H-D
Claim Number: FA0902001248203
PARTIES
Complainant is H-D Michigan LLC (“Complainant”),
represented by David M. Kelly, of Finnegan Henderson Farabow Garrett & Dunner L.L.P.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hawaiiharley-davidson.com>
(the “Domain Name”), registered with Godaddy.com,
Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Christopher Gibson as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (the
“Forum”) electronically on February 18, 2009; the Forum received a hard copy of
the Complaint on February 19, 2009.
On February 18, 2009, Godaddy.com, Inc. confirmed by e-mail to the
Forum that the <hawaiiharley-davidson.com>
Domain Name is registered with Godaddy.com, Inc. and that the Respondent is the
current registrant. Godaddy.com, Inc.
has verified that Respondent is bound by the Godaddy.com, Inc. registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution
Policy (the “Policy”).
On February 24, 2009, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of March 16, 2009 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative and
billing contacts, and to postmaster@hawaiiharley-davidson.com by e-mail.
A Response was received on March 18, 2009 and was determined to be filed
late and not in compliance with ICANN Supplemental Rule 5 because no hardcopy
was filed. The Panel, however,
determines that it will consider the Respondent’s Response.
An Additional Submission was received from Complainant on March 23,
2009, and was determined to be timely under Supplemental Rule 7.
On March 24, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the Forum
appointed Christopher S. Gibson as Panelist.
RELIEF SOUGHT
Complainant requests that the Domain Name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is a
Complainant owns
approximately 850 trademark and service mark registrations in more than 75
countries around the world for the HARLEY-DAVIDSON mark. Harley-Davidson over the years has
extensively and widely advertised and promoted its products and services under
the HARLEY-DAVIDSON mark, spending many millions of dollars every year. It has sold many billions of dollars worth of
products and services under the mark. The HARLEY-DAVIDSON mark has long been one of the most recognized
and famous brands in the world. Complainant’s trademark rights in the HARLEY-DAVIDSON mark, based on its trademark registrations and on
its common-law rights, long predate Respondent’s registration of the Domain
Name.
Complainant owns numerous
a.
Registration No. 1,078,871, first used
1906, filed April 15, 1977, issued December 6, 1977, covering motorcycles in
International Class 12.
b.
Registration No. 526,750, first used 1923,
filed August 12, 1947, issued June 27, 1950, covering motorcycles and
motorcycle parts in International Class 12.
c.
Registration No. 2,496,088 for the mark HARLEY-DAVIDSON, first
used March 1, 2000, issued October 9, 2001, covering motorcycle rental services
and travel tour services in International Class 39.
d.
Registration No. 1,311,457, first used
1905, filed December 9, 1983, issued December 25, 1984, covering
motorcycle-related repair and retail services in International Classes 37 and
42.
Harley-Davidson extensively
promotes its products and services on the Internet. Since 1996, Harley-Davidson has used its
website as a worldwide information and distribution channel for its business.
Harley-Davidson’s website features special versions for different countries and
regions. Harley-Davidson’s website
receives tens of millions of hits each month.
Among the services and products Harley-Davidson advertises and promotes on its websites are the rental of its HARLEY-DAVIDSON motorcycles via its Harley-Davidson Authorized
Rentals.
Harley-Davidson has more than 1,500 authorized dealers throughout the
world, including in
Harley-Davidson has for many years
permitted its authorized dealers to use trade names comprised in part of the
HARLEY-DAVIDSON mark for their authorized HARLEY-DAVIDSON dealerships, and
numerous dealers ― including dealers in
As a result of this naming
practice, persons encountering domain names consisting of Harley-Davidson’s
trademarks, in conjunction with a geographic term or an authorized dealer’s name
may believe that the corresponding website is for the authorized
HARLEY-DAVIDSON dealer for the geographic area identified in the domain name or
the authorized HARLEY-DAVIDSON dealer identified by name in the domain name.
