Harley-Davidson Motor Company, Inc. v Charmelle Barton

WIPO Case No. D2024-4887

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Harley-Davidson Motor Company, Inc. v. Charmelle Barton

Case No. D2024-4887

1. The Parties

Complainant is Harley-Davidson Motor Company, Inc., United States of America, represented by Briffa,

United Kingdom.

Respondent is Charmelle Barton, United States of America.

2. The Domain Name and Registrar

The disputed domain name <hdsale.top> (the “Domain Name”) is registered with NameSilo, LLC

(the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 26, 2024. On November 27, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 27, 2024, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 3, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 23, 2024. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 24, 2024.

The Center appointed Robert A. Badgley as the sole panelist in this matter on January 3, 2025. 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.

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4. Factual Background

Complainant is a leading motorcycle manufacturer.

Complainant holds various registered trademarks for H-D and HD, including: United Kingdom Reg.
No. UK00901526276 for the mark H-D, registered on April 9, 2001 in connection with, among other things,
“motorcycles, motorcycle engines and parts and accessories therefor”, as well as “outerclothing, sweaters,
[…] coats…” United Kingdom Reg. No. UK00903530177 for the mark HD, registered on June 4, 2007 in
connection with, among other things, “vehicles, […], motorcycles”, as well as “clothing, footwear,

headgear…”.

Complainant’s gross sales in 2023 exceeded USD 5 billion.

Complainant has owned the domain name <h-d.com> since 1994 and uses that domain name to host a commercial website and promote its products. At this website, Complainant uses the marks HARLEY- DAVIDSON, HD, and H-D to identify and distinguish its various products.

Complainant maintains a robust social media presence, with more than 12 million Facebook followers, 4.7 million Instagram followers, and 498,000 X followers.

The Domain Name was registered was registered on May 24, 2024. The Domain Name resolves to a website offering goods for sale. According to Complainant, these are counterfeit goods designed to resemble Complainant’s products.

Respondent has not denied any of the foregoing allegations.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the

Domain Name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the
Domain Name:

(i)        the Domain Name is identical or confusingly similar to a trademark or service mark in which

Complainant has rights;

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

(iii)      the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing
(or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison
between Complainant’s trademark and the Domain Names. WIPO Overview 3.0, section 1.7.

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The Panel concludes that Complainant has rights in the trademark HD through registration and use demonstrated in the record. The Panel also concludes that the Domain Name is confusingly similar to that mark. The Domain Name entirely incorporates the mark and adds the word “sale”. The Panel concludes that the mark remains clearly recognizable within the Domain Name despite this additional word.

Complainant has established Policy paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the
Domain Name, among other circumstances, by showing any of the following elements:

(i)        before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to

use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering
of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or

(iii)      you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without

intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at

issue.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized
that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task
of “proving a negative”, requiring information often primarily within the knowledge or control of the
respondent. Thus, where a complainant makes out a prima facie case that the respondent lacks rights or
legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence
demonstrating rights or legitimate interests in the domain name (although the burden of proof always
remains on the complainant). If the respondent fails to come forward with such relevant evidence, the
complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

The Panel concludes that Respondent lacks rights or legitimate interests in connection with the Domain Name. Respondent has not come forward in this proceeding to refute any of the plausible allegations made by Complainant, or challenge any of the evidence put forth by Complainant. It is clear from this undisputed record that Respondent targeted Complainant’s mark. According to the undisputed record, Respondent is selling “counterfeit” versions of Complainant’s products. Such conduct obviously does not invest Respondent with rights or legitimate interests vis-à-vis the Domain Name.

Complainant has established Policy paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily

for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant
who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable
consideration in excess of its documented out of pocket costs directly related to the Domain Name; or

(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or
service mark from reflecting the mark in a corresponding domain name, provided that Respondent has
engaged in a pattern of such conduct; or

(iii)      that Respondent has registered the Domain Name primarily for the purpose of disrupting the business

of a competitor; or

(iv)      that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial

gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion

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with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website
or location or of a product or service on Respondent’s website or location.

The Panel concludes that Respondent registered and used the Domain Name in bad faith under the Policy. The Panel incorporates its discussion above in the “Rights or Legitimate Interests” section. On this record, the Panel finds it clear that Respondent targeted Complainant’s mark when registering the Domain Name

and has used the Domain Name for illegitimate commercial gain by seeking to divert Internet traffic for
commercial gain by free riding on Complainant’s well-known mark and, according to the undisputed record,
selling counterfeit goods. This constitutes bad faith registration and use within the meaning of the above-

quoted Policy paragraph 4(b)(iv).

Complainant has established Policy paragraph 4(a)(iii).

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 Domain Name <hdsale.top> be transferred to Complainant.

/Robert A. Badgley/
Robert A. Badgley
Sole Panelist
Date: January 16, 2025