DECISION

 

H-D U.S.A., LLC v. Belyakov Denis

Claim Number: FA1712001761161

 

PARTIES

Complainant is H-D U.S.A., LLC (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington D.C., USA.  Respondent is Belyakov Denis (“Respondent”), Russia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <harley-davidson.school>, registered with Regional Network Information Center, JSC dba RU-CENTER.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on December 4, 2017; the Forum received payment on December 4, 2017.

 

On December 6, 2017, Regional Network Information Center, JSC dba RU-CENTER confirmed by e-mail to the Forum that the <harley-davidson.school> domain name is registered with Regional Network Information Center, JSC dba RU-CENTER and that Respondent is the current registrant of the name.  Regional Network Information Center, JSC dba RU-CENTER has verified that Respondent is bound by the Regional Network Information Center, JSC dba RU-CENTER 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 7, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 27, 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@harley-davidson.school.  Also on December 7, 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.

 

Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.

 

On January 2, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant:

1.    Since 1903, Complainant has manufactured, advertised, and sold motorcycles under the HARLEY-DAVIDSON trademark and trade name. In addition, Complainant has offered for decades a full array of motorcycle-related products and services under the HARLEY-DAVIDSON mark. Complainant registered the HARLEY-DAVIDSON mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,078,871, registered Dec. 6, 1977). See Compl. Ex. 8. Respondent’s <harley-davidson.school> domain name is identical and confusingly similar to Complainant’s mark as it contains Complainant’s mark in its entirety and adds the generic top-level domain (“gTLD”) “.school.”

2.    Respondent has no rights or legitimate interests in the <harley-davidson.school> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent passes off as Complainant on the resolving webpage to offer competing motorcycle-related services for commercial gain. Compare Compl. Ex. 9 (Respondent’s domain) with Compl. Ex. 5 (Complainant’s domain).

3.    Respondent registered and uses the <harley-davidson.school> domain name in bad faith. Respondent disrupts Complainant’s business by using the domain name to pass off as Complainant and intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant and its famous HARLEY-DAVIDSON mark as to the source, sponsorship, affiliation, and/or endorsement of Respondent’s website and the competing services offered therein. See Compl. Ex. 9. Further, Respondent registered the domain name opportunistically in bad faith after “.school” domain names became available to take advantage of Complainant’s goodwill. Finally, there is no question that Respondent registered the domain name with knowledge of Complainant’s rights in its HARLEY-DAVIDSON mark given the international fame of Complainant’s mark, the explicit references to Complainant’s mark on Respondent’s website, and Respondent’s use of the domain name to advertise competing motorcycle-related services.

 

B.   Respondent:

1.    Respondent failed to submit a response in this proceeding.

 

FINDINGS

1.    Respondent’s <harley-davidson.school> domain name is confusingly similar to Complainant’s HARLEY-DAVIDSON mark.

2.    Respondent does not have any rights or legitimate interests in the <harley-davidson.school.com> domain name.

3.    Respondent registered or used the <harley-davidson.school.com> domain name in bad faith.

 

DISCUSSION

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(f), 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 (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.”).

 

Preliminary Issue: Language of Proceeding

Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language.  After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.

 

Identical and/or Confusingly Similar

Complainant claims to have registered the HARLEY-DAVIDSON mark with the USPTO (e.g. Reg. No. 1,078,871, registered Dec. 6, 1977). See Compl. Ex. 8. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). 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).”). Accordingly, the Panel finds that Complainant has established rights in the HARLEY-DAVIDSON mark for the purposes of Policy ¶ 4(a)(i).

 

Complainant next argues that Respondent’s <harley-davidson.school> domain name is identical and confusingly similar to Complainant’s mark as it contains Complainant’s mark in its entirety and adds the gTLD “.school.” Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See 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). The Panel therefore finds that the <harley-davidson.school> domain name is identical to the HARLEY-DAVIDSON mark under Policy ¶4(a)(i).

 

Rights or Legitimate Interests

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 (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 <harley-davidson.school> domain name.  Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Belyakov Denis / Belyakov Denis” as the registrant. See Compl. Ex. 1. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the HARLEY-DAVIDSON mark. Panels may use these assertions as evidence of lacking rights or legitimate interests. 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). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the disputed domain name prior to its registration, and Complainant has not given Respondent permission to use the disputed domain name. Accordingly, the Panel agrees that Respondent is not commonly known by the <harley-davidson.school> domain name under Policy ¶ 4(c)(ii).

 

Complainant next argues that Respondent also doesn’t use the disputed domain 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 by offering competing services. Passing off as a complainant to offer competing products or services can evince a failure to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. 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).”); see also General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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 provides screenshots of the website associated with its own domain, along with images from Respondent’s disputed domain name, which shows that Respondent employs an almost identical layout, color scheme, design, and displays Complainant’s mark on the resolving webpage. Compare Compl. Ex. 9 with Compl. Ex. 5. Accordingly, the Panel finds that Respondent passes off as Complainant to offer competing goods or services, failing to use the <harley-davidson.school> domain name in connection with 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).

 

Registration and Use in Bad Faith

Complainant argues that Respondent disrupts Complainant’s business by using the domain name to pass off as Complainant and intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant and its famous HARLEY-DAVIDSON mark as to the source, sponsorship, affiliation, and/or endorsement of Respondent’s website and the competing services offered therein. Using a disputed domain name that disrupts a complainant’s business and trades upon the goodwill of a complainant for commercial gain can evince 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 DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website); 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).”). As noted previously, Complainant provides screenshots of the website associated with its own domain, along with images from Respondent’s disputed domain name, which shows that Respondent employs an almost identical layout, color scheme, design, and displays Complainant’s mark on the resolving webpage. Compare Compl. Ex. 9 with Compl. Ex. 5. Accordingly, the Panel agrees that Respondent disrupts Complainant’s business and attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).

 

Additionally, Complainant claims Respondent opportunistically registered the <harley-davidson.school> domain name once the “.school” gTLD became available for registration. A finding of opportunistic bad faith can support a finding of bad faith under Policy ¶ 4(a)(iii). See Arizona Board of Regents, for and on behalf of Arizona State University v. Weiping Zheng, FA1504001613780 (Forum May 28, 2015) (finding that the respondent had acted in opportunistic bad faith according to Policy ¶ 4(a)(iii), when it registered the disputed domain name just one week after the complainant filed applications to register the SUB DEVIL LIFE mark, and just days after those applications became public through the USPTO’s website). Complainant does not provide any information as to when the “.school” gTLD became available to the public. As such, the Panel agrees that Respondent opportunistically registered the domain name, and finds that Respondent registered the domain name in bad faith under Policy ¶ 4(a)(iii).

 

Further, Complainant claims that Respondent had actual knowledge of Complainant’s rights in the HARLEY-DAVIDSON mark at the time of registering the <harley-davidson.school> domain name. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name can evince 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). Complainant contends that Respondent registered the domain name with knowledge of Complainant’s rights in its HARLEY-DAVIDSON mark given the international fame of Complainant’s mark, the explicit references to Complainant’s mark on Respondent’s website, and Respondent’s use of the domain name to advertise competing motorcycle-related services. The Panel agrees with Complainant and find that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <harley-davidson.school> domain name be TRANSFERRED from Respondent to Complainant.

 

John J. Upchurch, Panelist

Dated:  January 15, 2018