WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

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

Case No. D2014-2168

1. The Parties

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

The Respondent is After Hours Home Physio a.k.a. Shadex Industries P/L a.k.a. Queensland Performance Pty Ltd of Queensland, Australia.

2. The Domain Names and Registrar

The disputed domain names <harleyaustralia.com> and <harleydavidsons.co> (the “Disputed Domain Names”) are registered with Crazy Domains FZ-LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2014. On December 12, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On December 16, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform 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 proceedings commenced on December 19, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 8, 2015. Email communications were received from the Respondent on January 5 and 6, 2015. The Respondent did not submit any formal response by the Response due date.

The Center appointed Nick J. Gardner as the sole panelist in this matter on January 21, 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

There is little, if any, dispute about the key facts which can be summarized as follows.

The Complainant manufactures and sells motorcycles. It also carries out a range of associated activities such as the manufacture and sale of spares and accessories. The Complainant’s motorcycles are commonly referred to as either “Harley-Davidsons” or “Harleys”. The Complainant’s business has been carried on since 1903. Its business started in the U.S. and has expanded internationally and is carried on in many countries throughout the world, including Australia. Harley-Davidson motorcycles are extremely well known especially amongst motorcycle enthusiasts. The Complainant owns a large number of trade marks in respect of the words “Harley-Davidson” and “Harley” including for example Australian registered trade mark 221756 in respect of the words HARLEY-DAVIDSON which was applied for on the 23 August 1968. The Complainant’s registered trade marks in the U.S. date back to 1947 and in Australia to 1968. The Complainant has imported and sold its motorcycles in Australia since a date at some time in the 1960s.

The Complainant utilises a network of authorised dealers to market its products and services. Sales of its products and services are made through individual authorised dealers and through their respective websites. The Complainant has more than 1,500 authorised dealers throughout the world including over 40 in Australia.

HARLEY-DAVIDSON and HARLEY are widely recognised brands in the world. Interbrand, an independent branding firm, has ranked HARLEY-DAVIDSON in its “Top 100 Global Brands” for many years – including in 2014.

The Complainant’s worldwide revenue was in the region of USD 5,955,384,000 in 2008; USD 4,781,909,000 in 2009; USD 4,859,336,000 in 2010; USD 5,311,713,000 in 2011; USD 5,580,506,000 in 2012; and USD5,899,872,000 in 2013.

The Complainant has promoted its products and services on the Internet since at least 1996. It owns and operates its primary domain name and corresponding website at <harley-davidson.com>, which has different versions for different countries. It also has numerous other domain names.

The Respondent operates a business importing and selling used Harley-Davidson motorcycles in Australia. The Respondent registered the Disputed Domain Names on May 27, 2012. The Disputed Domain Name <harleyaustralia.com> automatically redirects to <harleydavidsonaustralia.net.au>, which is owned by the Respondent. The Disputed Domain Name <harleydavidsons.co> does not presently redirect or resolve to any website. The web site at “www.harleydavidsonaustralia.net.au” is used by the Respondent to promote its business which is carried on under the trading name or style of “Quality Harleys” importing and selling Harley-Davidson motorcycles. The Respondent is not an authorised Harley-Davidson importer, distributor or dealer. The Respondent is not affiliated, sponsored, endorsed, approved or licensed by the Complainant.

The motorcycles offered for sale by the Respondent are genuine used Harley-Davidson motorcycles. The Respondent’s website at “www.harleydavidsonaustralia.net.au” contains on the home page a disclaimer which reads “Disclaimer: Quality Harleys are not authorised Harley Davidson Agents”. It is necessary to scroll down to see the disclaimer but it then appears reasonably prominently with the word “disclaimer” in a contrasting font colour and with the remainder of the text italicized.

The Respondent has also registered the following Australian and New Zealand domain names, which the Complainant is currently contesting through the Center under the auDRP, and the New Zealand Domain Name Commission Dispute Resolution Service procedure, respectively: <harleydavidsonaustralia.net.au> and <harleydavidsons.net.au> in Australia; and <harleydavidsons.co.nz> and <harleysforsale.co.nz> in New Zealand.

The Respondent also owns the domain name <qualityharleys.com>. That domain name redirects to <harleydavidsonaustralia.net.au>. The <qualityharleys.com> domain name is not the subject of the present Complaint nor, so far as the Panel is aware, of any other complaint.

The Complainant has in correspondence requested the Respondent to cease its use of the Disputed Domain Names. The Respondent has refused.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions are set out in considerable detail and cite numerous previous UDRP cases. These include many previous cases brought by the Complainant. The Panel notes in passing that many of these are not really on point and are of limited, if any, assistance, as the issue that falls to be considered in the present case (see below) is that of the use of the Complainant’s trade marks in domain names by a non -authorised dealer in genuine products of the Complainant. That issue is not addressed in any detail by the Complainant’s contentions nor, so far as the Panel can see, in the cases it cites.

