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. The Complainant’s parent company has traded on the New York Stock Exchange since November 5, 1987 and as of November 6, 2023, has a market capitalization value of $4.10 billion. <\/p>\n
The Complainant owns very extensive rights in the HARLEY-DAVIDSON mark including but not limited to the trade mark registrations as identified in section “Identification of Right” above. In addition, the domain name <harley-davidson.com> was registered by the Complainant on November 8, 1994. The Complainant also owns a considerable portfolio of 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 mark HARLEY-DAVIDSON in the US and abroad in relation to a wide range of goods and services. 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 extremely high level of awareness of the Complainant’s brand amongst consumers. The Complainant has an active online presence at its official website, which has been live since at least as early as December 19, 1996. The Complainant is also active on social media and has generated a significant level of endorsement. <\/p>\n
All of the twenty-one disputed domain names were registered between May 7, 2023 and February 19, 2024. The contents of the disputed domain names’ resolving websites are identical and\/or highly similar to each other including website UI and look and feel. Some of the disputed domain names’ resolving websites which do not currently resolve to infringing content have historically been used in an identical and\/or highly similar manner as to that of the infringing websites active as of the date of this Complaint. Prima facie<\/em> counterfeit products are offered for sale at the disputed domain names’ resolving websites. The disputed domain names are redirecting to one another, namely <harleydavidsonsales.vip><\/strong>, <harleydavidsonsale.shop><\/strong>, <harleydavidsonsa.shop><\/strong>, and <harleydavidsonuss.shop><\/strong> redirect to <harleydavidsonsus.shop><\/strong>. The Complainant was alerted to at least 11 of the 21 disputed domain names via Facebook Ads advertising counterfeit goods relating to the Complainant diverting Internet users to the disputed domain names’ resolving websites via hidden links.<\/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:<\/p>\n i) The Complainant has rights in the HARLEY-DAVIDSON mark as identified in section “Identification of rights” above. The disputed domain names are confusingly similar to the Complainant's HARLEY-DAVIDSON mark because they incorporate the Complainant’s mark in their entirety and add non-distinctive elements and\/or omit a hyphen.<\/p>\n ii) The Respondents have no rights or legitimate interests in respect of the disputed domain names. The Respondent is not commonly known by the disputed domain names. The Respondents have not provided a bona fide offering of goods or services in connection with the disputed domain names. The disputed domain names have been redirected by the Respondent to websites where the Complainant’s trademark HARLEY-DAVIDSON is displayed, and prima facie counterfeit products are offered for sale.<\/p>\n iii) The Respondents have registered and is using the disputed domain names in bad faith. The use of the disputed domain names in connection with commercial websites where the Complainant’s trademark is misappropriated and prima facie counterfeit HARLEY-DAVIDSON branded products are offered for sale, clearly indicates that the Respondent’s purpose for registering the disputed domain names was to capitalize on the reputation of the Complainant's trademark. The Respondents have been engaged in a pattern of conduct preventing the Complainant from reflecting the marks in the disputed domain names. The Respondents had knowledge of the Complainant’s rights in the HARLEY-DAVIDSON mark before registering the disputed domain names, which constitutes bad faith registration.<\/p>\n RESPONDENT:<\/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": " PRELIMINARY ISSUE 1: <\/strong>Multiple Respondents<\/strong> <\/p>\n The Complainant has alleged that it is likely that the disputed domain names are under the control of a single entity and consolidation is appropriate in this matter. Paragraph 3(c) of the Rules (the “Rules”) for the Uniform Domain Name Dispute Resolution Policy (the “UDRP” or “Policy”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” The Complainant contends that the disputed domain names are subject to an evident common control, thus making the consolidation of the dispute equitable and procedurally efficient. The disputed domain names were registered by the same domain-name holder or under the control of a common operator, based on commonalities between the disputed domain names and the websites to which they resolve given that: <\/p>\n (i) The disputed domain names all use a privacy protection service to mask the registrant; <\/p>\n (ii) The contents of the disputed