The Complainant is a subsidiary company of Harley-Davidson, Inc., an international motorcycle manufacturer providing leading worldwide manufacture, distribution, and sale of motorcycles, parts, and complementary goods and services thereof. Harley-Davidson, Inc. includes the subsidiary Harley-Davidson Motor Company Inc..<\/p>\n
The Complainant’s parent company has traded on the New York Stock Exchange since 5 November 1987 and as of 18 May 2021, has a market capitalisation value of $7.9 billion.<\/p>\n
The Complainant owns extensive rights in the HARLEY-DAVIDSON mark.<\/p>\n
Complainant also owns several other HARLEY-DAVIDSON domain names.<\/p>\n
The USA is the Complainant’s domestic market and accounts for a significant portion of sales, with other key markets being DACH (Germany, Austria, and Switzerland), Japan, China, Canada, France, United Kingdom, Italy, Australia, and New Zealand. The Complainant has a significant reputation and has built up a vast amount of goodwill in the sign HARLEY-DAVIDSON in the US and abroad in relation to a wide range of goods and services.<\/p>\n
The HARLEY-DAVIDSON brand has become iconic in popular culture in part due to the intensity, geographical extent, and long-standing use made of such marks, as evidenced by the high level of awareness of the Complainant’s brand amongst consumers, as indicated by the consistent inclusion of Harley-Davidson within the Interbrand’s “Top 100: Best Global Brands” report.<\/p>\n
The Complainant states, that the Disputed Domain Names include the Complainants registered trademarks as the dominant element, along with non-distinctive terms, namely “clothes” and “apparel”. The inclusion of non-distinctive terms which are either descriptive, generic, or geographic do nothing to alter the overall impression in the eyes of the average Internet user. Prior panels have consistently held that the addition of other terms does not avoid a finding of confusing similarity.<\/p>\n
The non-distinctive terms reinforce in the view of Complainant the connection and are attempts to pass off as the Complainant. The Respondent makes extensive use of the Complainant’s registered trademarks, including on the Websites and by advertising and offering to sell the infringing products.<\/p>\n
The HARLEY-DAVIDSON mark is clearly recognisable as the dominate element within the Disputed Domain Names. Prior panels have made the same conclusions regarding the addition of descriptive and\/or non-distinctive terms in paragraph 4(a)(i).<\/p>\n
The Complainant requests that the Panel omit the TLD suffix ‘.com’ when assessing the Disputed Domain Names, as it is merely a technical requirement, used for domain name registrations. <\/p>\n
The Complainant submits that the Respondent does not have any rights or legitimate interests in the Disputed Domain Names. <\/p>\n
The Complainant states that based on the considerable reputation of the HARLEY-DAVIDSON brand, there is no credible, believable, or realistic reason for registration or use of the Disputed Domain Names other than to take advantage of the Complainant’s rights and brand reputation. The Disputed Domain Names were registered between 30 November and 2 December 2022. By this point, the Complainant already had rights (both registered and unregistered) in HARLEY-DAVIDSON.<\/p>\n
The Complainant submits that the Respondent is using the Disputed Domain Names to resolve to “Infringing Websites” which offer for sale and\/or advertise the sale of infringing products infringing various intellectual property rights held by the Complainant, including but not limited to the registered trademarks.<\/p>\n
In the view of Complaint infringing websites impersonate\/pass off as the Complainant, claiming to be official, licensed, or at a minimum affiliated with the Complainant. The websites include a copyright notice holding themselves out to be “Harley-Davidson Merch”, to perpetrate the brand impersonation.<\/p>\n
It is clear in the view of Complainant that the Respondent does not have a legitimate interest in the Disputed Domain Names. The Respondent’s use of the Disputed Domain Names is merely to impersonate\/pass off as the Complainant in order to sell Infringing Products, this shows that they are not using them in relation to a bona fide offering of goods or services. Consequently, the Respondent cannot claim a defence under the Policy, Paragraph 4(c)(i).<\/p>\n