The Complainant’s case can be summarized as follows.

The Disputed Domain Names are similar to its trade marks HARLEY-DAVIDSON and/or HARLEY in which it clearly has rights. The only difference is the addition of the geographical term “australia” in one case and the pluralisation/omission of the hyphen in the other case. In neither case do these changes distinguish the Disputed Domain Names from the Complainant’s trade marks.

The Respondent has no rights or legitimate interests in the term “HARLEY-DAVIDSON and/or HARLEY”. There is no meaning commonly associated with these terms other than in relation to the Complainant and its products. The Complainant has not authorized the Respondent to use the term “HARLEY-DAVIDSON” and/or “HARLEY”.

The Disputed Domain Names were registered and are being used in bad faith. Consumers are likely to be deceived and/or confused by the Respondent’s use of the Disputed Domain Names, and the Respondent’s registrations and use of the Disputed Domain Names take unfair advantage of the Complainant’s trade marks and the Complainant’s significant and longstanding reputation.

The Respondent’s actions amount to a misrepresentation in the course of trade, calculated to injure the Complainant’s business or goodwill, and being likely to mislead or deceive the public. In particular, members of the public are likely to falsely believe that:

- the Respondent has been authorised, approved, sponsored, or licensed by the Complainant to use or deal in the Disputed Domain Names;

- the Complainant has authorised, approved, sponsored, or licensed the Respondent to use the HARLEY-DAVIDSON and HARLEY marks and names;

- the Respondent’s business or activities are somehow connected, associated or affiliated with the Complainant and/or one of its subsidiaries; and/or

- the Respondent’s business is that of the Complainant.

B. Respondent

It is convenient to set out the Respondent’s emails of January 5 and January 6, 2015 verbatim. They read as follows:

January 5:

“My name is […] I own the domain names in dispute.

I purchased these domains in 2012 as a measure to guard my business - that business sells harley davidsons in australia and in new zealand.

Furthermore: we sell NO other brand, purely harley davidsons.

When our only trade is only in harley davidsons, the product cannot be named any other.

That is why I own those domains.

The domain name tells the product/brand.

I see nothing incorrect in purchasing these domains as they were readily available.

If HD LLC wanted the domains, perhaps they should have done the same as I did.

Thank you and best regards

[…]”

January 6:

“Further to my email of yesterday,

Please have the panel refer to our website www.qualityharleys.com

They will then assess that the domain names in dispute are appropriate to our business and not purchased by us for any other reason than to promote our core business.

Thanks and regards

[…]”

6. Discussion and Findings

The Panel in its discretion will treat the Respondent’s emails of January 5 and 6, 2015 as its Response. The Panel has acceded to the Respondent’s request and attempted to review its website at “www.qualityharleys.com”. In fact there is no website at that address, which redirects to “www.harleydavidsonaustralia.net.au”. The Panel has reviewed that website.

To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:

(i) The Disputed Domain Names are identical with or confusingly similar to a trade mark or service mark in which the Complainant has rights;

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

(iii) The Disputed Domain Names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in the trade marks HARLEY-DAVIDSON and HARLEY. The filed evidence establishes the Complainant has carried on business internationally under the name HARLEY-DAVIDSON for many years and its products have clearly been marketed under that name on an international basis on a very substantial scale and are well known. Further, the Complainant has a wide range of registered trade mark rights in the words “HARLEY-DAVIDSON” and “HARLEY”.

The Disputed Domain Names are confusingly similar to the HARLEY-DAVIDSON and HARLEY trade marks. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy, “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662). The only differences in the present case are (i) in one case the addition of the geographical term “australia” and (ii) in the other case the omission of the hyphen and addition of a letter “s”. These are not sufficient to distinguish the Disputed Domain Names.

Accordingly, the Panel finds that the Disputed Domain Names are confusingly similar to the Complainant’s trade marks and, therefore, the first condition of paragraph 4(a) of the Policy has been fulfilled.

B. Rights or Legitimate Interests

The issue which arises in the present case is easy to understand but involves some difficult considerations. It is the question of the extent to which a non-authorised dealer/importer in the Complainant’s products can incorporate the Complainant’s trade marks in a domain name and then assert that because it deals in only genuine products of the Complainant it has established a legitimate interest.

The Panel considers that it may well be possible in such circumstances for such a dealer/importer to establish a legitimate interest in such a domain name provided that other elements within the domain name make clear, either expressly or implicitly, to the reasonably well informed consumer of the Complainant’s products, that the domain in question is likely to be that of a non-authorised dealer/importer. Conversely if the other elements within the domain name are not sufficient to convey the non-authorised status of the dealer/importer, and hence the domain name conveys the impression (expressly or implicitly) that the domain is that of the Complainant, or one of its authorised dealers/importers, then it is unlikely to be possible to establish a legitimate interest. Exactly where the line is drawn is a question of fact and degree, to be assessed on a case by case basis.

