Harley-Davidson Motor Company, Inc. v Qi Gao

WIPO Case No. D2025-2077

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Harley-Davidson Motor Company, Inc. v. Qi Gao

Case No. D2025-2077

1. The Parties

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

United Kingdom.

The Respondent is Qi Gao, China.

2. The Domain Name and Registrar

The disputed domain name <harleydavidsonx.com> is registered with Hongkong Kouming International

Limited (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 20, 2025. On May 26, 2025, the Center transmitted by email to the Registrar a request for registrar verif ication in connection with the disputed domain name. On May 27, 2025, the Registrar transmitted by email to the Center its verif ication response confirming that the Respondent is listed as the registrant and providing the contact details.

On May 27, 2025, the Center informed the Parties in Chinese and English, that the language of the Registration Agreement for the disputed domain name is Chinese. On May 31, 2025, the Complainant conf irmed its request that English be the language of the proceeding. The Respondent did not submit any comment on the Complainant’s submission.

The Center verif ied that the Complaint satisf ied 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 notif ied the Respondent in Chinese and English of the Complaint, and the proceedings commenced on June 2, 2025. In accordance with the Rules, paragraph 5, the due date for Response was June 22, 2025. The Respondent did not submit any response. Accordingly, the Center notif ied the Respondent’s default on June 27, 2025.

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The Center appointed Jonathan Agmon as the sole panelist in this matter on July 1, 2025. The Panel f inds 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 well-known manufacturer, retailer, and distributor of motorcycles and related merchandise, including T-shirts, jackets, and other apparel. The Complainant has been using its HARLEY- DAVIDSON trademarks since 1903. The Complainant’s worldwide revenue in the year 2024 was in excess of USD 5 billion. Global Brands Magazine valued the Complainant as the fourth most valuable motorcycle brand in 2022. The Complainant also has a significant social media presence, with 5.7 million, 12 million, and 498.3 thousand followers on its Instagram, Facebook, and X accounts respectively.

The Complainant owns a large portfolio of HARLEY-DAVIDSON trademarks, including the following:

- United Kingdom trademark registration no. UK00901172329 for HARLEY-DAVIDSON, registered on
August 7, 2000;

- United Kingdom trademark registration no. UK00001271222 for HARLEY-DAVIDSON, registered on
September 30, 1988;

The Complainant operates in primary domain name <harley-davidson.com>, registered on November 8,
1994.

The disputed domain name was registered on November 2, 2024. At the time of this Decision, it resolved to a webpage displaying the Complainant’s HARLEY-DAVIDSON trademark and purportedly offering goods for sale under the HARLEY-DAVIDSON trademark at steep discounts.

5. Parties’ Contentions
A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that:

- The disputed domain name is confusingly similar to the HARLEY-DAVIDSON trademark in which the Complainant has rights. The disputed domain name consists of the Complainant’s HARLEY-DAVIDSON trademark with the addition of a generic, descriptive term, and the omission of the hyphen. The addition of the generic Top-Level Domain (“gTLD”) “.com” is a standard requirement and is disregarded for the purposes of the test of confusing similarity under the f irst element.

- The Respondent has no rights or legitimate interests in respect of the disputed domain name. The registration of the Complainant’s trademark long predates the registration of the disputed domain name. The Complainant’s trademarks are well known, and the Complainant has not licensed the trademarks to the Respondent to use in the registration of a domain name. The disputed domain name consists of the entirety of the Complainant’s HARLEY-DAVIDSON trademark with the addition of the letter “x”, which creates an implied affiliation of the disputed domain name with the Complainant. The disputed domain name resolves to a website where the Respondent is offering counterfeit goods for sale under the HARLEY-DAVIDSON trademark, at a steep discount. It is clear that the disputed domain name was clearly registered to take advantage of the Complainant’s trademark.

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- The disputed domain name was registered and is being used in bad faith. The Complainant’s trademark is well known, and the disputed domain name is confusingly similar to the Complainant’s trademark. The disputed domain name was registered by an entity unaf f iliated with the Complainant, and

there is presumption of bad faith. The disputed domain name is also used to sell counterfeit goods, which is

evidence of bad faith.

B. Respondent

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

6. Discussion and Findings
6.1 Preliminary Issue: Language of the Proceeding

The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or unless specif ied otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.

The Complaint was filed in English. The Complainant requested that the language of the proceeding be

English for several reasons, including the fact that:

- The disputed domain name comprises of Latin characters instead of Chinese. This shows that the
Respondent understands English;

- The content of the Respondent’s website is in English, which strongly suggests that the Respondent
understands English;

- The words “Harley”, “Davidson”, and “x” have no meaning in Chinese;

- The Complainant is not a Chinese entity and has limited knowledge of Chinese. Conducting the
proceedings in Chinese instead of English would require the Complainant to incur signif icant
translation costs which would be unfair given the Respondent’s knowledge of English.

The Respondent did not make any specific submissions with respect to the language of the proceeding.

In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (see WIPO Overview of WIPO Panel Views on Selected UDRP

Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1).

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.

6.2 Substantive Issues
A. Identical or Confusingly Similar

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

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

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The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusing similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of another term here, the letter “x” may bear on assessment of the second and third elements, the Panel finds the addition of such a term does not prevent a f inding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The Panel f inds the f irst element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

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 that is of ten primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element 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 satisf ied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

There is no evidence to suggest that the Respondent is commonly known by the disputed domain name. The Complainant’s registration of its trademark predates the registration of the disputed domain name. The disputed domain name resolves to a website displaying the Complainant’s HARLEY-DAVIDSON mark, including in its graphical form, and has a similar design to the Complainant’s own website. It purportedly of fers the Complainant’s goods for sale at a steep discount. This suggests that the Respondent is targeting the Complainant and is likely attempting to pass off as being related to the Complainant. It also suggests that the goods offered for sale on the Respondent’s website are likely counterfeit goods. The Panel is of the view that there is no evidence that the Respondent is using or preparing to use the disputed domain name for any legitimate purpose.

Panels have held that the use of a domain name for illegal activity, here, claimed as applicable to this case: sale of counterfeit goods, or impersonation/passing off, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

The Panel f inds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that the Respondent registered the disputed domain name long after the Complainant registered its HARLEY-DAVIDSON trademark. Given the reputation of the Complainant’s

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HARLEY-DAVIDSON trademark and the use of the Complainant’s HARLEY-DAVIDSON trademark on the website at the disputed domain name, it is highly unlikely that the Respondent was not aware of the Complainant and its trademark prior to the registration of the disputed domain name. This is especially so as the disputed domain name comprises of the Complainant’s HARLEY-DAVIDSON trademark in its entirety (save for the hyphen), with the mere addition of the letter “x” as a suffix, which is a common typographical error to make.

Panels have held that the use of a domain name for illegal activity here, claimed as applicable to this case: sale of counterfeit goods, or impersonation/passing off, constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel f inds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

The Panel f inds that the Complainant has established the third 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 <harleydavidsonx.com> be transferred to the Complainant.

/Jonathan Agmon/
Jonathan Agmon
Sole Panelist
Date: July 15, 2025