H-D U.S.A., LLC v. Nurullah Kömeç
Claim Number: FA1905001842236
Complainant is H-D U.S.A., LLC (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, United States. Respondent is Nurullah Kömeç (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <harleybot.shop>, registered with FBS Inc..
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 8, 2019; the Forum received payment on May 8, 2019.
On May 13, 2019, FBS Inc. confirmed by e-mail to the Forum that the <harleybot.shop> domain name is registered with FBS Inc. and that Respondent is the current registrant of the name. FBS Inc. has verified that Respondent is bound by the FBS Inc. 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 May 14, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 3, 2019 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@harleybot.shop. Also on May 14, 2019, 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 June 7, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
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.
A. Complainant
Since 1903 Complainant has manufactured, advertised, and sold motorcycles, becoming one of the most well-known brands in the industry. Complainant has rights in the HARLEY mark through its registration with the United States Patent and Trademark Office (USPTO) (e.g., Reg. No. 1,352,679 registered Aug. 6, 1985). See Compl. Ex. 10. Complainant further adds that their European Union Trademark (EUTM) shows their rights in the mark in European countries as well (e.g., Reg. No. 000083931, registered Feb. 3, 1999). See Compl. Ex. 11. Respondent’s <harleybot.shop> is confusingly similar to Complainant’s HARLEY mark as the domain name is comprised of Complainant’s HARLEY mark in its entirety, the generic term “bot” (“boot” in Turkish) and the generic-top level domain (gTLD) “.shop.”
Respondent has no rights or legitimate interest in the <harleybot.shop> domain name because Respondent is not commonly known by the disputed domain name. Respondent also fails to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use by offering unauthorized, counterfeit products for sale. Respondent is trying to pass off as Complainant or as a website affiliated with Complainant.
Respondent registered and used the Domain name in bad faith by creating a likelihood of confusion with Complainant and its famous HARLEY mark by selling unauthorized, counterfeit versions of Complainant’s goods. Respondent also disrupts Complainant’s business by offering counterfeit products and unfairly competing with Complainant’s own products. Respondent attempts to pass off as Complainant by displaying Complainant’s products and logo, providing further evidence of bad faith. Lastly, Respondent had knowledge of Complainant’s rights in the HARLEY mark given the international fame of Complainant’s mark and Respondent’s explicit reference to Complainant and Complainant’s marks on the resolving webpage.
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent registered the <harleybot.shop> on September 10, 2018.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s valid and subsisting trademark; that Respondent lacks any rights or legitimate interests in or to the dispute domain name; and that Respondent has engaged in bad faith use and registration of the disputed 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.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Panel finds that the disputed domain name, <harleybot.shop>, is confusingly similar to Complainant’s valid and subsisting trademark, HARLEY. Complainant has adequately plead its rights and interests in and to this trademark. Respondent arrives at the disputed domain name by merely adding “bot” to Complainant’s precise trademark and adding the g TLD, “.shop.” This is insufficient to distinguish the disputed domain name from Complainant’s trademark.
As such, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark.
The Panel additionally finds that Respondent has no rights or legitimate interests in or to the disputed domain name. Respondent has no right, permission or license to register the disputed domain name. Respondent is not commonly known by the disputed domain name. Respondent also fails to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use as it offers unauthorized, counterfeit products for sale. Respondent is trying to pass off as Complainant or a website affiliated with Complainant.
As such, the Panel finds that Respondent has no rights or legitimate interests in for to the dispute domain name.
The Panel also finds that Respondent has engaged in bad faith use and registration of the disputed domain name. Complainant argues that Respondent registered and uses the disputed domain name in bad faith by trying to intentionally attract, for commercial gain, internet users by creating a likelihood of confusion with Complainant. Panels have consistently held that using a domain name to offer or reference a complainant’s products and offer counterfeit versions of a complainant’s products can demonstrate evidence of bad faith per Policy ¶¶4(b)(iii) and/or (iv). See Ontel Products Corporation v. waweru njoroge, FA 1762229 (Forum Dec. 22, 2017) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iii) and (iv) through the respondent’s registration and use of the infringing domain name to reference the complainant’s products and offer competitive and/or counterfeit products). Complainant provides the Panel with a screenshot of the resolving webpage of the disputed domain name that purportedly shows Respondent offering Complainant’s goods and which Complainant claims as counterfeit as Complainant has not authorized Respondent to sell its products. See Compl. Ex. 13. As such, the Panel finds Respondent has engaged in bad faith use and registration of the disputed domain name.
Lastly, given the fame of Complainant’s mark and the totality of the circumstances, the Panel finds that Respondent had actual knowledge of Complainant’s prior rights and interests in the mark, HARLEY. Here, Complainant states that the explicit references to Complainant’s marks and Complainant’s products for sale on the resolving webpage are evidence that Respondent was had knowledge of the Complainant’s rights in the mark. See Compl. Ex. 13. Therefore, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the HARLEY mark, and that registering the <harleybot.shop> was done in bad faith pursuant to Policy ¶ 4(a)(iii).
As such, the Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <harleybot.shop> domain name be TRANSFERRED from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: June 9, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page