H-D
Claim Number: FA0909001286735
Complainant is H-D
Michigan, LLC (“Complainant”), represented by David M. Kelly, of Finnegan, Henderson, Farabow, Garrett &
Dunner, L.L.P., Washington, D.C., USA.
Respondent is David Martin (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <darkcustom.com> and <officialharleydavidsonlive.com>, registered with Godaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 29, 2009; the National Arbitration Forum received a hard copy of the Complaint on September 30, 2009.
On September 29, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <darkcustom.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. 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 October 6, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <officialharleydavidsonlive.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. 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 October 9, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 29, 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@darkcustom.com and postmaster@officialharleydavidsonlive.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 4, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <darkcustom.com> domain name is identical to Complainant’s DARK CUSTOM mark and Respondent’s <officialharleydavidsonlive.com> domain name is confusingly similar to Complainant’s HARLEY-DAVIDSON mark.
2. Respondent does not have any rights or legitimate interests in the <darkcustom.com> and <officialharleydavidsonlive.com> domain names.
3. Respondent registered and used the <darkcustom.com> and <officialharleydavidsonlive.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, H-D Michigan, LLC, is a world-famous manufacturer and seller of motorcycles and motorcycle accessories. Complainant owns a number of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the HARLEY-DAVIDSON mark (e.g., Reg. No. 1,078,871 issued December 6, 1977). In addition to Complainant’s HARLEY-DAVIDSON mark, Complainant has used the DARK CUSTOM mark since January 19, 2008, in association with some of Complainant’s most popular motorcycle models. Since its unveiling on January 19, 2008, Complainant launched the website located at the <harley-davidson/darkcustom> domain name, issued press releases, and spent millions of dollars in promoting the DARK CUSTOM mark. Complainant has had substantial and significant sales of motorcycles and motorcycle and accessories under the DARK CUSTOM mark.
Respondent registered the <darkcustom.com> domain name of January 22, 2008 and the <officialharleydavidsonlive.com> domain name on March 5, 2007. Respondent’s disputed domain names resolve to websites displaying third-party links to websites offering motorcycles and motorcycle accessories in competition with Complainant.
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 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
Paragraph 4(a) of the Policy requires that 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.
Complainant asserts and has submitted evidence of several federal trademark registrations for the HARLEY-DAVIDSON mark with the USPTO (e.g., Reg. No. 1,078,871 issued December 6, 1977). As a result, the Panel finds that Complainant’s federal trademark registration with the USPTO sufficiently establishes Complainant’s rights in the HARLEY-DAVIDSON mark pursuant to Policy ¶ 4(a)(i). See Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i)); see also Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)… .”).
In addition, Complainant argues that it has established common law rights in the DARK CUSTOM mark pursuant to Policy ¶ 4(a)(i) through its history of continuous use and showing of secondary meaning. Complainant has used the DARK CUSTOM mark in connection with its DARK CUSTOM line of motorcycles and motorcycle accessories since January 19, 2008. Complainant provides evidence that it operates its official website promoting the DARK CUSTOM line of products at the <harley-davidson/darkcustom.com> domain name and has done so continuously and exclusively since its unveiling in 2008. Additionally, Complainant offers evidence that Complainant has spent significant amounts of money on advertising, marketing, and promoting the DARK CUSTOM mark, which has had the effect of making Complainant’s DARK CUSTOM line of products one of Complainant’s most successful lines of motorcycles and motorcycle accessories. The Panel finds that Complainant has established common law rights by acquiring a secondary meaning in the DARK CUSTOM mark pursuant to Policy ¶ 4(a)(i) predating Respondent’s January 22, 2008 registration of the <darkcustom.com> domain name. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers sufficient to establish common law rights where the complainant had been continuously and extensively promoting a real estate development under the mark for several years).
