KTM Sportmotorcycle USA, Inc. v. Cycle
Hutt, Inc. a/k/a Justin Bohn and Tammy Bohn a/k/a Tammy Bohn
Claim Number: FA0304000155894
PARTIES
Complainant
is KTM Sportmotorcycle USA, Inc.,
Amherst, OH (“Complainant”) represented by Gordon
D. Kinder of Renner, Otto, Boisselle & Sklar, LLP. Respondent is Cycle Hutt, Inc. a/k/a Justin Bohn and Tammy Bohn a/k/a Tammy Bohn, Bismark, ND (“Respondent”) represented by Jonathan P. Sanstead of Pearce & Durick.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <ktmpowersports.com>, <ktmtech.com>, <oldktm.com>, <vintagektm.com>, <teamktm.com>
and <ridektm.com>,
registered with Register.com; <racektm.com>, <ktmunderground.com>, <ktmsportmotorcycles.com>, <ktmsportminicycles.com>, <ktmsales.com>, <ktmroadbikes.com>, <ktmpowerwear.com>, <ktmowners.com>, <ktmonline.com>, <ktmnews.com>, <ktmmotorcycles.com>, <ktmmagazine.com>, <ktmhardequipment.com>, <ktmdirect.com>, <ktmbikes.com>, <ktmagazin.com> and <ktmadventuretours.com>, registered with and Go Daddy Software, Inc.; and <ktm.com>, registered with Network
Solutions, 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.
Terry
F. Peppard, Houston Putnam Lowry and David P. Miranda, Chair, as Panelists.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on April 25, 2003; the Forum received a hard copy of the
Complaint on April 28, 2003.
On
April 28, 2003, Register.com confirmed by e-mail to the Forum that the domain
names <ktmpowersports.com>, <ktmtech.com>, <oldktm.com>, <vintagektm.com>, <teamktm.com>
and <ridektm.com> are
registered with Register.com and that the Respondent is the current
registrant of the names. On April 28, 2003, Go Daddy Software, Inc. confirmed
by e-mail to the Forum that the domain names <racektm.com>, <ktmunderground.com>, <ktmsportmotorcycles.com>, <ktmsportminicycles.com>, <ktmsales.com>, <ktmroadbikes.com>, <ktmpowerwear.com>, <ktmowners.com>, <ktmonline.com>, <ktmnews.com>, <ktmmotorcycles.com>, <ktmmagazine.com>, <ktmhardequipment.com>, <ktmdirect.com>, <ktmbikes.com>, <ktmagazin.com> and <ktmadventuretours.com> are registered with Go Daddy Software, Inc. and that the Respondent is
the current registrant of the names. On April 29, 2003, Network Solutions, Inc.
confirmed by e-mail to the Forum that the domain name <ktm.com> is registered with Network Solutions, Inc. and that the Respondent is
the current registrant of the name. Register.com, Go Daddy Software,
Inc. and Network Solutions, Inc. have each verified that Respondent is bound by
their respective registration agreements 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
May 9, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 29,
2003 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@ktm.com, postmaster@ktmadventuretours.com,
postmaster@ktmagazin.com, postmaster@ktmbikes.com, postmaster@ktmdirect.com,
postmaster@ktmhardequipment.com, postmaster@ktmmagazine.com,
postmaster@ktmmotorcycles.com, postmaster@ktmnews.com,
postmaster@ktmpowersports.com, postmaster@ktmonline.com,
postmaster@ktmowners.com, postmaster@ktmpowerwear.com,
postmaster@ktmroadbikes.com, postmaster@ktmsales.com,
postmaster@ktmsportminicycles.com, postmaster@ktmsportmotorcycles.com, postmaster@ktmtech.com,
postmaster@ktmunderground.com, postmaster@oldktm.com, postmaster@racektm.com,
postmaster@ridektm.com, postmaster@teamktm.com and postmaster@vintagektm.com by
e-mail.
A
timely Response was received and determined to be complete on May 29, 2003.
An
untimely Additional Submission was received from Complainant on June 5, 2003.
An
untimely Additional Submission was received from Respondent on June 12, 2003.
On June 25, 2003, pursuant to Complainant’s request to
have the dispute decided by a three-member
Panel, the Forum appointed Terry F.
Peppard, Houston Putnam Lowry and David P. Miranda, Chair, as Panelists.
RELIEF SOUGHT
Complainant requests that the domain
names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant KTM Sportmotorcycle USA, Inc. (“KTM” or
“Complainant”) is the owner of registered trademark KTM for motorcycles (Reg.
No. 1,664,945 registered on November 19, 1991). Complainant sells its KTM products through a network of dealers
who in turn sell to retail customers.
Complainant contends that its products are widely known within the
community of motorcycle riders, dealers and manufacturers.
