H-D U.S.A., LLC v. Malinda Dowling
Claim Number: FA1608001691466
Complainant is H-D U.S.A., LLC (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is Malinda Dowling (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <harley-life.com>, registered with GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 26, 2016; the Forum received payment on August 29, 2016.
On August 29, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <harley-life.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 August 29, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 19, 2016 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 email@example.com. Also on August 29, 2016, 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 September 27, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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.
I. BACKGROUND FACTS
A. Harley and Its Products and Services
Since 1903, Harley has manufactured, advertised, and sold motorcycles under the HARLEY-DAVIDSON trademark and trade name. In addition, Harley has offered for decades a full array of motorcycle parts and accessories, riding gear, apparel, and various other motorcycle-related products and services under the HARLEY-DAVIDSON and HARLEY marks.
The public has long regarded the HARLEY-DAVIDSON and HARLEY marks as synonymous based on the widespread and long-standing use of such terms interchangeably by a wide variety of entities in multiple venues including but not limited to Harley itself (in, for example, publications such as Harley’s annual reports and its magazines); Harley’s authorized dealers (in domain names, website content, and other advertising and promotional activities); consumers (in, for example, online discussions groups and other forums); and diverse media outlets1.0T
Harley has sold many billions of dollars worth of products and services under the HARLEY Marks. For example, in its motorcycles segment, Harley had worldwide revenues in excess of $5,560,000,000 in 2014 and $5,308,000,000 in 2015. Sales of motorcycle parts and accessories comprise a significant portion of Harley’s revenues. For example, Harley had worldwide sales of motorcycle parts and accessories in excess of $875,010,000 in 2014 and $862,645,000 in 2015.
Harley has for years utilized a network of authorized dealers to market its motorcycles and wide array of related products (e.g., riding gear as described further below) and services (e.g., maintenance, rental, and financing services), all offered under the HARLEY Marks. Harley has more than 1,400 authorized dealers in more than 95 countries worldwide, including in the U.S. Harley also sells, through numerous authorized licensees, a wide variety of services and products around the world.
Harley has extensively marketed its products and services under the HARLEY Marks on the Internet since 1996. Harley’s website, which is accessible via many domain names such as H-D.COM and HARLEY-DAVIDSON.COM, advertises and promotes its motorcycles, features extensive information and search tools, and seamlessly connects customers to the websites of authorized HARLEY-DAVIDSON dealers. Harley’s website features an online store where consumers can create and share product wish lists, review products, and place orders for direct delivery or pickup at consumers’ selected authorized HARLEY-DAVIDSON dealers. Harley’s website features special versions for different countries including the U.S., and receives tens of millions of hits each month.
Harley offers, through its online store and its authorized HARLEY-DAVIDSON dealers, an extensive array of riding gear (e.g., helmets, boots, gloves, and apparel) under the HARLEY Marks, including gear for new riders, rain gear, heated gear, cold weather gear, warm weather gear, patriotic gear, and special events gear (e.g, Harley’s “Gear Up for Sturgis 75th” section). As described in Harley’s informational article “How a Dealership Works,” “Motorcycling is a lifestyle and a Harley-Davidson® dealership sells clothing and gear that help people take part in that lifestyle. When you ride a motorcycle, you need the proper gear - jackets, boots, helmet, gloves, etc. - for the maximum amount of comfort. Harley-Davidson offers a full-line of exceptional General Merchandise and Apparel products made specifically for riding, plus a wide selection of casual clothing and merchandise for every day.”
Harley’s casual clothing and fashion apparel products include its highly popular t-shirts, such as the representative samples bearing the HARLEY Marks shown in Exhibits 6 and 17.
Harley owns copyright rights and trademark rights in the skull design shown on the apparel referenced above and depicted in Exhibit 8 (the “Willie G. Skull Design”), which Harley has used for decades for apparel and decals, among other products.
Harley has offered and promoted decals and stickers under the HARLEY Marks as shown in the representative examples in Exhibits 6 and 17, some of which include Harley’s Willie G. Skull Design.