In the present case the Panel considers that the Respondent fails to establish a legitimate interest in either of the Disputed Domain Names. One such name - <harleyaustralia.com> - is simply the Complainant’s mark combined with a geographical identifier and is likely to be taken to be a domain name associated with the Complainant’s Australian business. The other - <harleydavidsons.co> - is simply a variation of the Complainant’s name and likely to be taken to be a domain name associated with the Complainant.

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Names:

(i) before any notice to the Respondent of the dispute, use of, or demonstrable preparations to use, the Disputed Domain Names or names corresponding to the Disputed Domain Names in connection with a bona fide offering of goods or services; or

(ii) the Respondent has been commonly known by the Disputed Domain Names, even if the Respondent has acquired no trade mark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

None of these apply in the present circumstances. The only one of possible relevance is (i). The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Names. The Respondent must have known when it chose to register the Disputed Domain Names that they corresponded to the Complainant’s name (with minor alteration or the addition of a geographical identifier). These Disputed Domain Names were then used to redirect to another domain name and a web site at that domain name offering for sale used examples of the Complainant’s products. That does not amount to use of the domain names for a bona fide offering of goods. The Respondent is no doubt entitled to deal in and sell used examples of the Complainant’s products. What it is not entitled to do is to use for this purpose domain names which suggest that it is the Complainant, or is authorised by the Complainant. That is not a bona fide offering of goods.

In reaching this conclusion the Panel has considered carefully the views of previous panelists as recorded in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). Specifically paragraph 2.3 considers the question “Can a reseller/distributor of trademarked goods or services have rights or legitimate interests in a domain name which contains such trademark?” and states as follows:

“Consensus view: Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder. The respondent must also not try to “corner the market” in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles. Pay-per-click (PPC) websites would not normally fall within such principles where such websites seek to take unfair advantage of the value of the trademark.

However: Some panels take the position (while subscribing to the consensus view) that it will generally be very difficult for a respondent to establish rights or legitimate interests where that respondent has no relevant trade mark rights and without the authority of the complainant has used a domain name identical to the complainant’s trademark (i.e., <trademark.tld>).”

In the present case the Panel notes the Respondent is an unauthorised dealer in the Complainant’s products and believes that the applicability so called “Oki Data” principles (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903) should be considered carefully. In the Oki Data case the Panel approved the earlier decision in R.T. Quaife Engineering, Ltd. and Autotech Sport Tuning Corporation d/b/a Quaife America v. Bill Luton, WIPO Case No. D2000-1201 finding that there was no bona fide offering because the domain name <quaifeusa.com> improperly suggested that the reflected site was the official U.S. website for Quaife, an English company. That seems to the Panel to be precisely the position with the Disputed Domain Names.

Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Names and the second condition of paragraph 4(a) of the Policy has been fulfilled.

C. Registered and Used in Bad Faith

In the present circumstances, the Panel concludes that the Disputed Domain Names were registered and are being used in bad faith. They are clearly part of a pattern of registration of names all of which are names which the Panel considers would be likely to be taken as names associated with the Complainant’s own business in Australia and/or New Zealand (whether carried out directly or through authorised dealers). The Panel takes the view that potential customers arriving at the Respondent’s webpage at “www.harleydavidsonaustralia.net.au” would realise that the site was not that of an authorised dealer of the Complainant. Casual visitors to the website might not notice the disclaimer but it seems to the Panel that a serious customer, before entering into a transaction to buy a high value item such as a motorcycle, would look at the website in some detail and in assessing its overall content, including the disclaimer, would realise the website was that of an unauthorised dealer. However it also seems likely to the Panel that a proportion of such potential customers, having been expecting or looking for the Complainant or one of its dealers may then nevertheless go on to deal with the Respondent. The bad faith arises in the Respondent using domain names in which it has no legitimate interest (see above) to attract possible customers who were looking for, or expecting, the Complainant or one of its authorised dealers but who then deal with the Respondent.

The Panel does not consider it is any answer for the Respondent to say that the Complainant could have registered the Disputed Domain Names itself. There are no doubt numerous similar domain names, differing in minor degrees, which are available for registration, and the Complainant cannot sensibly be expected to register every single possibility.

Accordingly the Panel finds that the Disputed Domain Names have been registered and are being used in bad faith and hence that the third condition of paragraph 4(a) of the Policy has been fulfilled.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names, <harleyaustralia.com> and <harleydavidsons.co> be transferred to the Complainant.

Nick J. Gardner
Sole Panelist
Date: February 2, 2015