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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

H-D U.S.A., LLC v. Privacyguardian.org/ Atomic Art

Case No. D2021-1623

1. The Parties

The Complainant is H-D U.S.A., LLC, United States of America, represented by Stobbs IP Limited, United Kingdom.

The Respondent is Privacyguardian.org/ atomic art, China.

2. The Domain Name and Registrar

The disputed domain name <harleycitycoco.com> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 25, 2021. On May 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 25, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 2, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 22, 2021.

The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 13, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 2, 2021.

The Center appointed Alistair Payne as the sole panelist in this matter on August 6, 2021. 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 a subsidiary company of Harley-Davidson, Inc., the United States publicly listed international motorcycle manufacturer that provides worldwide manufacture, distribution, and sale of motorcycles, parts, and complementary goods and services. The Complainant owns numerous trade mark registrations worldwide for its HARLEY mark, including United States trade mark registration 1352679 registered on August 6, 1985 and Chinese trade mark registration 37601061 registered on February 28, 2020. It owns various domain names, including <harley-davidson.com> registered on November 8, 1994.
The disputed domain name was registered on June 26, 2019 and resolves to a website owned by Shansu Technology Co., Ltd which offers for sale two-wheeled electric scooters.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it owns registered trade mark rights as set out above. It says that the inclusion of its HARLEY mark in the disputed domain name renders the disputed domain name confusingly similar to its HARLEY trade mark registrations under the Policy. It asserts that the inclusion of the additional words “city” and “coco” after “Harley” in the disputed domain name do not detract from the confusing similarity of the disputed domain name.

The Complainant says that it’s HARLEY-DAVIDSON and HARLEY brands enjoy very considerable goodwill and reputation in many countries worldwide which has been built up since as early as 1903. On this basis, it maintains that there is no credible reason for registration or use of the disputed domain name by the Respondent other than to take advantage of the Complainant’s rights.

The Complainant submits that at the time of filing this Complaint, the disputed domain name resolved to a live website under the name Shansu Technology Co. Ltd. It says that the Respondent has used the disputed domain name for the purpose of distributing and selling two-wheeled electric vehicles which are described in the product description as “Harley” scooters. The Complainant submits that its’ group has extensively invested in two-wheeled electric vehicle market with the release of their first electric motorcycle, the LiveWire, in 2019 and the investment in Serial 1, a company in the business of manufacturing and selling electric bicycles. The Complainant maintains that the use of the HARLEY brand in the field of electric two-wheeled vehicles by the Respondent cannot constitute a bona fide offering of goods or services, because the Respondent is using the disputed domain name to attract unsuspecting Internet users to its website, instead of to the Complainant’s website.

Further, the Complainant submits that the Respondent has not been known by the disputed domain name and that the website to which it resolves is presented as belonging to “Shansu Technology Co. Ltd”. It also maintains that the Respondent is neither making a legitimate noncommercial or fair use of the disputed domain name and that its aim is obviously to attract Internet users to its website where they offer similar vehicles to those of the Complainant.

With regard to bad faith, the Complainant submits that by the time that the Respondent registered the disputed domain name in June 2019, that its very distinctive HARLEY mark already enjoyed a very substantial reputation in many countries worldwide. On this basis, says the Complainant, the disputed domain name was registered in bad faith. As far as use in bad faith is concerned, the Complainant submits that the Respondent’s conduct in selling its competing two-wheeled electric scooters from its website at the disputed domain name amounts to intentional bad faith conduct in terms of paragraph 4(b)(iv) of the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has demonstrated that in addition to being in business for over 100 years it owns numerous trade mark registrations worldwide for its HARLEY mark, including United States trade mark registration 1352679 registered on August 6, 1985 and Chinese trade mark registration 37601061 registered on February 28, 2020.

The disputed domain name wholly contains the Complainant’s HARLEY mark and is therefore confusingly similar to it. The inclusion in the disputed domain name of the additional words “city” and “coco” after “Harley” does not detract from this finding of confusing similarity.

As a result, the Complaint succeeds under the first element of the Policy.

B. Rights or Legitimate Interests

It is apparent, as submitted by the Complainant, that the HARLEY-DAVIDSON and HARLEY brands enjoy very considerable goodwill and reputation in many countries worldwide which has been built-up by the Complainant over many years.

The Complainant has submitted that the Respondent has not been known by the disputed domain name and the Panel notes that the website to which it resolves is presented as belonging to “Shansu Technology Co. Ltd”. The Complainant has also submitted that the Respondent is neither making a legitimate noncommercial or fair use of the disputed domain name and that its aim is obviously to use the disputed domain name incorporating the Complainant’s HARLEY mark to attract Internet users to its website where the Respondent offers similar vehicles to those of the Complainant. There is no suggestion that any of the vehicles on the Respondent’s website are genuine HARLEY products.

The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name which case has not been rebutted by the Respondent. For this reason and also for the reasons set out under Part C below, the Panel finds that the Complaint succeeds under this element of the Policy.

C. Registered and Used in Bad Faith

By the time that the Respondent registered the disputed domain name in June 2019, the Complainant’s distinctive HARLEY mark already enjoyed a very substantial reputation in many countries worldwide. Being such a distinctive and well-known mark it is more likely than not that the Respondent, a competitor in the two-wheeled vehicle industry, was well aware of it at the time of registration of the disputed domain name and the fact that the disputed domain name resolves to a website offering competing products to those of the Complainant only reinforces this view.

Under paragraph 4(b)(iv) of the Policy the use of the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to a web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of a web site or location or of a product or service on the web site amounts to evidence of registration and use in bad faith.

The Complainant has provided evidence that at the time of filing this Complaint, the disputed domain name resolved to a live website under the name of Shansu Technology Co. Ltd. That site offered two-wheeled electric vehicles which the Complainant alleges were described in the product description as ”Harley” scooters, although the Panel notes that it has not seen evidence in the record of the use of the ”Harley” mark on the site. In any event, the Respondent has for its own gain used the disputed domain name incorporating the Complainant’s HARLEY mark to divert Internet users to the website at the disputed domain name obviously with a view to confusing them as to the source or connection of the two-wheeled electric vehicles offered there, or in the alternative simply to interest Internet users in those products rather than genuine HARLEY products. This conduct fulfills the requirements of paragraph 4(b)(iv) of the Policy and is evidence of registration and use of the disputed domain name in bad faith.

As a result, the Panel finds that the Respondent has both registered and used the disputed domain name in bad faith and the complaint also succeeds under this element of the Policy.

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 name <harleycitycoco.com> be transferred to the Complainant.

Alistair Payne
Sole Panelist
Date: August 20, 2021

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