Respondent registered the Domain
Name on August 9, 2007, long after Complainant began using the HARLEY-DAVIDSON
mark and many years after Complainant’s HARLEY-DAVIDSON mark became
famous. Complainant states that Respondent
uses the Domain Name for a commercial website advertising directly competing
services, specifically, the rental of HARLEY-DAVIDSON motorcycles. Respondent’s offering of such services
competes with Harley-Davidson’s motorcycle rental services and the motorcycle
rental services of Harley-Davidson’s authorized dealers, including its dealers
located in
Complainant contends that the Domain Name <hawaiiharley-davidson.com> is
confusingly similar to Complainant’s HARLEY-DAVIDSON mark because it is
comprised of Complainant’s mark and the geographic term, “
Complainant contends that Respondent has no rights or legitimate
interest in the Domain Name. First, Complainant
states that Respondent has no intellectual property rights in Complainant’s HARLEY-DAVIDSON
mark. Second, Respondent’s registration
and use of the Domain Name for a commercial website advertising motorcycle
rental services that directly compete with Complainant’s rental services
neither constitutes a bona fide
offering of goods or services nor a legitimate noncommercial or fair use of the
Domain Name. Respondent’s
use of the Domain Name to advertise his rental of HARLEY-DAVIDSON motorcycles
does not constitute a legitimate interest because the offering of a trademarked
product or service does not confer a right to register a domain name containing
the mark at issue. Numerous UDRP Panels
have held that use of trademark-related
domain names by unauthorized resellers for websites offering the trademark
owner’s products does not constitute a bona fide offering of goods or services or non-commercial fair use. Finally, Respondent is not and has not been commonly known by HARLEY-DAVIDSON
or the Domain Name. In particular, Respondent’s use of the name “Hawaii
HARLEY-DAVIDSON © Rentals” on his website does not demonstrate any legitimate
interest in the Domain Name.
Complainant argues that Respondent’s registration and use of the Domain
Name squarely meet the grounds of bad faith in the Policy, as well as
additional grounds of bad faith defined in previous UDRP decisions. First, Respondent’s registration and use of
the Domain Name meet the bad-faith element set forth in the Policy ¶ 4(b)(iv). Specifically,
Respondent uses the Domain Name to intentionally attract, for commercial gain,
Internet users to his website by creating a likelihood of confusion with
Complainant and its famous HARLEY-DAVIDSON mark as to the source, sponsorship,
affiliation, and/or endorsement of Respondent’s website, and the competing
motorcycle rental services advertised on Respondent’s website. Second, Respondent’s registration and use of
the Domain Name meet the bad faith element set forth in ¶ 4(b)(iii)
because Respondent is using the Domain Name to offer competing motorcycle
rental service
B. Respondent
Respondent is Nathan Bingham, a
resident of
Respondent states that a complainant in a UDRP proceeding must
establish that the registrant registered the domain name and is using it in
"bad faith." In this case,
Respondent contends there is no way that Complainant can prove "bad
faith." It was never Respondent’s intention to sell the Domain Name to the
Complainant, and Respondent has never attempted to sell the Domain Name. Respondent did not register the Domain Name
primarily for the purpose of selling, renting, or otherwise transferring it to
the Complainant, who is the owner of the trademark. Further, Respondent states that he did not
register the Domain Name to prevent the owner of the mark from reflecting it in
a corresponding domain name. In
particularly, because Respondent purchased the Domain Name less than two years
ago, it was clearly not his intent to prevent anything that Complainant could
have easily done in the past.
Moreover, Respondent states that he did not register the Domain Name
primarily for the purpose of disrupting the business of a competitor. None of the content throughout the
Respondent’s website suggests that he is an authorized Harley-Davidson rental
company. The Respondent’s header clearly states across the screen,
"Hawaiian Style Rentals." Respondent
explains that he chose the Domain Name <hawaiiharley-davidson.com>
because it contained the most relevant set of keywords for Respondent’s business
of renting Harley-Davidson motorcycles in
Respondent argues the Complaint is unfounded and unfair. Respondent has invested significant capital to
design, develop, and market its website.
Respondent has garnered a strong position on search engines by creating
quality content and attracting many incoming links. However, now the corporate lawyers are trying
to take away Respondent’s investment without compensation. The fact that there are other domain names
with geographic names and HARLEY-DAVIDSON is irrelevant; that was not the case
in
Respondent concludes that he does not have a fair chance against the “legal
goliaths” that have been sent “to take down my small Harley-Davidson rental
business.” Respondent cannot possibly
afford to hire a legal team to fight this case at the same level as the
Complainant, a huge multinational firm. Respondent hopes that a sense of justice will prevail
instead of business as usual, where the corporate lawyers overwhelm the small
business owner.
C. Additional Submissions
Complainant replies that nothing in Respondent’s Response changes the
showing made in the Complaint, which entitles Complainant to relief. Complainant contends that Respondent’s
failure to deny certain allegations is sufficient for Complainant to prevail:
a. Respondent
does not deny that he registered the Domain Name on August 9, 2007, with actual
knowledge of Complainant’s rights in the HARLEY-DAVIDSON trademark and without Complainant’s
authorization.
b. Respondent
does not deny that the Domain Name is confusingly similar to Complainant’s HARLEY-DAVIDSON
mark.
c. Respondent
does not deny that he uses the Domain Name for a commercial website offering
directly competing motorcycle rental services.
