H-D Michigan,
Inc. v. Domain for sale -- Contact Us a/k/a Internet Associates Inc.
Claim Number:
FA0210000127721
PARTIES
Complainant is
H-D Michigan, Inc., Ann Arbor, MI, USA (“Complainant”) represented by Robert S. Gurwin, of Rader Fishman & Grauer PLLC. Respondent is Domain for Sale—Contact Us a/k/a Internet Associates Inc., Takapuna, NEW ZEALAND (“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAMES
The domain names at issue are <harley-davidsonmotorcompany.com>, and <harleydavidsonmotorcompany.net>, registered with Capital Networks/Total NIC.
PANEL
The undersigned certifies that she has acted
independently and impartially and to the best of her knowledge has no known
conflict in serving as Panelist in this proceeding.
Sandra Franklin as Panelist.
PROCEDURAL
HISTORY
Complainant submitted a Complaint to the National
Arbitration Forum (the “Forum”) electronically on October 10, 2002; the Forum
received a hard copy of the Complaint on October 10, 2002.
On October 14, 2002, Capital Networks/Total NIC
confirmed by e-mail to the Forum that the domain names <harley-davidsonmotorcompany.com> and <harleydavidsonmotorcompany.net> are registered with Capital
Networks/Total NIC and that Respondent is the current registrant of the
names. Capital Networks/Total NIC has
verified that Respondent is bound by the Capital Networks/Total NIC
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 October 15, 2002, a Notification of Complaint and
Commencement of Administrative Proceeding (the “Commencement Notification”),
setting a deadline of November 4, 2002 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@harley-davidsonmotorcompany.com and postmaster@harleydavidsonmotorcompany.net
by e-mail.
Having received no Response from Respondent, using the
same contact details and methods as were used for the Commencement
Notification, the Forum transmitted to the parties a Notification of Respondent
Default.
On November 25, 2002, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the Forum
appointed Sandra Franklin as Panelist.
Having reviewed the communications records, the
Administrative Panel (the “Panel”) finds that the Forum has discharged its
responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (the “Rules”) “to employ reasonably available means
calculated to achieve actual notice to Respondent.” Therefore, the Panel may issue its decision based on the
documents submitted and in accordance with the ICANN Policy, ICANN Rules, the
Forum’s Supplemental Rules and any rules and principles of law that the Panel
deems applicable, without the benefit of any Response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain names be
transferred from Respondent to Complainant.
PARTIES’
CONTENTIONS
A. Complainant
The <harley-davidsonmotorcompany.com> domain
name is identical to Complainant’s HARLEY-DAVIDSON
MOTOR COMPANY mark.
The
<harleydavidsonmotorcompany.net> domain name is confusingly similar
to Complainant's HARLEY-DAVIDSON MOTOR COMPANY mark.
Respondent has no rights or legitimate interests in
the disputed domain names.
Respondent registered and used the disputed domain
names in bad faith.
B. Respondent
Respondent failed to submit a Response.
FINDINGS
Complainant has
used the HARLEY-DAVIDSON and HARLEY-DAVIDSON MOTOR COMPANY marks since
1903. Complainant is one of the world’s
largest and most famous manufacturer and distributor of motorcycles, motorcycle
parts, and accessories. Complainant’s
Harley Owners Group (H.O.G.) is the largest factory-sponsored motorcycle club
in the world. In 2002, its membership
exceeded 640,000 members worldwide.
Complainant shipped over 234,461 motorcycles in 2001 with worldwide net
sales of $3.36 billion and was named “Company of the Year” by Forbes magazine for 2002.
Complainant holds
numerous registrations for its marks in the United States and throughout the
world. Complainant is presently the owner
of 590 trademark registrations for HARLEY-DAVIDSON in over 75 countries. Complainant’s marks are on the Principal
Register of the United States Patent and Trademark Office, including
Registration Numbers 1,640,258; 1,571,032; and 2,406,156.
Respondent
registered the <harley-davidsonmotorcompany.com> domain name on
January 27, 2002, and the <harleydavidsonmotorcompany.net>
domain name on February 18, 2002. Respondent put both of the disputed domain
name registrations up for sale immediately.
Respondent is displaying a “for sale” page at both of the dispute domain
names. Respondent has made no other use
of the disputed domain names.
Respondent does not have a license from Complainant to use the
HARLEY-DAVIDSON or HARLEY-DAVIDSON MOTOR COMPANY marks.
DISCUSSION
Paragraph 15(a) of 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.”
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
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 Respondent is identical or confusingly similar to a trademark or service
mark in which Complainant has rights; and
(2) 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.
Identical and/or
Confusingly Similar
Complainant has
established that it has rights in the HARLEY-DAVIDSON and HARLEY-DAVIDSON MOTOR
COMPANY marks through registration in the United States and throughout the
world, and through its longstanding use of the marks in relation to its
motorcycle business.
Respondent’s <harley-davidsonmotorcompany.com> domain
name is identical to Complainant’s HARLEY-DAVIDSON MOTOR COMPANY mark because
it incorporates the entirety of Complainant’s mark and merely adds the generic
top-level domain “.com.” The addition
of a generic top-level domain does not add any distinctive characteristics
because it is a required feature of every domain name. Therefore, Respondent’s <harley-davidsonmotorcompany.com> domain name does not
overcome a claim of identical or confusing similarity pursuant to Policy ¶
4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000)
(finding <pomellato.com> identical to Complainant’s mark because the
generic top-level domain (gTLD) “.com” after the name POMELLATO is not
relevant); see also Sporty's Farm L.L.C. vs. Sportsman's Mkt.,
Inc., 202 F.3d 489 (2d Cir. 2000), cert.
denied, 530 U.S. 1262 (2000),
("For consumers to buy things or gather information on the Internet, they
need an easy way to find particular companies or brand names. The most common
method of locating an unknown domain name is simply to type in the company name
or logo with the suffix .com").