On or about June 19, 2000 KTM entered into a dealer
agreement with the Respondent Cycle Hutt (“Respondent”). KTM contends that Respondent has registered
and used the domain name <ktm.com>
and other domain names listed above, that begin with or include KTM’s
registered mark, KTM. KTM contends that
customers and dealers are likely to be confused about the sponsorship of the <ktm.com> website and other
domain names at issue. KTM contends
that the Respondent has no right or legitimate interest in the domain names
which are the subject of this Complaint because Justin and Tammy Bohn (owners
of Cycle Hutt) never had any right or permission as individuals to use the KTM
mark and Respondent Cycle Hutt is no longer a dealer authorized by KTM to sell
Complainant’s motorcycles, parts or accessories or use the KTM mark. KTM contends that the domain name should be
considered as having been registered and used in bad faith because the
dealership agreement between the parties has been terminated and use of the
domain names after such determination is for the purpose of disrupting KTM’s
business. KTM also contends that
Respondent’s bad faith is exhibited by the multiple domain names registered by
Respondents, demonstrating an attempt to prevent Complainant KTM from
registering its mark as a domain name and blocking alternate names.
B.
Respondent
Respondent does not dispute that its domains are identical
or confusingly similar to Complainant’s KTM mark. Respondent contends that it has rights to and legitimate interest
in the disputed domain names because each of the domain names was registered
and used to promote its KTM dealership activities. Respondent contends that the dealer agreement between the parties
was wrongfully terminated by KTM in an attempt to acquire the <ktm.com> domain name and other
domain names. Respondent contends that
its registration and use of the disputed domain names are for the bona fide
business purpose of offering goods and services prior to notice of the present
dispute. Respondent contends that while
negotiating the dealer agreement with KTM, it notified KTM that it intended to
use the domain names <ktmsales.com> and <ktmonline.com>
for sales and information pertaining to its KTM dealership. Respondent contends that before purchasing
the domain name ktm.com it contacted a KTM representative about its intent to
purchase the domain name and received encouragement from KTM regarding its
purchase of the domain name. Respondent
contends that it purchased the domain name <ktm.com>
for $80,000 and continued its efforts to sell KTM goods via the Internet
through its various KTM related websites.
C.
Additional Submissions
Complainant
submitted an additional response that was considered by the Panel. Complainant’s additional response included
reference to exhibits that were not originally provided to the Panel and
Complainant was provided with an opportunity to supplement its additional
response to include said exhibits, all of which were considered by the
Panel. Complainant’s additional
response contends that certain Respondent domain names were registered prior to
execution of the dealership agreement, thus prior to Respondents having any
interest in those domains, and as such, the registrations are presumptively in
bad faith. KTM contends that the
language of the dealer agreement permits the Respondent to use “the trade names
and trademarks of KTM Sportmotorcycle, KTM Sportminicycle and K-style
Trademarks (alone)… during the term of this agreement for promotion of KTM
products.” KTM contends Respondent is
limited to use only the three trademarks mentioned in the agreement and not
permitted to otherwise use the KTM mark.
KTM does not submit any proof disputing the contention by Respondent
that KTM encouraged Respondent to register the domain name <ktm.com>.
The
Panel also considered Respondent’s additional response in which it contends that
pursuant to an addendum to the dealer agreement, it was permitted to use “the
trade names and trademarks of KTM”.
Respondent also contends that the disputed domain names which were
registered prior to the execution of the dealer agreement were based upon a
good faith intention to become a KTM dealer.
Respondent contends that its good faith efforts are evidenced by its
subsequent negotiation and consummation of a dealer agreement with KTM and the
fact that it disclosed to KTM in Respondent’s business plan that it had
registered and had intended to use certain KTM related domain names with
respect to its intended business of selling KTM goods.
FINDINGS
Based upon its review of all the evidence
of record, the panel finds that: (1) The disputed domain names are confusingly
similar to the trademark KTM to which Complainant has rights; (2) Complainant
has failed to establish that Respondent has no rights or legitimate interest in
the domain names at issue; and (3) Complainant has failed to establish that the
domain names were registered and are being used in bad faith.
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.
Complainant
has produced evidence that it holds a trademark registration with the United
States Patent and Trademark Office (“USPTO”) for the KTM mark (Reg. No.
1,664,945 registered on November 19, 1991) related to motorcycles. The Panel
concludes that this evidence supports Complainant’s assertion that it has
rights in the KTM mark pursuant to Policy ¶ 4(a)(i). See The Men’s Wearhouse,
Inc. v. Brian Wick, FA 117861 (Nat. Arb. Forum Sept. 16 2002) (“Under U.S.
trademark law, registered marks hold a presumption that they are inherently
distinctive and have acquired secondary meaning”).
Complainant contends that Respondent’s <ktm.com>, <ktmadventuretours.com>, <ktmagazin.com>, <ktmbikes.com>, <ktmdirect.com>, <ktmhardequipment.com>, <ktmmagazine.com>, <ktmmotorcycles.com>, <ktmnews.com>, <ktmpowersports.com>, <ktmonline.com>, <ktmowners.com>, <ktmpowerwear.com>, <ktmroadbikes.com>, <ktmsales.com>, <ktmsportminicycles.com>, <ktmsportmotorcycles.com>, <ktmtech.com>, <ktmunderground.com>, <oldktm.com>, <racektm.com>, <ridektm.com>, <teamktm.com>
and <vintagektm.com>
domain names (hereinafter “disputed domain names”) are identical or confusingly
similar to Complainant’s KTM mark because each of them appropriates the mark
and all but one add a generic term or generic terms to the end of Complainant’s
mark.
