Inc. v. JK Internet Servs., FA 349108 (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.”).
Complainant further argues that Respondent had knowledge of Complainant’s rights in the H-D and HARLEY marks. Based on Respondent’s use of the disputed domain names, the Panel agrees and finds that Respondent had actual knowledge of Complainant's rights in the marks prior to registering the disputed domain names, bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (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 Panel finds that complainant has satisfied 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 <h-dstore.com>, <h-d-stars.com>, <harley-riders.net>, and <harley-bikers.net> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 22, 2017
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