H-D U.S.A., LLC v. Gordon Smith
Claim Number: FA1803001776446
Complainant is H-D U.S.A., LLC (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is Gordon Smith (“Respondent”), North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <firstflighthd.com>, <firstflighthd.net>, <firstflighthd.org>, <firstflighthd.info>, <firstflightharley.com>, <firstflightharley.net>, <firstflightharley.org> and <firstflightharley.info>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 16, 2018; the Forum received payment on March 16, 2018.
On March 19, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <firstflighthd.com>, <firstflighthd.net>, <firstflighthd.org>, <firstflighthd.info>, <firstflightharley.com>, <firstflightharley.net>, <firstflightharley.org> and <firstflightharley.info> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 March 20, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 9, 2018 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@firstflighthd.com, postmaster@firstflighthd.net, postmaster@firstflighthd.org, postmaster@firstflighthd.info, postmaster@firstflightharley.com, postmaster@firstflightharley.net, postmaster@firstflightharley.org, and postmaster@firstflightharley.info. Also on March 20, 2018, 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 April 12, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant manufactures and markets motorcycles and related goods and services using its HD and HARLEY marks.
Complainant holds registrations for the trademark H-D, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 1,239,313, registered May 24, 1983, most recently renewed as of January 26, 2013, and for the trademark HARLEY, which is on file with the USPTO as Registry No. 1,352,679, registered August 6, 1985, most recently renewed as of May 20, 2015.
Complainant has for decades permitted its authorized dealers to use trade names and domain names comprised in part of one of its marks to identify their dealerships and the products and services they offer under those marks.
Complainant’s authorized dealers’ trade names and domain names are frequently comprised of one of Complainant’s marks plus the dealer’s name (e.g., a surname, an arbitrary term), and/or (b) a geographic term (such as the city or town) identifying the dealer’s location.
As a result of this long-established naming convention, persons encountering domain names consisting of Complainant’s trademarks in conjunction with another name or term will believe that the corresponding website is for an authorized dealer of Complainant.
Respondent was once an employee of one of Complainant’s authorized dealers in North Carolina.
In 2017 Respondent became aware of its employer’s intention to adopt the name “First Flight Harley Davidson” for a new retail location.
Immediately after his termination of employment by that dealership, Respondent registered all of the domain names <firstflighthd.com>, <firstflighthd.net>, <firstflighthd.org>, <firstflighthd.info>, <firstflightharley.com>, <firstflightharley.net>, <firstflightharley.org> and <firstflightharley.info> on October 24, 2017.
The domain names are confusingly similar to Complainant’s H-D and HARLEY trademarks.
Complainant has not licensed or otherwise authorized Respondent to use its marks in any fashion.
Respondent has not been commonly known by any of the domain names.
Respondent is not using the domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use.
Instead, Respondent passively holds the domain names by either resolving them to a website displaying the message “coming soon!” or to parked webpages hosted by the registrar.
Respondent does not have rights to or legitimate interests in the domain names.
Respondent’s use of the domain names disrupts Complainant’s business.
Respondent has established a pattern of bad faith registrations of domain names by registering multiple offending domain names in the present case.
Respondent registered the domain names with full knowledge of Complainant’s rights in its H-D and HARLEY marks.
Respondent registered and is using the domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are each confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of any of the domain name; and
(3) the same domain names were registered and are being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable allegations and inferences set out in the Complaint unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Complainant has rights in the H-D and HARLEY trademarks sufficient for purposes of ¶ 4(a)(i) by reason of its registration of those marks with a national trademark authority, the USPTO. See, for example, BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (finding that a UDRP Complainant’s registration of a mark with the USPTO adequately proves its rights in that mark for purposes of Policy ¶ 4(a)(i)).
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that each of Respondent’s domain names, <firstflighthd.com>, <firstflighthd.net>, <firstflighthd.org>, <firstflighthd.info>, <firstflightharley.com>, <firstflightharley.net>, <firstflightharley.org> and <firstflightharley.info>, is confusingly similar to one of Complainant’s H-D and HARLEY marks. Each of the domain names contains one of the marks in its entirety, with only the addition of the descriptive term “firstflight,” which relates to one of Complainant’s authorized dealerships, plus one of the generic Top Level Domains (“gTLD’s”) “.com,” “.net,” “.org,” or “.info.” These alterations of the marks, made in forming the domain names, do not save them from the realm of confusing similarity under the standards of the Policy. See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding, under Policy ¶ 4(a)(i), that the addition of the generic term “finance,” which described a UDRP complainant’s financial services business, as well as a gTLD, to that complainant’s mark in creating a domain name did not sufficiently distinguish the domain name from that mark).
Under Policy 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the <firstflighthd.com>, <firstflighthd.net>, <firstflighthd.org>, <firstflighthd.info>, <firstflightharley.com>, <firstflightharley.net>, <firstflightharley.org> and <firstflightharley.info> domain names, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See, for example, Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain names. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec.r 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c) (i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <firstflighthd.com>, <firstflighthd.net>, <firstflighthd.org>, <firstflighthd.info>, <firstflightharley.com>, <firstflightharley.net>, <firstflightharley.org> and <firstflightharley.info> domain names, and that Complainant has not licensed or otherwise authorized Respondent to use the H-D or HARLEY marks. Moreover, the pertinent WHOIS information identifies the registrant of the domain names only as “Gordon Smith,” which does not resemble any of the domain names. On this record, we conclude that Respondent has not been commonly known by the disputed domain names so as to have acquired rights to or legitimate interests in them within the ambit of Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by the <chevron-europe.com> domain name where the relevant WHOIS information identified its registrant only as “Fred Wallace.” See also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that all of the challenged domain names resolve to websites that lack any substantive content. In the circumstances described in the Complaint, Respondent’s active use of the domain names evidences a failure to make a bona fide offering of goods or services by means of them under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of them under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain names as provided in those subsections of the Policy. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004):
Respondent is wholly appropriating Complainant’s mark and is not using the … domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
It is plain from the record that Respondent knew of Complainant and its rights in the HD and HARLEY marks when it registered the <firstflighthd.com>, <firstflighthd.net>, <firstflighthd.org>, <firstflighthd.info>, <firstflightharley.com>, <firstflightharley.net>, <firstflightharley.org> and <firstflightharley.info> domain names. This evidences Respondent’s bad faith in registering these domain names. See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting a respondent's contention that it did not register a disputed domain name in bad faith where a panel found that that respondent had knowledge of a UDRP complainant's rights in a mark when registering a confusingly similar domain name).
Moreover, Policy ¶ 4(b)(ii) condemns as demonstrating bad faith in the registration and use of a domain name the registration of domain names showing a pattern aimed at preventing a mark owner from reflecting its mark in a domain name of its own. In this instance, Respondent has employed both of Complainant’s H-D and HARLEY marks in a total of eight domain names each paired to one of the gTLD’s “.com,” “.net,” “.org,” or “.info.” This is as clear a demonstration of broad gauge domain name blocking as can be imagined. We therefore conclude that Respondent’s registration and use of the domain names <firstflighthd.com>, <firstflighthd.net>, <firstflighthd.org>, <firstflighthd.info>, <firstflightharley.com>, <firstflightharley.net>, <firstflightharley.org> and <firstflightharley.info>, as alleged in the Complaint, is in bad faith as squarely within the compass of Policy ¶ 4(b)(ii).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the domain names <firstflighthd.com>, <firstflighthd.net>, <firstflighthd.org>, <firstflighthd.info>, <firstflightharley.com>, <firstflightharley.net>, <firstflightharley.org> and <firstflightharley.info> be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 18, 2018
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