WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

H-D U.S.A., LLC v. Queensland Performance Pty Ltd aka Shadex Industries P/L

Case No. DAU2014-0038

1. The Parties

The Complainant is H-D U.S.A., LLC of Milwaukee, Wisconsin, United States of America, represented by Baldwins Intellectual Property, New Zealand.

The Respondent is Queensland Performance Pty Ltd aka Shadex Industries P/L of Molendinar, Queensland, Australia, self-represented.

2. The Domain Names and Registrar

The disputed domain names <harleydavidsonaustralia.net.au> and <harleydavidsons.net.au> (the “Domain Names”) are registered with Web Address Registration Pty Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2014. On December 15, 2014, the Center transmitted by email to Web Address Registration Pty Ltd a request for registrar verification in connection with the disputed domain names. On December 16, 2014, Web Address Registration Pty Ltd transmitted by email to the Center its verification response confirming the Respondent as the registrant and providing contact details.

The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on December 30, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 19, 2015. The Respondent sent an email to the Center on January 21, 2015 indicating that it had considered to have responded on January 6, 2015 (received by the Center in relation to a pending dispute under the Uniform Domain Name Dispute Resolution Policy (“UDRP”), as it did not realize it was involved in more than one proceeding.

The Center appointed David Stone as the sole panelist in this matter on January 29, 2015. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is famous for its motorcycles across the world, including in Australia. Illustratively, the Complainant’s brand has been named number 87 on the “Best Global Brands 2014” list by Interbrand. The Complainant has sold billions of dollars of products, and continues to do so.

The Complainant has numerous registered trademarks in different jurisdictions across the world, including the following registered in Australia:

- HARLEY-DAVIDSON (Registered from August 23, 1968)

- HARLEY-DAVIDSON MOTOR CYCLES (Registered from November 6, 1980)

- HARLEY (Registered from April 10, 1984)

- HARLEY OWNERS GROUP (Registered from August 1, 1989).

These trademarks are for motorcycles and related accessories and services.

The Respondent is in the business of selling motorcycles; as such, the parties are competitors. The Domain Names were registered in May 2014 and both resolve to a website at “www.harleydavidsonaustralia.net.au” promoting the sale of used Harley Davidson Motorcycles.

The Respondent is in procedural default having not met the deadline of the January 19, 2015 to respond to the Complaint and the Notification of Commencement of the Proceeding. As the Respondent was informed by email by the Center on the January 22, 2015, it is in the Panel’s discretion whether to admit any late submissions.

The Respondent claimed in an email to the Center dated January 21, 2015 that it thought it had already replied to the Complaint by virtue of its reply in H-D U.S.A., LLC v. After Hours Home Physio a.k.a. Shadex Industries P/L a.k.a. Queensland Performance Pty Ltd, WIPO Case No. D2014-2168. That email also included some brief submissions. Out of an abundance of caution, the Panel reviewed the decision in that case and finds that, whilst the Respondent’s submissions in that case is not admissible in this proceeding, even if the Panel were to take into account in this case the Respondent’s submissions in that case, they would make no difference to the outcome. The Panel does not admit the late submissions included in the email either, which would also have not made any difference to the outcome.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Domain Names reproduce in entirety, or are confusingly similar to, its trademarks.

The Complainant therefore concludes that the Respondent has no rights or legitimate interests in either of the Domain Names.

The Complainant asserts that it either sells its goods directly, or through authorized dealers. The Complainant states that the Respondent “is not affiliated, sponsored, endorsed, approved or licensed by the Complainant”.

The Complainant states that the Domain Names have been registered and used in bad faith, in particular that its use of the Domain Names amounts to a misrepresentation to consumers in the course of trade, in a manner which interferes with the Complainant’s business.

The Complainant alleges that the Respondent knew of the Complainant’s trademarks, and submits that this is demonstrated by the Respondent’s website which refers both to the Complainant and to its marks.

The Complainant requests that the Domain Names be transferred to it.

B. Respondent

As noted above, the Respondent did not reply in accordance with the time limit of January 19, 2015. In an email to the Center of January 21, 2015 the Respondent set out its position.

The Respondent’s submissions rely in essence on two statements. First, that the Domain Names reflect its business, as it only sells Harley Davidsons. Secondly, the Respondent asserts that if the Complainant wanted the Domain Names, it should have acquired them for itself.

As noted above, the Panel declines to admit these submissions. Even if they had been admitted, however, they would not have assisted the Respondent.