Complainant emphasizes that Respondent uses the Domain
Name, which clearly trades on the commercial notoriety of the HARLEY-DAVIDSON
mark, for a, commercial website advertising motorcycle rental services that
directly compete with Complainant’s motorcycle rental services. This fact alone establishes Respondent’s lack
of legitimate interest. Respondent’s
assertions that he registered the Domain Name because “it was the most
[relevant] set of keywords to our business of renting Harley-Davidson bikes in
Hawaii” and “[we] exclusively rent Harley Davidson motorcycles in Hawaii” do
not support a legitimate interest claim.
Respondent does not have the right to appropriate Complainant’s
trademark rights simply because it is more convenient for Respondent. Respondent’s attempt to distinguish his
services as non-competing because his business is smaller than Complainant’s
business has no merit. Respondent’s use
of Complainant’s HARLEY-DAVIDSON mark in the Domain Name does not constitute a
fair use. Nominative fair use doctrine
permits Respondent and others to indicate in advertising or informational
materials in a textual manner that he offers rentals of HARLEY-DAVIDSON
motorcycles. However, he does not need
to register and use domain names confusingly similar to Complainant’s HARLEY-DAVIDSON
mark. Respondent’s use of the
HARLEY-DAVIDSON mark in the Domain Name creates the impression that Respondent
and/or his associated website is sponsored by, connected, and/or affiliated
with Complainant. Numerous UDRP Panels
have held that use of trademark-related domain names by unauthorized resellers
for websites offering the trademark owner’s products does not constitute a bona fide offering of goods or services
or non-commercial fair use. Finally,
there is no merit to Respondent’s suggestion that his investment in his website
demonstrates a legitimate interest in the Domain Name. Any investment by Respondent in the Domain
Name was made concurrent with Respondent’s infringement of Complainant’s rights
in its HARLEY-DAVIDSON mark, and therefore does not convert Respondent’s
infringement into a legitimate right to the Domain Name, regardless of the
amount of Respondent’s investment. This
is the risk Respondent took when he knowingly registered and used the Domain Name
containing another’s trademark.
Complainant also emphasizes that Respondent registered
the Domain Name in bad faith because he had knowledge of Complainant’s rights
in its HARLEY-DAVIDSON mark.
Respondent’s suggestion that he was free to register the Domain Name
because “if [Complainant] wanted the domain name <hawaiiharley-davidson.com> they would have already owned it”
is baseless. First, the fact that
Respondent was able to register the Domain Name because it was available does
not confer any rights to Respondent.
Second, contrary to Respondent’s suggestion, Complainant is not
obligated to register all available domain names containing its HARLEY-DAVIDSON
mark because a trademark owner has no duty to register every variation of its
mark as domain names. Any attempt to do
so would be impossible, as creative infringers will always find some variation
of an owner’s mark to register. In any
event, the Policy places the burden on the registrant to avoid registering a
domain name that infringes upon the rights of others. Complainant has shown that Respondent uses
the Domain Name for a commercial website advertising directly competing
motorcycle rental services. Respondent
registered and uses the Domain Name for the purpose of attracting Internet
traffic through his use of Complainant’s HARLEY-DAVIDSON mark in the Domain
Name. In sum, Respondent’s activities
constitute bad faith.
FINDINGS
Complainant is a
Complainant owns
approximately 850 trademark and service mark registrations in more than 75
countries around the world for the HARLEY-DAVIDSON trademark.
Complainant owns numerous
a. Registration
No. 1,078,871, first used 1906, filed April 15, 1977, issued December 6, 1977,
covering motorcycles in International Class 12.
b. Registration
No. 526,750, first used 1923, filed August 12, 1947, issued June 27, 1950,
covering motorcycles and motorcycle parts in International Class 12.
c. Registration
No. 2,496,088 for the
mark HARLEY-DAVIDSON, first used March 1, 2000, issued October 9, 2001,
covering motorcycle rental services and travel tour services in International
Class 39.
d. Registration
No. 1,311,457, first used 1905, filed December 9, 1983, issued December 25,
1984, covering motorcycle-related repair and retail services in International
Classes 37 and 42.
The HARLEY-DAVIDSON mark
is one of the most recognized and famous brands in the world.
Complainant’s trademark rights in the HARLEY-DAVIDSON
mark, based on its trademark
registrations and on its common-law rights, long predate Respondent’s
registration of the Domain Name.