domain names’ resolving websites are identical and\/or highly similar to each other including website UI and look and feel; <\/p>\n (iii) The disputed domain names are redirecting to one another, namely <harleydavidsonsales.vip><\/strong>, <harleydavidsonsale.shop><\/strong>, <harleydavidsonsa.shop><\/strong>, and <harleydavidsonuss.shop><\/strong> redirect to <harleydavidsonsus.shop><\/strong>; <\/p>\n (iv) The Complainant was alerted to at least 11 of the 21 disputed domain names via Facebook Ads advertising counterfeit goods relating to the Complainant diverting Internet users to the disputed domain names’ resolving websites via hidden links; and <\/p>\n (v) The similarity of the disputed domain names’ anatomy to one another (each including a generic term, alongside the Complainant’s well-known HARLEY-DAVIDSON or HARLEY mark). <\/p>\n In light of all the information related above and the relationships between the use of the disputed domain names, the Complainant believes that the present one is a clear case where the disputed domain names are under the actual control of a single individual or entity or, at least, reflective of a group of individuals acting in concert. <\/p>\n The Complainant provides exhibits showing the circumstances as listed above including “network analysis map evidencing commonalities of all of the disputed domain names.” The Panel finds that the circumstances indicated above are concrete and sufficient to prove that the disputed domain names are subject to a common control by a single entity. The Panel agrees and finds that the disputed domain names are commonly owned\/controlled by a single Respondent who is using multiple aliases. Throughout the decision, the Respondents will be collectively referred to as “Respondent.” <\/p>\n <\/p>\n PRELIMINARY ISSUE 2: Language of the Proceedings<\/strong> <\/p>\n The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. The Complainant has requested that the proceeding should be conducted in English. The Panel has the discretion under UDRP Rule 11(a) to determine the appropriate language of the proceedings taking the particular circumstances of the administrative proceeding into consideration. See <\/em>Section 4.5, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition; see <\/em>also Lovehoney Group Limited v yan zhang, CAC 103917 (CAC August 17, 2021) (finding it appropriate to conduct the proceeding in English under Rule 11, despite Japanese being designated as the required language in the registration agreement). <\/p>\n The Complainant contends that (i) the website content of the disputed domain names is written entirely in English, and thus it is reasonable to infer that the Respondent must have a good grasp of the English language such that they would be able to understand the language of the Complaint; (ii) the suffixes used within the domain names include common English words, specifically: “speed,” “shop,” “store(s),” “sale(s),” “save,” and “outlets”; and (iii) translating this Complaint into Chinese will lead to undue delay and substantial expense incurred by the Complainant, who already bears the burden for filing this Complaint. <\/p>\n Pursuant to UDRP Rule 11(a), the Panel finds that persuasive argument has been adduced by the Complainant. After considering the circumstance of the present case, in the absence of the Response and no objection to the Complainant's request for the language of proceeding, the Panel decides that the proceeding should be in English.<\/p>\n The Panel is 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": [
"Mr. Ho-Hyun Nahm Esq."
],
"date_of_panel_decision": "2024-03-27 00:00:00",
"informal_english_translation": " The Complainant is the owner of the well-known trademark HARLEY-DAVIDSON around the world, inter alia<\/em>, United States Patent and Trademark Office trademark Reg. No. 0507163 registered on March 1, 1949 in class 25; and United Kingdom IPO trademark Reg. No. UK00000658028 registered on April 9, 1947.<\/p>",
"decision_domains": {
"harleysaleoutlets.com": "TRANSFERRED",
"harley-davidsonsale-us.com": "TRANSFERRED",
"harley-davidsonsales-us.com": "TRANSFERRED",
"harleydavidsonsales.vip": "TRANSFERRED",
"harleydavidsonsale.shop": "TRANSFERRED",
"harleydavidsonsa.shop": "TRANSFERRED",
"harleydavidsonuss.shop": "TRANSFERRED",
"harleydavidsonsus.shop": "TRANSFERRED",
"harleydavidsonsaus.shop": "TRANSFERRED",
"harleydavidsonsales.shop": "TRANSFERRED",
"harleydavidsonusale.vip": "TRANSFERRED",
"harleydavidsonss.shop": "TRANSFERRED",
"harleydavidsonu.shop": "TRANSFERRED",
"harleydavidsonusa.shop": "TRANSFERRED",
"harleydavidsonstores.shop": "TRANSFERRED",
"harley-davidson-sale.shop": "TRANSFERRED",
"harley-davidson-save.shop": "TRANSFERRED",
"harleystores.shop": "TRANSFERRED",
"harleydavidsonspeedshop.com": "TRANSFERRED",
"harleydvsstore.com": "TRANSFERRED",
"harley-davidson-shop.com": "TRANSFERRED"
},
"panelist": null,
"panellists_text": null
}