The HARLEY-DAVIDSON mark has long been one of the most recognized and famous brands in the world. Interbrand, one of the world’s leading branding firms, has ranked the HARLEY-DAVIDSON brand in its “Top 100” report for global brands for many years. (See Exhibit 9: excerpts from Interbrand’s 2015 report “Best Global Brands.”) Harley’s HARLEY mark has likewise been famous worldwide for many years based on Harley’s international and widespread use of the HARLEY mark for decades and its significant sales of products and services under the HARLEY mark.
The fame of Harley’s marks has been recognized by many UDRP Panels. See, e.g., H-D v. Zhang Jia Jing , FA1312001533417 (Forum Jan. 3, 2014) (referencing “the international fame of Complainant’s HARLEY mark”); See H-D v. Whois Proxy By Ultra-Domain ,, FA1512001651547 (Forum Jan. 1, 2016) (referencing “the famous HARLEY-DAVIDSON mark”). The fame of Harley’s HARLEY-DAVIDSON and HARLEY marks, for motorcycles, apparel, and accessories in particular, was also acknowledged by the USPTO’s Trademark Trial and Appeal Board in H-D Michigan LLC v. Broehm, 2009 WL 1227921, at *5 (TTAB 2009).
B. The HARLEY and HARLEY-DAVIDSON Marks are Well-known Lifestyle Brands
Harley spends tens of millions of dollars every year to extensively and widely advertise and promote its products and services under the HARLEY Marks. In particular, the HARLEY Marks are well-known worldwide as “lifestyle” brands as a result of Harley’s extensive and long-term marketing of its products through experiential and online activities offered by Harley directly and through Harley’s cooperative programs with its authorized dealers and others.
Customer experiences have traditionally been at the center of much of Harley’s marketing. To attract new customers and maintain its relationship with existing customers, Harley plays a prominent role in motorcycle events around the world such as the Sturgis Motorcycle Rally, the world’s largest annual motorcycle rally in South Dakota that attracts hundreds of thousands of motorcycle enthusiasts year after year. Harley also participates in major motorcycle consumer shows, racing activities, music festivals, mixed martial arts activities, and other special promotional events.
Harley offers, and has offered for many years, many services for consumers to participate in and experience the HARLEY lifestyle, as described in detail below.
Harley operates the HARLEY OWNERS GROUP motorcycle club, also known by the mark H.O.G., which has approximately 1,000,000 members worldwide and is the industry’s largest company-sponsored motorcycle enthusiast organization. Harley’s HARLEY OWNERS GROUP club also sponsors many motorcycle events, including rallies and rides for HARLEY-DAVIDSON motorcycle enthusiasts throughout the world.
Harley offers educational services via its HARLEY-DAVIDSON Riding Academy, which offers a series of rider experiences to provide both new and experienced riders with deeper engagement in the sport of motorcycling by teaching basic and advanced motorcycling skills and knowledge. Since its inception, the HARLEY-DAVIDSON Riding Academy program has trained more than 445,000 riders. Harley’s courses enable students to experience the HARLEY lifestyle, environment, people, and products as they learn, and are conducted by a network of participating authorized HARLEY-DAVIDSON dealerships throughout the U.S. and other countries around the world.
Harley’s HARLEY-DAVIDSON AUTHORIZED TOURS program allows motorcyclists/enthusiasts to experience riding opportunities worldwide. Riders can also rent HARLEY-DAVIDSON motorcycles worldwide from participating dealers through Harley’s Authorized Rentals Program.
Harley operates the HARLEY-DAVIDSON MUSEUM facility in Milwaukee, Wisconsin, a unique destination that builds and strengthens bonds between riders and Harley and enhances the HARLEY-DAVIDSON brand among the public at large.
In addition to its offering of real-world events and services for consumers to experience the HARLEY lifestyle, Harley also maintains highly popular online communities on social media that promote and celebrate the HARLEY lifestyle. For example, Harley’s Facebook page, which has more than 7,218,000 followers, provides an online community for Harley’s customers to share photos and comments regarding their own HARLEY motorcycles and experiences, and thousands upon thousands of customers do so every day. In another example of Harley’s online community activities, in 2013 Harley ran its #HDNaughtyList contest on its Pinterest page that awarded thousands of dollars in gift-card prizes to contestants competing for the most creative Pinterest boards of imagery “showing the Harley lifestyle and gear.” (emphasis added)
C. Complainant’s Trademark Holdings
Complainant owns hundreds of trademark registrations for the HARLEY Marks in countries around the world, including the following representative U.S. registrations:
a. Registration No. 1,352,679 for the mark HARLEY, first used March 28, 1982, filed July 6, 1982, issued August 6, 1985, covering motorcycles in International Class 12.