Respondent does not dispute that its domain names are
identical or confusingly similar to Complainant’s mark. Complainant has established that the domain
names registered by the Respondent are identical or confusingly similar to the
trademark in which the Complainant has rights.
Respondent contends that it has rights to and
legitimate interests in the disputed domain names because each of the domain
names was registered and used to promote its KTM dealership. Respondent argues
that the dealer agreement between the present parties was wrongfully terminated
by Complainant in bad faith. The Panel
finds that before any notice of this dispute Respondent was making a bona fide
offering of goods and services with regard to Policy ¶ 4(c)(i) because
Respondent was a distributor of Complainant’s goods. See
K&N Eng'g., Inc. v. Kinnor Serv.,
D2000-1077 (WIPO Jan. 19, 2001) (finding legitimate interest because
“Respondent has been an authorized distributor of the Complainant's goods for
many years. The Respondent is in the business of selling the Complainant's
products and is using the Domain Name in connection with that business”); see
also Draw-Tite, Inc. v. Plattsburgh
Spring Inc., D2000-0017 (WIPO Mar. 14, 2000) (finding a bona fide sale of
goods under the domain name <drawtite.com> where Respondent used the
website to sell Complainant’s towing equipment and trailer accessories).
KTM contends that the dealer agreement
between the parties no longer provides Respondent with the right or legitimate
interest in the domain names because the dealer agreement has been terminated. Respondent contends that KTM terminated the
agreement in bad faith in an effort to acquire the domain names at issue. The dispute between the parties thus also
includes an issue based in contract which is beyond the scope of the UDRP and
cannot be the basis for the transfer of the disputed domain names. See Discover New England v. The Avanti
Group, Inc. FA 123886 (Nat. Arb. Forum Nov. 6, 2002) (finding the dispute
outside the scope of the UDRP because the dispute centered on interpretation of
contract language and whether or not a breach existed); see also Thread.com, LLC v. Poploff, D2000-1470
(WIPO Jan. 5, 2001) (refusing to transfer the domain name and stating that the
ICANN Policy does not apply because attempting “to shoehorn what is essentially
a business dispute between former partners into a proceeding to adjudicate
cybersquatting is, at its core, misguided, if not a misuse of the Policy”).
Respondent’s
registration and use of the disputed domain names does not amount to bad faith
because Respondent was making a bona fide offering of goods and services prior
to notice of the present dispute. See DJF Assocs., Inc. v. AIB Communications,
FA 95612 (Nat. Arb. Forum Nov. 1, 2000) (finding Respondent has shown that it
has a legitimate interest in the domain name because Respondent selected the
name in good faith for its website, and was offering services under the domain
name prior to the initiation of the dispute); see also Gorstew Ltd., Jamaica & Unique Vacations
v. Twinsburg Travel, No. FA 94944 (NAF July 7, 2000) (finding no bad faith
where Respondent used <sandalsoutlet.com> and other domain names
incorporating the SANDALS mark, as an agent, in good faith, on behalf of
Sandals Resorts).
In
addition, both prior to and during the dealer agreement, Respondent notified
Complainant that it intended to and was in fact using domain names that
included the KTM mark for the purposes of offering KTM related goods
online. KTM entered into the dealer
agreement with the knowledge of Respondent’s intentions, did not object to this
use by Respondent and there is evidence that Complainant encouraged Respondent
to register at least one of the domain names, <ktm.com>, for the purpose of promoting and selling KTM goods
online. A trademark owner may not
actively encourage a third party to expend substantial money and effort to
purchase and promote a domain name containing its trademark and then use the
UDRP arbitration process to obtain a transfer of that domain name.
DECISION
Having
failed to establish the second and third elements required under ICANN Policy,
the Panel concludes that relief requested shall be DENIED.
Accordingly, it is Ordered that the <ktm.com>, <ktmadventuretours.com>, <ktmagazin.com>, <ktmbikes.com>, <ktmdirect.com>, <ktmhardequipment.com>, <ktmmagazine.com>, <ktmmotorcycles.com>, <ktmnews.com>, <ktmpowersports.com>, <ktmonline.com>, <ktmowners.com>, <ktmpowerwear.com>, <ktmroadbikes.com>, <ktmsales.com>, <ktmsportminicycles.com>, <ktmsportmotorcycles.com>, <ktmtech.com>, <ktmunderground.com>, <oldktm.com>, <racektm.com>, <ridektm.com>, <teamktm.com>
and <vintagektm.com> domain names are not transferred.
Dated: July 10, 2003
Terry F. Peppard, Panelist
Houston Putnam Lowry, Panelist
David P. Miranda, Panel Chair
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