H-D Michigan, LLC v. hayley Ross
Claim Number: FA0903001250712
Complainant is H-D
Michigan, LLC (“Complainant”), represented by David M. Kelly of Finnegan, Henderson, Farabow, Garrett &
Dunner, L.L.P., Washington, D.C., USA.
Respondent is hayley Ross (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <harley-davidsonjacket.com>, registered with Godaddy.com, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically March 5, 2009; the National Arbitration Forum received a hard copy of the Complaint March 6, 2009.
On March 6, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <harley-davidsonjacket.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On March 12, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 1, 2009, by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 9, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <harley-davidsonjacket.com>, is confusingly similar to Complainant’s HARLEY-DAVIDSON mark.
2. Respondent has no rights to or legitimate interests in the <harley-davidsonjacket.com> domain name.
3. Respondent registered and used the <harley-davidsonjacket.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, H-D Michigan, LLC, holds 850 trademark registrations in more than 75 countries around the world for the HARLEY-DAVIDSON mark, including with the United States Patent and Trademark Office (“USPTO”) (i.e. Reg. No. 1,078,871 issued December 6, 1977). Complainant has provided motorcycles and related products, such as apparel, bearing the HARLEY-DAVIDSON mark since 1906.
Respondent registered the disputed <harley-davidsonjacket.com> domain name July 27, 2008. The disputed domain name resolves to a website that sells counterfeit HARLEY-DAVIDSON clothing and displays Complainant’s mark and logo.
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."
Given 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(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel 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 (Nat. Arb. 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.”).
Paragraph 4(a) of the Policy requires Complainant to 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.
The Panel finds that
Complainant’s evidence of the registration of the HARLEY-DAVIDSON mark with the
USPTO confers rights in the mark upon Complainant for the purposes of Policy ¶
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).
See Jerry Damson, Inc. v.
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant asserts that Respondent lacks rights and
legitimate interests in the disputed domain name. The Panel finds that Complainant has set
forth a sufficient prima facie case
supporting this allegation, and the burden shifts to Respondent to show rights
or legitimate interests in the domain name.
See SEMCO Prods., LLC v. dmg world
No evidence in the
record suggests that Respondent is commonly known by the disputed domain
name. The WHOIS information lists
Respondent as “hayley Ross.” Complainant did not allege any right to or
permission on behalf of Respondent to use Complainant’s mark in any
fashion. The Panel therefore finds that
Respondent is not commonly known by the disputed domain name under Policy ¶
4(c)(ii) and has failed to show rights in the domain name. See M. Shanken Commc’ns v.
WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding
that the respondent was not commonly known by the <cigaraficionada.com>
domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other
evidence in the record); see also
Complainant alleges that Respondent is using the disputed domain name
to sell counterfeit versions of Complainant’s products, and that such use
competes with Complainant’s retail business.
Moreover, Respondent is utilizing Complainant’s marks and logos to
enhance the probability of online sales, in that Internet users may perceive
Respondent to be Complainant. This
confusion is created by Respondent’s attempt to pass itself off as
Complainant. Complainant has submitted
evidence of consumer confusion regarding the source of the goods and the
disputed domain name. The Panel finds
that this use fails to 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).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Respondent registered and is using a confusingly similar domain name to divert Internet users seeking Complainant’s products to a website that offers counterfeit versions of products bearing Complainant’s protected mark. The disruptive impact of this activity to Complainant’s business is clear, and, therefore, the Panel finds that Respondent engaged in bad faith registration and use under Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Complainant also asserts that Respondent used Complainant’s mark for commercial benefit in violation of Policy ¶ 4(b)(iv). The Panel agrees, and notes that Respondent’s display of Complainant’s marks and logos are intended to create a likelihood of confusion as to Complainant’s endorsement or affiliation with the disputed domain name and resolving website. This activity bears the hallmarks of Respondent’s passing itself off as Complainant to offer counterfeit goods to unsuspecting Internet users. The Panel therefore finds that Respondent engaged in bad faith registration and use under Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark); see also Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
The Panel finds that Complainant satisfied the elements of ICANN 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 <harley-davidsonjacket.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 23, 2009.
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