b. Registration No. 1,406,876 for the mark HARLEY, first used December 1981, filed February 10, 1986, issued August 26, 1986, covering clothing in International Class 25.
c. Registration No. 1,683,455 for the mark HARLEY, first used December 1989, filed December 19, 1989, issued April 14, 1992, covering clothing in International Class 25.
d. Registration No. 1,078,871 for the mark HARLEY-DAVIDSON, first used 1906, filed April 15, 1977, issued December 6, 1977, covering motorcycles in International Class 12.
e. Registration No. 1,450,348 for the mark HARLEY-DAVIDSON, filed October 1, 1986, issued August 4, 1987, covering numerous products including decals in International Class 16 and clothing in International Class 25.
Complainant’s above-listed registrations are sufficient to establish Complainant’s rights in the HARLEY Marks as required by the UDRP. See, e.g., H-D v. Huang Gui , FA1203001433033 (Forum Apr. 19, 2012 ) (“Complainant owns trademark registrations with the USPTO for its HD mark (Reg. No. 2,315,877 registered February 8, 2000) and [its] HARLEY mark ( e.g., Reg. No. 1,352,679 registered August 26, 1986). These registrations are sufficient to demonstrate that Complainant has trademark rights in the subject trademarks.”).
D. Respondent’s Infringing Activities and Bad-Faith Acts
Respondent registered the Domain Name in May 2015, long after Complainant began using the HARLEY Marks; long after Complainant registered its HARLEY Marks in the U.S., and elsewhere; and long after Complainant’s HARLEY Marks became famous worldwide.
Respondent has used the Domain Name for a commercial website that advertised and/or offered directly competing products under the name “Harley Life” displayed in a font similar to one used by Harley, as shown below:
Specifically, Respondent has used the domain name HARLEY-LIFE.COM to direct Internet users to an online store at http://harley-life.myshopify.com that offered t-shirts and decals prominently bearing unauthorized copies of Harley’s famous HARLEY mark and its Willie G. Skull Design marks. Photographs from Respondent’s website showing representative products are shown in Exhibits 6 and Respondent’s website also featured photographs of Respondent’s sale of its products at the Sturgis motorcycle rally that Harley has actively participated in for many years as described above.
The commercial nature of Respondent’s use of the Domain Name is also shown by the solicitation of monetary contributions to Respondent’s company Rider Life Fund on the website associated with the Domain Name. Respondent is the incorporator, registered agent, and an officer of Rider Life Fund. Respondent was also a manager of the related company Rider Life, LLC (“Rider Life”) in 2015 when its application for the mark “Harley Life” was refused by the USPTO as described further below.
Respondent’s website falsely indicated that “Harley Life” is a registered trademark through use of the ® symbol. In fact, the USPTO refused Application No. 86654157 for “Harley Life” filed by Rider Life in June 2015. Specifically, on September 23, 2015, the USPTO issued a likelihood-of-confusion refusal for Rider Life’s application based on several of Harley’s prior registrations for its HARLEY-DAVIDSON and HARLEY-formative marks (e.g., HARLEY OWNERS GROUP) for several reasons including (a) “Applicant’s mark is similar in appearance and sound to the registered marks in that they all share the common first term HARLEY,” and (b) Rider Life’s apparel, decals and stickers, and beverage containers listed on its application were identical, overlapped, or were related to Harley’s products covered by its prior registrations. Rider Life did not challenge the USPTO’s refusal of its application which resulted in abandonment of the application.