Respondent is Nathan Bingham, a
resident of
Respondent
registered the Domain Name on August 9, 2007.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a
complaint on the basis of the statements and documents submitted in accordance
with the Policy, these Rules and any rules and principles of law that it deems
applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove
each of the following three elements to obtain an order that a domain name
should be cancelled or transferred:
(1) the domain name registered by the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and is being
used in bad faith.
In this case, it is clear that the Complainant has met its burden. As discussed below, the Respondent does not
deny that the Domain Name is confusingly similar to the Complainant’s
HARLEY-DAVIDSON trademark. Moreover, Respondent
may misapprehend the scope of legal rights and protection accorded to the
Complainant through Complainant’s HARLEY-DAVIDSON trademark. This, however, does not provide a valid
defense under the Policy to excuse Respondent’s registration of the Domain Name,
which was registered with full knowledge of the Complainant’s mark and with the
intention, in the Internet context, of taking advantage of the mark’s widespread
fame and goodwill.
The Panel finds that Complainant has demonstrated
rights in its HARLEY-DAVIDSON trademark and that the Domain Name, <hawaiiharley-davidson.com>, is
confusingly similar to Complainant’s mark.
The Respondent has not challenged the Complainant on this element. Moreover, previous UDRP Panels have held that
the addition of a geographic term to a mark in a domain name does not
distinguish the domain name from that mark, including a number of cases
involving Complainant’s trademarks. See, e.g., H-D
Michigan, Inc. v. Wan-Fu China, Ltd., FA 992015) (Nat. Arb. Forum
June 26, 2007) (finding the domain name <dublinharleydavidson.com>
confusingly similar to Complainant’s HARLEY-DAVIDSON mark); see also H-D Michigan, Inc. v.
Registrant FA 1109413 (Nat.
Arb. Forum Dec. 27, 2007) (“The <harley-davidsonshanghai.com> and
<harley-davidsonchina.com> domain names are confusingly similar to
Complainant’s HARLEY-DAVIDSON mark because the domain names both include
Complainant’s entire mark and include geographic terms, ‘shanghai’ and
‘china.’ Combining Complainant’s mark
with a geographic term is insufficient to distinguish the disputed domain names
from the [HARLEY-DAVIDSON] mark); see
also H-D Michigan, Inc. v. Metal Horse Motorcycles, D2003-0781 (WIPO Nov.
28, 2003) (finding the domain names <harley-davidson-london.com> and
<harley-davidson-uk.com> confusingly similar to Complainant’s
HARLEY-DAVIDSON mark).
Complainant has shown that Respondent is not commonly known by the Domain Name, nor has Respondent ever been an owner or licensee of the HARLEY-DAVIDSON mark. The WHOIS record for the Domain Name lists Respondent as Nathan Bingham. Respondent acknowledges that he is not an authorized dealer of Harley-Davidson goods or services and has not received permission to use the HARLEY-DAVIDSON mark, although his business rents Harley-Davidson motorcycles. Respondent does not deny that he uses the Domain Name to direct Internet visitors to his website, where he offers rentals of Harley-Davidson motorcycles in competition with Complainant’s authorized dealers.
The crux of Respondent’s position, however, is that because the Complainant’s authorized dealers already have their chosen domain names, he thought he was entitled to register the Domain Name when it was still available two years ago, containing a the Complainant’s HARLEY-DAVIDSON MARK combined with a geographic term (Hawaii) relevant to the area where his rental business operated. He has not sought to sell the Domain Name to anyone, nor has he tried to confuse anyone through the content on his website. He has invested significant capital to develop and market his website, and it would be unfair, now, to permit the Complainant to take it away.
The difficulty with Respondent’s position is that he did not have the right, in the first place, to register the Domain Name with full knowledge that it wholly encompassed the Complainant’s trademark and would trade on that mark’s goodwill, without first seeking permission from Complainant. The Respondent’s argument ignores the fact that he did not choose a domain name that was unique, self-standing and independent of any third-party trademark rights. Choosing such a domain name would have required that the Respondent invest time and money to develop some goodwill and reputation in his chosen business name and the associated domain name, and perhaps register appropriate trademark rights to secure them. Instead, he chose the Domain Names which, due to its confusing similarity with the Complainant’s HARLEY-DAVIDSON trademark, opportunistically took advantage of the Complainant’s goodwill and reputation. The Respondent’s use to-date under these circumstances does not constitute a bona fide use of the Domain Name pursuant to Section 4(c)(i) of the Policy. See e.g., Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (rejecting respondent’s claim that his investment of money and time demonstrated a legitimate interest in the disputed domain names because “[t]he problem with this argument is that it seeks to have the Panel ignore the well-known trademark rights which Yahoo! has already acquired and developed at great cost since 1994, particularly in the on-line commercial sphere).