Complainant argues that Respondent’s <darkcustom.com> domain name is identical to Respondent’s
DARK CUSTOM mark pursuant to Policy ¶ 4(a)(i). Respondent’s <darkcustom.com>
domain name contains Complainant’s DARK CUSTOM mark in its entirety, omits a
space between the terms, and adds the generic top-level domain (“gTLD”)
“.com.” The Panel finds that the
omission of spacing and the addition of a gTLD are irrelevant in distinguishing
a disputed domain name from an established mark. See Microsoft
Corp. v. Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding that the domain
name <microsoft.org> is identical to the complainant’s mark); see also
Additionally, Complainant argues that Respondent’s <officialharleydavidsonlive.com> domain name is confusingly similar to Complainant’s HARLEY-DAVIDSON mark pursuant to Policy ¶ 4(a)(i). Respondent’s <officialharleydavidsonlive.com> domain name contains Complainant’s HARLEY-DAVIDSON mark, omits a hyphen, adds the terms “official” and “live,” and adds the gTLD “.com.” The Panel finds that the addition of generic or descriptive terms such as “official” and “live” to a registered mark in a disputed domain name creates a confusing similarity between the disputed domain name and the registered mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied). In addition, the Panel finds that the omission of punctuation marks such as hyphens and the addition of a gTLD are irrelevant in distinguishing a disputed domain name from a registered mark. See Ritz-Carlton Hotel Co. v. Club Car Executive Transp., D2000-0611 (WIPO Sept. 18, 2000) (finding that removing a hyphen in the domain names is not sufficient to differentiate the domain names from the mark); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Therefore, the Panel finds that Respondent’s <officialharleydavidsonlive.com> domain name is confusingly similar to Complainant’s HARLEY-DAVIDSON mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks all rights and legitimate interests in the disputed domain names. When Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). The Panel finds that in this case, Complainant has established a prima facie case and Respondent has failed to submit a Response to these proceedings. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement. Here, Complainant has alleged that Respondent does not own any rights in the terms STARWOOD or STARWOODS, and that Respondent’s use of the Domain Name is not a fair one. These unsupported assertions, though sparse, are sufficient to make a prima facie showing in regard to the legitimacy element.”); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”).
Complainant contends that Respondent is neither commonly known by nor licensed to register the disputed domain names. The Panel finds that registrant’s WHOIS information, “David Martin,” demonstrates that Respondent is not commonly known by the disputed domain names. Therefore, pursuant to Policy ¶ 4(c)(ii), Respondent lacks rights and legitimate interests in the disputed domain names. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Respondent is using the disputed domain names to display links advertising third-party
websites in competition with Complainant’s offering of motorcycles and
motorcycle accessories. The Panel infers
that Respondent is using the disputed domain names to earn click-through fees,
and thus finds that Respondent has not made 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 Wells Fargo
& Co. v. Lin Shun Shing, FA 205699
(Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct
Internet traffic to a website featuring pop-up advertisements and links to
various third-party websites is neither a bona fide offering of goods or
services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii) because the registrant presumably receives
compensation for each misdirected Internet user); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that
the respondent was not using the domain names for a bona fide offering
of goods or services nor a legitimate noncommercial or fair use because the
respondent used the names to divert Internet users to a website that offered
services that competed with those offered by the complainant under its marks).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent intended to disrupt Complainant’s business and take advantage of Complainant’s goodwill surrounding its marks by displaying third-party links to Complainant’s competitors in the motorcycle and motorcycle accessory industry. The Panel therefore finds that Respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Travant Solutions, Inc. v. Cole, FA 203177 (Nat. Arb. Forum Dec. 6, 2003) (“Respondent registered and used the domain name in bad faith, pursuant to Policy ¶ 4(b)(iii), because it is operating on behalf of a competitor of Complainant . . .”); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
In addition, Respondent has created a likelihood of
confusion for commercial gain as to Complainant’s source and affiliation with
the disputed domain names and
the resolving websites. Respondent is
presumably monetarily benefiting through the receipt of referral fees accrued
when Internet users click on the competitive links. This constitutes evidence that Respondent has
registered and used the disputed domain names in bad faith under Policy ¶ 4(b)(iv). See Asbury Auto. Group,
Inc. v.
Lastly, Complainant argues that Respondent’s registration of the <darkcustom.com> domain name was evidence of opportunistic bad faith because Respondent registered the <darkcustom.com> domain name only three days after Complainant launched its DARK CUSTOM product line. The Panel finds that Respondent’s opportunistic bad faith is further evidence that Respondent’s registration and use of the <darkcustom.com> domain name was in bad faith pursuant to Policy ¶ 4(a)(iii). See Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”); see also Tech. Props., Inc. v. Hussain, FA 95411 (Nat. Arb. Forum Sept. 14, 2000) (“The Respondent took advantage of the public announcement that Tandy Corporation was changing its name to RadioShack by registering the domain names on the same day as a public announcement of a company’s name change. This is also evidence of bad faith.”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <darkcustom.com> and <officialharleydavidsonlive.com> domain names be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: November 16, 2009
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