II. THE DOMAIN NAME IS CONFUSINGLY SIMILAR TO COMPLAINANT’S MARKS
The Domain Name is confusingly similar to Complainant’s HARLEY mark because it is comprised of Complainant’s mark and a generic or descriptive term (“life”). UDRP Panels have consistently held that the addition of generic or descriptive terms to a mark in a domain name does not distinguish the domain name from that mark, including many cases involving Complainant’s trademarks. UDRP Panels have consistently held that generic TLDs such as “.com” and hyphens (whether added or omitted) are irrelevant to confusing similarity analysis. See, e.g., H-D v. Zhang Jia Jing , FA1312001533417 (Forum Jan. 3, 2014 ) (“Respondent’s <harley-jackets.com> domain name is confusingly similar to Complainant’s HARLEY mark because it is comprised of Complainant’s mark and a generic term (‘jackets’). Respondent’s addition of a generic term to Complainant’s mark is irrelevant to a confusing similarity analysis. . . . UDRP panels have consistently held that both hyphens (whether omitted or added) and gTLD such as ‘.com’ are irrelevant to confusing similarity analysis. Accordingly, Respondent’s addition of a hyphen and a gTLD is inconsequential to a Policy ¶4(a)(i) determination.”); H-D v. Vecvanags, FA1408001576497 (Forum Sept. 23, 2014).
Further, the confusing similarity of the Domain Name to Complainant’s HARLEY mark is heightened by the term “life” because Complainant has long promoted its HARLEY mark as a lifestyle brand for decades as shown above. UDRP Panels have consistently held that the addition of terms relating to the complainant’s business is not sufficient to distinguish the domain name from the complainant’s mark, and many UDRP Panels have held that such domain names in fact heighten the confusing similarity of the domain name to the mark at issue. See, e.g., H-D v. Perfect Privacy , FA1108001403191 (Forum Sept. 26, 2011) (“The disputed domain name [<harley-repair.com>] includes the entire mark while adding the generic-top level domain (‘gTLD’) ‘.com,’ a hyphen, and the generic term ‘repair.’ The Panel finds that the changes made are essentially nil due to the fact that the disputed domain name retains the distinctive nature of the mark and, Internet users may believe that the disputed domain name signifies a legitimate servicer of Complainant’s products when it in fact, is not. Therefore, the Panel finds that Respondent’s <harley-repair.com> domain name is confusingly similar to Complainant’s HARLEY mark under Policy ¶4(a)(i).”); H-D v. Rado , FA1411001592335 (Forum Jan. 6, 2015) (finding the domain name <harleydavidsononline.net> confusingly similar to Complainant’s HARLEY-DAVIDSON trademark because “The addition of a generic or descriptive term, such as ‘online,’ does not sufficiently differentiate a domain name from a trademark, nor does the addition of the top-level domain .net,” and held “Indeed, as contended by Complainant, the addition of the term ‘online’ to the disputed domain name exacerbates the confusion since Complainant also offers goods online.”).
Finally, the Domain Name is also confusingly similar to Complainant’s famous and federally registered HARLEY-DAVIDSON mark because HARLEY is a widely used and recognized shorthand or abbreviation for HARLEY-DAVIDSON as shown above. Many UDRP Panels have held that domain names comprised of a shorthand or abbreviation of a mark are confusingly similar to the mark at issue. See, e.g., H-D v. Geras , FA151000164144 (Forum Nov. 11, 2015) (“Respondent’s <customharley.com> domain name is confusingly similar to the HARLEY-DAVIDSON and HARLEY marks under Policy ¶4(a)(i). The domain name is comprised of HARLEY, Complainant’s HARLEY mark in its entirety and the shorthand of Complainant’s HARLEY-DAVIDSON mark, and the term ‘custom’ that directly relates to Complainant’s custom motorcycle offerings.”); H-D v. Viper Holdings, FA0210000128680 (Forum Dec. 17, 2002 ) (finding the domain name <harleybabes.com> confusingly similar to Complainant’s HARLEY-DAVIDSON mark because “. . . the failure to include the name ‘Davidson’ does not make the disputed domain name any less confusingly similar.”).
III. RESPONDENT HAS NO RIGHTS OR LEGITIMATE INTEREST IN THE DOMAIN NAME
Respondent clearly has no rights or legitimate interest in the Domain Name for the following reasons.