The Complainant submits further that the Disputed Domain Names have been registered and<\/u> used in bad faith in accordance with Policy, Paragraph 4(a)(iii).<\/p>\n The registered trademarks for HARLEY-DAVIDSON pre-dates the registration of the Disputed Domain Names and HARLEY-DAVIDSON enjoys a wide reputation. Furthermore, Complainant states that the Respondent was unequivocally aware of the HARLEY-DAVIDSON brand given the Respondent’s significant use of the registered trademarks on the infringing websites, and that the infringing websites are set up to impersonate\/pass off as the Complainant in order to sell infringing products. Therefore, the Complainant submits that the Respondent had knowledge of HARLEY-DAVIDSON and that the Disputed Domain Names are registered with the sole purpose of targeting the Complainant’s registered trademarks.<\/p>\n The Complainant further submits that the Respondent has registered the Disputed Domain Names in bad faith by intentionally attempting to attract, for commercial gain, Internet users to the infringing websites, by creating a likelihood of confusion with the Complainant's registered trademarks as to the source, sponsorship, affiliation, or endorsement of the infringing websites under Policy, Paragraph 4(b)(iv).<\/p>\n The Respondent has in the view of the Complainant registered the Disputed Domain Names in order to drive Internet traffic to the websites in order to impersonate\/pass off as the Complainant to sell infringing products. <\/p>\n Furthermore, the Complainant submits based on the Respondent’s use of the HARLEY-DAVIDSON mark to sell infringing products, the Respondent had actual knowledge of the Complainant’s rights in the HARLEY-DAVIDSON registered trademarks at the time of registering the Disputed Domain Names. <\/p>\n The Complainant further submits that the Respondent disrupts the Complainant’s business by diverting potential customers to the infringing websites selling infringing products and competing goods. Using a confusingly similar domain name in a manner disruptive of a Complainant’s business by trading upon the goodwill of a Complainant for the commercial gain evinces bad faith under paragraph 4(b)(iii) and (v) of the Policy.<\/p>\n The Complainant submits that the infringing products on the Websites are counterfeit and knockoff product infringing the various intellectual property rights owned by Complainant, including but not limited to the registered trademarks.<\/p>\n Based on the submissions above, the Complainant maintains that the Disputed Domain Names were registered and used in bad faith and all elements of the Policy are satisfied.<\/p>",
"other_legal_proceedings": " The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain names.<\/p>",
"no_response_filed": " Complainant´s contentions are summarised above.<\/p>\n NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED. <\/p>",
"rights": " The Complainant has, to the satisfaction of the Panel, shown the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).<\/p>",
"no_rights_or_legitimate_interests": " The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain names (within the meaning of paragraph 4(a)(ii) of the Policy).<\/p>",
"bad_faith": " The Complainant has, to the satisfaction of the Panel, shown the Disputed Domain Names have been registered and are being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).<\/p>",
"procedural_factors": " The Complainant filed a complaint against two domain names and submits that this should be allowed because all Disputed Domain Names are registered by the same domain-name holder. <\/p>\n The Panel agrees with that argument and allows to file a complaint against both Disputed Domain Names. Both Disputed Domain Names are clearly linked to each other. <\/p>\n The Panel is therefore satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.<\/p>",
"decision": "Accepted",
"panelists": [
"Jan Schnedler"
],
"date_of_panel_decision": "2023-05-19 00:00:00",
"informal_english_translation": " The Complainant is the registered proprietor of various trademarks and other intellectual property rights worldwide. The Complainant’s trademarks including but not limited to the below trademark registration: <\/p>\n Trade Mark<\/strong><\/p>\n<\/td>\n Device<\/strong><\/p>\n<\/td>\n Register<\/strong><\/p>\n<\/td>\n Registration No.<\/strong><\/p>\n<\/td>\n Reg. Date.<\/strong><\/p>\n<\/td>\n Class(es)<\/strong><\/p>\n<\/td>\n<\/tr>\n HARLEY-DAVIDSON<\/p>\n<\/td>\n <\/p>\n<\/td>\n UK<\/p>\n<\/td>\n UK00901797018<\/p>\n<\/td>\n 21 March 2002<\/p>\n<\/td>\n 25, 39<\/p>\n<\/td>\n<\/tr>\n HARLEY-DAVIDSON<\/p>\n<\/td>\n UK<\/p>\n<\/td>\n UK00915739352<\/p>\n<\/td>\n 15 March 2017<\/p>\n<\/td>\n 35, 37<\/p>\n<\/td>\n<\/tr>\n MOTOR HARLEY-DAVIDSON CYCLES<\/p>\n<\/td>\n UK<\/p>\n<\/td>\n UK00901536309<\/p>\n<\/td>\n 19 November 2001<\/p>\n<\/td>\n 3, 7, 9, 12, 14, 16, 18, 25, 26, 28, 35, 36, 39, 41<\/p>\n<\/td>\n<\/tr>\n Bar & Shield<\/p>\n<\/td>\n UK<\/p>\n<\/td>\n UK00001341822<\/p>\n<\/td>\n 05 July 1991<\/p>\n<\/td>\n 25<\/p>\n<\/td>\n<\/tr>\n<\/tbody>\n<\/table>\n In addition, the domain name <harley-davidson.com> was registered by the Complainant on 8 November 1994.<\/p>",
"decision_domains": {
"harleydavidsonclothes.com": "TRANSFERRED",
"apparel-harleydavidson.com": "TRANSFERRED"
},
"panelist": null,
"panellists_text": null
}<\/ol>\n
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