Furthermore,
Respondent’s <harleydavidsonmotorcompany.net>
domain name is confusingly similar to Complainant’s HARLEY-DAVIDSON MOTOR COMPANY mark because
it merely omits the hyphen between HARLEY and DAVIDSON, and adds the generic
top-level domain “.net”. The omission
of a hyphen does not create a distinct mark capable of overcoming a claim of
confusing similarity. See Teradyne Inc. v. 4Tel Tech.,
D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the
registered mark is an insubstantial change. Both the mark and the domain name
would be pronounced in the identical fashion, by eliminating the hyphen");
see also Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June 19, 2000) (holding
that the domain name <cspan.net>, which omitted the hyphen from the
trademark spelling, C-SPAN, is confusingly similar to Complainant's mark). The addition of a generic top-level domain
also does not add any distinctive characteristics to the domain name and
therefore the disputed domain name does not overcome a Policy ¶ 4(a)(i) confusingly
similar analysis.
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Rights or
Legitimate Interests
Respondent has
failed to come forward with a Response.
Therefore it is presumed that Respondent has no rights or legitimate
interests in the disputed domain names.
See Pavillion Agency, Inc. v.
Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that
Respondents’ failure to respond can be construed as an admission that they have
no legitimate interest in the domain names); see also Parfums Christian
Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not
submitting a Response, Respondent has failed to invoke any circumstance which
could demonstrate any rights or legitimate interests in the domain name).
Furthermore, when
Respondent fails to submit a Response the Panel is permitted to make all
inferences in favor of Complainant. See Talk City, Inc. v. Robertson,
D2000-0009, (WIPO Feb. 29, 2000) (“In the absence of a response, it is
appropriate to accept as true all allegations of the Complaint”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000)
(finding it appropriate for the Panel to draw adverse inferences from
Respondent’s failure to reply to the Complaint).
Respondent is
making no use of the disputed domain names other than to offer its
registrations up for sale. To use a
disputed domain name exclusively to engage in the sale of its registration is
not considered to be a use in connection with a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair
use pursuant to Policy ¶ 4(c)(iii) and therefore Complainant has established
that Respondent has no rights or legitimate interests in the disputed domain
names. See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat.
Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist
when one has made no use of the websites that are located at the domain names
at issue, other than to sell the domain name registrations for profit); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083
(Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests
where Respondent registered the domain name with the intention of selling its
rights).
Furthermore,
based on the fame of Complainant’s HARLEY-DAVIDSON family of marks it would be
very difficult for Respondent to establish that it is commonly known as
HARLEY-DAVIDSON MOTOR COMPANY, <harleydavidsonmotorcompany.net>,
<harley-davidsonmotorcompany.com>, or any variation of the HARLEY-DAVIDSON family of marks. Respondent has failed to submit a Response
in this proceeding and therefore has presented no evidence that it is commonly
known by any variation of the HARLEY-DAVIDSON mark. As a result, the Panel infers that Respondent is not commonly
known by the disputed domain names and does not have rights or legitimate
interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See
Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001)
(finding sufficient proof that Respondent was not commonly known by a domain
name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of
Complainant’s well-established use of the mark); see also Nike, Inc. v. B. B.
de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate
interests where one “would be hard pressed to find a person who may show a
right or legitimate interest” in a domain name containing Complainant's
distinct and famous NIKE trademark).
The Panel finds that
Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Based on the fame
of Complainant’s HARLEY-DAVIDSON MOTOR COMPANY and HARLEY-DAVIDSON family of
marks it can be inferred that Respondent had knowledge of Complainant’s rights
when it registered the disputed domain names.
Registration of an infringing domain name, despite knowledge of
Complainant’s rights, is evidence of bad faith registration pursuant to Policy
¶ 4(a)(iii). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here
an alleged infringer chooses a mark he knows to be similar to another, one can
infer an intent to confuse"); see
also Samsonite Corp. v. Colony
Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of
bad faith includes actual or constructive knowledge of a commonly known mark at
the time of registration).
Registration of a
domain name primarily for the purpose of selling the registration is evidence
of bad faith pursuant to Policy ¶ 4(b)(i).
Based on the circumstances it can be inferred that Respondent registered
the disputed domain names in order to sell its rights in the
registrations. Respondent has not used
the disputed domain names for any purpose other than to post a “for sale” website,
which it posted immediately after it registered the two domain names in
dispute. Furthermore, the name of
Respondent’s business is “Domain for Sale.”
Therefore, Respondent’s behavior is evidence of registration and use in
bad faith pursuant to Policy ¶ 4(b)(i).
See Wembley Nat’l Stadium Ltd. v.
Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding bad faith based on the
apparent willingness of Respondent to sell the domain name registration in
issue from the outset, albeit not at a price reflecting only the costs of
registering and maintaining the name); see
also Microsoft Corp. v. Mehrotra,
D2000-0053 (WIPO Apr. 10, 2000) (finding bad faith where Respondent registered
the domain name for the purpose of selling its rights, as revealed by the name
Respondent chose for the registrant, “If you want this domain name, please
contact me”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that the requested relief shall be hereby granted.
Accordingly, it
is Ordered that the domain name <harleydavidsonmotorcompany.net>
and <harley-davidsonmotorcompany.com>
be transferred from Respondent to
Complainant.
Sandra Franklin,
Panelist
Dated: December 2,
2002
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