First, Respondent’s registration and use of the confusingly similar Domain Name for a commercial website offering directly competing products does not constitute a bona fide offering of goods or services under UDRP ¶¶4(c)(i) or a legitimate noncommercial or fair use under UDRP ¶¶4(c)(iii). UDRP Panels have consistently held that use of a trademark-related domain name for competing activities does not demonstrate any legitimate interest under the UDRP, including in many cases involving Harley and its marks. See, e.g., H-D v. Werners Car Shop , FA1604001671654 (Forum Jun. 1, 2016) (holding respondent’s use of the domain name <harley-teile.com> to advertise and/or offer of directly competing motorcycle-related products and services does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use); H-D v. Hog Heaven Motorcycles , FA0603000659657 (Forum) (respondent’s use of the domain name <columbusharley.com> for a competing motorcycle-related website does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use); H-D v. Bingham , FA0902001248203 (Forum Apr. 8, 2009) (“. . . Respondent’s registration and use of the Domain Name [<hawaiiharley-davidson.com>] for a commercial website advertising motorcycle rental services that directly compete with Complainant’s rental services neither constitutes a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name under the Policy.”).
Further, Respondent’s use of the Domain Name for a website displaying the name “Harley Life” and advertising/offering competing products that feature Complainant’s HARLEY mark and/or Willie G. Skull Design constitutes “passing off,” in that Respondent is trying to pass off her website as Harley’s website and/or as a website affiliated with or sponsored by Harley. Respondent’s “passing off” activities do not constitute a legitimate interest under the UDRP. See, e.g., H-D v. Zabel , FA1410001585895 (Forum Dec. 1, 2014) (holding respondent’s uses of Complainant’s HARLEY-DAVIDSON MUSEUM mark and Complainant’s logos on its website constitutes passing off, and do not indicate rights or legitimate interests in the domain name <harleydavidsonmuseum.com>).
Respondent has no legitimate interest in the Domain Name under UDRP ¶4(c)(ii). Complainant has not authorized Respondent to use its HARLEY Marks, and Respondent’s use of the name “Harley Life” constitutes “passing off” as described above. Further, Respondent cannot justify her misappropriation of a trademark in a domain name by relying on concurrent infringing use of that same mark in a trade name or logo. As the Panel held in H-D v. Bingham , FA0902001248203 (Forum Apr. 8, 2009):
“The difficulty with Respondent’s position is that he did not have the right, in the first place, to register the [domain name <hawaii-harleydavidson.com>] with full knowledge that it wholly encompassed the Complainant’s trademark and would trade on that mark’s goodwill, without first seeking permission from Complainant. The Respondent’s argument ignores the fact that he did not choose a domain name that was unique, self-standing and independent of any third-party trademark rights.
Choosing such a domain name would have required that the Respondent invest time and money to develop some goodwill and reputation in his chosen business name and the associated domain name, and perhaps register appropriate trademark rights to secure them. Instead, he chose the [domain name <hawaii-harleydavidson.com>] which, due to its confusing similarity with the Complainant’s HARLEY-DAVIDSON trademark, opportunistically took advantage of the Complainant’s goodwill and reputation.”
This is the case here. Respondent “did not choose a domain name that was unique, self-standing and independent of any third-party trademark rights.” Rather, Respondent registered and uses the Domain Name which opportunistically takes advantage of the Complainant’s goodwill and reputation. See also, e.g., CyBerCorp Holdings v. Allman ,, FA0403000244090 (Forum May 14, 2004) (“Respondent’s choice of a business name and domain name incorporating the Complainant’s trademark was made primarily because of the notoriety of Complainant’s mark and/or with complete disregard of Complainant’s trademark rights. Naming oneself with another’s trademark does not legitimatize the use of the name in a domain name. Therefore, Respondent cannot claim rights in the domain name pursuant to Policy ¶4(c)(ii).”).
IV. RESPONDENT’S BAD FAITH UNDER UDRP ¶4(B)
Respondent’s registration and use of the Domain Name squarely meets the grounds of bad faith outlined in the UDRP and UDRP decisions.