In cases such as this, the Panel finds that the required declaration, which is part of every domain name registration contract (see below for the current text of GoDaddy’s Domain Name Registration Agreement) and intended to have a self-policing function, should have given the Respondent pause and persuaded it to contact Complainant to seek permission in the first place:
“to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights.”
See Ganz v. Schuessler Enter., Inc., FA 1230809 (Nat. Arb. Forum Dec. 10, 2008); see also Policy ¶ 2.
The Panel therefore agrees with the Complainant’s contention that Respondent’s registration and use of the Domain Name for a commercial website advertising motorcycle rental services that directly compete with Complainant’s rental services neither constitutes a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name under the Policy. See H-D Michigan, Inc. v. Henrik Hessbo d/b/a Fuc Et Viva, FA 1082084 (Nat. Arb. Forum Nov. 13, 2007) (where respondent used the <motoharley.com> domain name to advertise motorcycle rental services that compete with Complainant’s business, “we would be inclined to conclude that [r]espondent’s use does not [constitute] either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Kabushiki Kaisha Toshiba d/b/a Toshiba Corp. v. ICN-Toshiba D2004-0941 (WIPO Dec. 28, 2004) (holding respondent’s use of the domain name <icn-toshiba.com> for a website offering TOSHIBA products does not constitute a legitimate interest and holding “The fact that the [r]espondent’s website, or its business in general, offers the Complainant’s branded goods for sale does not in itself give it a right or legitimate interest in the domain name incorporating the Complainant’s mark.”); see also Takeda Pharmaceutical Co. Ltd. v. Kester, FA 823235 (Nat. Arb. Forum Dec. 1, 2006) (“I find that nominative fair use does allow Respondent to use Complainant’s ROZEREM mark to indicate in advertising or informational material that Respondent sells ROZEREM [products]; however, fair use does not go so far as to allow Respondent to use Complainant’s mark in its domain name. Respondent’s use in this case suggests an association with the Complainant which does not exist.”).
In light of the
above discussion and findings, the Panel does not need to draw out further this
decision. Panel finds that Respondent (i) was well-aware of the
Complainant’s HARLEY-DAVIDSON mark at the time of registration, and (ii) is
taking advantage of the confusing similarity between the Domain Names and
Complainant’s mark in order to profit from the goodwill associated with the
mark and to advertise his directly
competing rental services relating to HARLEY-DAVIDSON motorcycles, which
is indicative of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Complainant contends that registration of a
domain name with knowledge of the trademark owner’s rights has been
consistently found to constitute bad faith under the Policy. In this case, Respondent’s registration and use
of the Domain Name meets the bad-faith element set forth in Section 4(b)(iv) of the Policy.
Specifically, Respondent uses the Domain Name to intentionally attract,
for commercial gain, Internet users to his website by creating a likelihood of
confusion with Complainant and its HARLEY-DAVIDSON mark as to the
source, sponsorship, affiliation, and/or endorsement of Respondent’s website,
and the competing motorcycle rental services advertised on Respondent’s
website. Such confusion is particularly
likely due to Complainant’s naming practices for its authorized dealers,
whereby they may use domain names consisting of the HARLEY-DAVIDSON trademark,
in conjunction with a relevant geographic term. See,
e.g., H-D Michigan, Inc., supra; see also H-D
Michigan, Inc. v. Hog Heaven Motorcycles, FA 659657 (Nat. Arb. Forum Apr.
26, 2006) (holding “due to the
[business-competitive] character of Respondent’s [<columbusharley.com>] website,
Internet users are likely to become confused as to Complainant’s sponsorship of
or affiliation with the resulting website.
Such use of Complainant’s mark in the domain name for Respondent’s
commercial gain [contravenes] Policy ¶ 4(b)(iv) and is further evidence of bad
faith registration and use.”); see also H-D Michigan, Inc. v. TT&R, FA 126650
(Nat. Arb. Forum Nov. 20, 2002) (holding respondent used Complainant’s HARLEY-DAVIDSON mark in
the disputed domain name to attract “motorcycle buyers to its own website and
created a strong likelihood of confusion as to whether Respondent had any
affiliation with Complainant. These actions violate Policy ¶ 4(b)(iv)”).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hawaiiharley-davidson.com>
Domain Name be TRANSFERRED from Respondent to Complainant.
Christopher Gibson, Panelist
Dated: April 8, 2009
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