6. Discussion and Findings

Paragraph 4(a) of the Policy sets out the three requirements that the Complainant must prove in order to succeed:

(i) that the Respondent’s Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Names; and

(iii) that the Domain Names has been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Complainant provided evidence that it has registered the relevant trademarks in Australia. From the evidence provided, the Panel finds that the trademarks are well known in Australia, at least in relation to motorcycles.

Taking each of the domain names in turn:

1. <harleydavidsons.net.au> involves the removal of a hyphen and pluralization of the HARLEY-DAVIDSON trademark. The removal of a hyphen and adding an “s” is here insufficient to distinguish the domain name from the trademark.

2. <harleydavidsonaustralia.net.au> involves adding “australia” and removing a hyphen from the trademark. Again the removal of the hyphen and the addition of a geographic description does not remove the confusing similarity.

The Panel finds that the Complainant has satisfied the condition set out in Policy, paragraph 4(a)(i), and that the Domain Names are confusingly similar to the Complainant’s trademarks.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the criteria which determine whether a domain name proprietor has rights or legitimate interests in a domain name, namely if it has a:

(i)Prior bona fide offering of goods or services;

(ii) Common association with the Domain Names; or

(iii) Legitimate noncommercial use.

The Complainant asserts that diverting custom from the holder of the mark by using the mark for commercial gain is not a bona fide use of the mark. The Complainant states that the Respondent has never been commonly known by these names, and directs the Panel to the names of the companies which own and registered the Domain Names, namely “Queensland Performance Pty Ltd” and “Shadex Industries Ltd”. The Panel also notes in this regard that the address listed in the “Contact Us” section of both webpages lists “QualityHarleys.com” as the first identifying information. The Complainant alleges that the Respondent uses the Domain Names to advertise and promote its business, and thus the use is commercial.

The Respondent claims that the Domain Names are merely descriptive of its business, and that it acquired the Domain Names fairly, and further that the Domain Names could have been acquired by the Complainant earlier had it so wished.

The Panel agrees with the Complainant. The Respondent has not had a bona fide use, is not commonly associated with the Domain Names, and has not demonstrated a legitimate noncommercial use of them.

The Panel finds that the Respondent has no rights or legitimate interests in the Domain Names.

C. Registered or Subsequently Used in Bad Faith

Paragraph 4(b) sets out the criteria for bad faith. Bad faith constitutes the intention to register or use a domain name in order to:

(i) sell, rent, or transfer the domain name to the trademark owner (or a competitor thereof) for a profit;

(ii) prevent the trademark owner from registering its trademark in a domain name;

(iii) in order to disrupt the business of a competitor; or

(iv) to divert Internet traffic for commercial gain.

The Complainant alleges that the Respondent uses the Domain Names to advertise and promote its business. It states that the Respondent is intentionally creating a likelihood of confusion between the Domain Names and the Complainant’s trademarks to facilitate this. The Complainant asserts that the Respondent knew of the Complainant’s trademarks, and despite this was using them to promote its own business, as is clear from the website content. Such knowledge is additional evidence of Respondent’s bad faith registration”.

The Panel finds that the Respondent was aware of the Complainant’s trademarks, and that the trademarks were well known at the time of the registration of the Domain Names. This alone has been sufficient for previous UDRP panels to make a finding of bad faith (Playboy Enterprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768; The Nasdaq Stock Market, Inc. v. Vidudala Prasad, WIPO Case No. D2001-1493; SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092).

The Panel finds that the Respondent is intentionally using the Domain Names in an attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of its website.

In this respect, the Panel also notes that under the well-accepted Uniform Domain Name Dispute Resolution Policy jurisprudence stemming from the Oki Data case(Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903), in some cases a reseller of goods may register trademark-containing domain names without running afoul of the Policy. The Panel notes several factors which negate any reliance the Respondent may place in such Oki Data principles; namely (i) the Respondent is an unauthorized reseller, and (ii) the Respondent is in a sense seeking to “corner the market”, or at least register and use a number of domain names containing the Complainant’s mark, and none of which correspond to the Respondent’s business identity, but which in the Panel’s view seek to unfairly capitalize on the fame of the Complainant’s mark to the Respondent’s benefit.

The Panel finds that the criterion in Policy, paragraph 4(b)(iv) is made out.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <harleydavidsons.net.au> and <harleydavidsonaustralia.net.au>, be transferred to the Complainant.

David Stone
Sole Panelist
Date: February 12, 2015