First, Respondent’s registration and use of the Domain Name constitute bad faith under UDRP ¶4(b)(iv) because Respondent has used the Domain Name to intentionally attract, for commercial gain, Internet users to her website by creating a likelihood of confusion with Complainant and its famous HARLEY mark as to the source, sponsorship, affiliation, and/or endorsement of Respondent’s website. See, e.g., H-D v. Gulley , FA1303001488608 (Forum Apr. 14, 2013)(holding respondent’s use of the domain name <harleygoodies.com> among others for commercial websites offering competing motorcycle-related products constitutes bad faith under UDRP ¶4(b)(iv) because “. . . Respondent, by using the domain names in issue has intentionally attempted to attract, for commercial gain, internet users to his sites or other on-line locations, by creating likelihood of confusion with Complainant’s marks as to the source of such sites or of the products and/or services offered at such sites . . .” and holding “. . . the parties’ products appear sufficiently related so that, in view of the similarity between the marks and domain names, a likelihood of confusion exists.”); H-D v. Maman , FA1205001444286 (Forum Jun. 20, 2012) (respondent’s use of the domain name <harleymontreal.com> for a commercial website offering competing motorcycle products constitutes bad faith because “Respondent uses the disputed domain name to attract Internet users to its website for its commercial gain, by creating a likelihood of confusion among users as to the possibility of Complainant’s sponsorship of, or affiliation with, that website.”).
Second, Respondent’s registration and use of the Domain Name constitutes bad faith under UDRP ¶4(b)(iii) because Respondent disrupts Complainant’s business by using the Domain Name to advertise and/or offer directly competing products. While Respondent is not a direct competitor of Complainant, the fact that Respondent’s activities are in opposition to Complainant are sufficient to define Respondent as a competitor under the UDRP. See, e.g., H-D v. Werners Car Shop , FA1604001671654 (Forum Jun. 1, 2016) (holding respondent’s use of the domain name <harley-teile.com> to advertise and/or offer of directly competing motorcycle-related products and services constitutes bad faith under UDRP ¶4(b)(iii)); Yahoo! v. N/A , FA1308001517435 (Forum Sept. 27, 2013) (“Complainant asserts that although Respondent may not be a competitor of Complainant, the fact that Respondent’s activities are in opposition to Complainant is sufficient to define Respondent as a competitor under the UDRP. . . The Panel finds that Respondent is disrupting Complainant’s legitimate business, proving bad faith use and registration under Policy ¶4(b)(iii).”).
Third, Respondent’s use of the Domain Name for “passing off” activities constitutes further evidence of Respondent’s bad faith under UDRP ¶¶4(b)(iv) and (4(b)(iii) as well as an independent ground of bad faith under prior UDRP decisions. See, e.g., H-D v. Private Whois Service , FA1006001328876 (Forum July 12, 2010) (“. . . efforts to pass Respondent off as Complainant represent bad faith registration and use [of the domain name <harleydavidsonmotorcyclejackets.com>] for the purposes of Policy ¶4(a)(iii).”).
Finally, there is no question that Respondent registered the Domain Name with knowledge of Complainant’s rights in its HARLEY Marks given the international fame of Complainant’s Marks, Respondent’s use of the Domain Name to offer directly competing products, and Respondent’s unauthorized use of Complainant’s HARLEY mark and Willie G. Skull Design on her products. Registration of a domain name with knowledge of the trademark owner’s rights has been consistently found to constitute bad faith under the UDRP. See, e.g., H- D v. Diamond Point Enterprises , FA1206001451106 (Forum Aug. 6, 2012 ) (“. . . the fame of Complaint’s trademark and the manner of Respondent’s use of the domain name together, and separately, indicate that Respondent was aware of Complainant and its HARLEY-DAVIDSON trademark when Respondent registered and began using the at issue domain name to reference Respondent’s <harleydavidsoncredit.com> website. Therefore, under Policy ¶4(a)(iii), Respondent registered the disputed domain name in bad faith.”); H-D v. Buell, FA0711001106640 (Forum Jan. 2, 2008) (“Respondent’s websites explicitly demonstrate Respondent’s knowledge of Complainant’s marks and the products and services associated therewith. Such knowledge is additional evidence of Respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶4(a)(iii).”).
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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.”).
Complainant H-D Inc., through various subordinate companies, sells, manufactures, and has advertised motorcycles since 1903. Complainant has rights in the HARLEY mark and family of marks from its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,352,679, registered Mar. 28, 1982). Registration of a trademark with a governmental authority (such as the USPTO) adequately demonstrates Complainant’s trademark rights under Policy ¶ 4(a)(i). See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶4(a)(i)] rights even when Respondent lives or operates in a different country.”) and Paisley Park Enters. v. Lawson, FA 384834 (Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶4(a)(i) through registration of the mark with the USPTO). Complainant has rights in the HARLEY mark under Policy ¶ 4(a)(i).
