national arbitration forum




H-D U.S.A., LLC v. linchunming / linchunming

Claim Number: FA1411001589214



Complainant is H-D U.S.A., LLC (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA.  Respondent is linchunming / linchunming (“Respondent”), China.



The domain name at issue is <>, registered with eName Technology Co. Ltd.



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.


Paul M. DeCicco, as Panelist.



Complainant submitted a Complaint to the National Arbitration Forum electronically on November 10, 2014; the National Arbitration Forum received payment on November 10, 2014. The Complaint was submitted in both English and Chinese.


On November 10, 2014, eName Technology Co.,Ltd. confirmed by e-mail to the National Arbitration Forum that the <> domain name is registered with eName Technology Co.,Ltd. and that Respondent is the current registrant of the name.  eName Technology Co.,Ltd. has verified that Respondent is bound by the eName Technology Co.,Ltd. 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 November 12, 2014, the Forum served the Chinese language Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 2, 2014 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  Also on November 12, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.


On December 12, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco as Panelist.


Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 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.


Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, concludes that the remainder of the proceedings may be conducted in English.



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



A. Complainant

Complainant contends as follows:


Complainant has registered the HARLEY mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,352,679, registered Aug. 6, 1985). Complainant uses the HARLEY mark in connection with its motorcycles and related accessories and apparel, including jackets among other goods. The <> domain name is confusingly similar to the HARLEY mark as it is comprised of Complainant’s mark, the generic term “top,” and the indistinctive generic top-level domain “.com.”


Respondent is not commonly known by the disputed domain name, as demonstrated by the WHOIS information. Further, Respondent is not a licensee or authorized dealer of Complainant. Respondent uses the disputed domain name to offer counterfeit products bearing the HARLEY and HARLEY-DAVIDSON brand. Respondent’s attempt to pass itself off as Complainant and sell counterfeit goods amounts to neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the domain name.


Respondent’s bad faith is demonstrated in three parts, all relating to Complainant’s attempts to sell counterfeit HARLEY goods through the <> domain name and resolve website. First, Respondent’s counterfeiting disrupts Complainant’s own operations. Second, Respondent’s efforts to pass itself off as Complainant under the guise of counterfeit HARLEY goods creates user confusion from which Respondent commercially gains. Third, Respondent’s use of the disputed domain name in connection with counterfeit goods removes any doubt that Respondent registered the disputed domain name with Complainant in mind.


B. Respondent

Respondent failed to submit a Response in this proceeding.



Complainant has rights in the HARLEY mark through its registration of such mark with the USPTO.


Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.


Respondent registered the at‑issue domain name after Complainant acquired rights in the HARLEY trademark.


Respondent uses the at-issue domain name to address a website promoting and selling counterfeit goods mimicking goods offered by 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.


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(e), 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 (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.”).


Identical and/or Confusingly Similar

The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.


Complainant’s ownership of USPTO trademark registrations for the HARLEY trademark demonstrates its rights in such mark for the purposes of Policy ¶4(a)(i). Complainant’s rights exist notwithstanding that Respondent may operate outside the jurisdiction of the trademark’s registrar. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also, Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).


Respondent forms the at-issue domain name by prefixing Complainant’s HARLEY trademark with the generic terms “top” and then appending the top-level domain name “.com” to the resulting string. These alterations to Complainant’s HARLEY trademark are insufficient to distinguish the at-issue domain name from Complainant’s trademark for the purposes of the Policy. Therefore, the Panel finds that the <> domain name is confusingly similar to Complainant’s HARLEY mark pursuant to Policy ¶4(a)(i).  See Cargill, Incorporated v. Domain Privacy Grp., FA 1501652 (Nat. Arb. Forum Jul. 5, 2013) (determining that the disputed domain name, which contains the complainant’s mark, along with two generic terms and a generic top-level domain, is the equivalent of the mark itself for the purposes of Policy ¶ 4(a)(i)).


Rights or Legitimate Interests

Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.


Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.


WHOIS information for the at-issue domain name lists “linchunming” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).


Furthermore, Respondent uses the <> domain name to address a website promoting counterfeit products; in particular HARLEY branded jackets mimicking those offered by Complainant. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See, e.g., Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name).


Given the forgoing, Complainant satisfies its initial burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.


Registration and Use in Bad Faith

The domain name was registered and used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.


As mentioned above, Respondent uses the domain name to promote counterfeit goods like those offered by Complainant. Doing so disrupts Complainant’s business and demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iii). See Juicy Couture, Inc. v. Chinasupply, FA 1222544 (Nat. Arb. Forum Oct. 13, 2008) (holding that the selling of counterfeit versions of a complainant’s products disrupted the complainant’s business and is evidence of bad faith registration and use).


Additionally, Respondent uses the confusingly similar <> domain name to capitalize on the goodwill affiliated with Complainant’s HARLEY mark to drive Internet traffic to the <> website where Respondent may then pass off counterfeit HARLEY branded goods to wayward visitors. Respondent desires to trade off the confusion caused by the HARLEY bearing domain name which leads Internet users searching for Complainant’s products to inadvertently land on Respondent’s <> website. These circumstances demonstrate Respondent’s bad faith pursuant to Policy ¶ 4(b)(iv). See Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products); see also, H-D v. Dunajevs (NAF FA1302001486359) ("Respondent uses the confusingly similar <> domain name to divert Internet users seeking Complainant to Respondent’s website, where it sells counterfeit H-D goods. This diverts commercial gain from Complainant to Respondent and disrupts Complainant’s business. Respondent is in clear violation of both Policy ¶ 4(b)(iii) and ¶ 4(b)(iv).")


Finally, Respondent registered the <> domain name knowing that Complainant had trademark rights in the HARLEY mark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s use of the HARLEY trademark as wells as Complainant’s federally registered HARLEY-DAVIDSON MOTOR CLOTHES AN AMERICAN LEGEND logo on the <>. Given the forgoing, it is clear that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering 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 <> domain name be TRANSFERRED from Respondent to Complainant.



Paul M. DeCicco, Panelist

Dated:  December 22, 2014





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