Complainant claims Respondent’s <harley-life.com> domain is confusingly similar to Complainant’s HARLEY mark. Respondent’s domain includes the entire HARLEY mark and differs from the mark through the addition of the gTLD “.com,” a hyphen, and the generic term “life.” A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. See Rackspace US, Inc. v. Russell Harrower, FA 1592005 (Forum Jan. 5, 2014) (holding that the <rackspace.xyz> domain name is identical to the complainant’s RACKSPACE mark, because, “the addition of a generic top-level domain is seen as trivial and non-distinctive for the purposes of this comparison does not lessen in any way the confusing similarity between the disputed domain name and Complainant’s mark.”), see also F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). The presence of punctuation marks, including hyphens, is irrelevant to a Policy ¶ 4(a)(i) analysis. See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"). Adding generic terms to a domain does not adequately differentiate a domain from a mark under a Policy ¶4(a)(i) analysis. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). Respondent’s <harley-life.com> domain is confusingly similar to Complainant’s mark.
The Panel finds Policy ¶ 4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 claims Respondent does not have a legitimate interest in the domain under Policy ¶4(c)(ii). One of the initial inquiries is whether Respondent has been commonly known by the disputed domain. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information associated with the domain identifies Respondent as, “Malinda Dowling,” which does not appear to resemble the domain name in any way whatsoever. It seems obvious Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant claims Respondent is not using the domain for (i) a bona fide offering of goods or services or (ii) a legitimate noncommercial or fair use. Respondent’s domain resolves to a website offering for sale an assortment of t-shirt designs using the HARLEY mark. Complainant sells similar products using its HARLEY marks. Using another’s mark in a domain to sell competing goods does not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007) (finding that the use of the disputed domain name to operate a website displaying links to competing goods and services was not 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)). Respondent has no rights to the disputed domain name under Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
The Panel finds Policy ¶ 4(a)(ii) satisfied.
Complainant claims Respondent’s attempt to sell competing products disrupts Complainant’s business under Policy ¶ 4(b)(ii). Respondent’s domain resolves to a website where users may buy shirts which appear to include a counterfeit HARLEY mark. It appears Respondent is trying to pass itself off as selling genuine Harley trademarked goods. A respondent disrupts a complainant’s business where a confusingly similar domain is used to sell counterfeit competing products. See CWC Direct LLC v. Ju Yu, FA1501001599464 (Forum Feb. 16, 2015) (“As Respondent is using the disputed domain name to sell counterfeit or unauthorized goods bearing the COLDWATERCREEK mark, the Panel finds evidence of Respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶4(b)(iii).”). Respondent registered and uses the domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant claims Respondent’s use of a confusingly similar domain to sell competing products shows a bad faith attempt to confuse and attract internet users for commercial gain. As shown above, Respondent’s domain sells counterfeit goods displaying the HARLEY mark. Bad faith has been found under the Policy where a respondent profited from use of another’s mark. See Clark Equipment Company v. Namase Patel / Mumbai Domains, FA1406001566288 (Forum July 30, 2014) (“The Panel observes that the Respondent’s disputed domain name leads to a website that features links to products that directly compete with Complainant’s products. The Panel determines that Respondent is attempting to mislead consumers as to Complainant’s affiliation with the disputed domain name, and Respondent likely profits from the resulting confusion. Therefore, the Panel finds evidence of bad faith pursuant to Policy ¶4(b)(iv).”). Respondent registered and uses the domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant claims Respondent had actual knowledge of Complainant's rights in the HARLEY marks. Complainant’s marks are famous. Respondent is using Complainant’s mark in the same stream of commerce, namely motorcycles. See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name"). When Respondent tried to register “Harley Life” mark with the USPTO, the registration was rejected on September 23, 2015 because it was confusingly similar to Complainant’s mark. While that occurred after Respondent registered the disputed domain name, this Panel nevertheless finds Respondent had actual knowledge of Complainant’s mark when she registered the disputed domain name on May 5, 2015.
The Panel finds Policy ¶ 4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <harley-life.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, October 10, 2016
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