Polaris Industries Inc. v. Domains by Proxy, Inc. c/o Dynadot Privacy
Claim Number: FA1505001619794
Complainant is Polaris Industries Inc. (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is Domains by Proxy, Inc. c/o Dynadot Privacy (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <victorymotorcycles.org>, registered with Dynadot, LLC (R1266-LROR).
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 15, 2015; the Forum received payment on May 15, 2015.
On May 18, 2015, Dynadot, LLC (R1266-LROR) confirmed by e-mail to the Forum that the <victorymotorcycles.org> domain name is registered with Dynadot, LLC (R1266-LROR) and that Respondent is the current registrant of the name. Dynadot, LLC (R1266-LROR) has verified that Respondent is bound by the Dynadot, LLC (R1266-LROR) registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 18, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 8, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@victorymotorcycles.org. Also on May 18, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 12, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant has rights in the VICTORY MOTORCYCLES mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,207,376, registered on December 1, 1998).
2. Respondent’s <victorymotorcycles.org> domain name is identical to Complainant’s VICTORY MOTORCYCLES mark because it is differentiated by only the removal of the space between words and the addition of the generic top-level domain (“gTLD”) “.org.”
3. Respondent is not commonly known by the disputed domain name as the WHOIS information lists “Domains by Proxy, Inc. c/o Dynadot Privacy” as Registrant. Moreover, Respondent is not authorized to use Complainant’s VICTORY MOTORCYCLES mark.
4. Respondent uses the resolving website to host competing links.
5. Respondent uses the resolving website to host malware.
6. Respondent registered the domain name for the purpose of disrupting Complainant’s business and to attract Internet users for commercial gain.
7. Respondent registered the <victorymotorcycles.org> domain name with actual knowledge of Complainant’s rights in the VICTORY MOTORCYCLES mark.
8. The <victorymotorcycles.org> domain name was registered on January 7, 2014.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the VICTORY MOTORCYCLES mark. Respondent’s domain name is confusingly similar to Complainant’s VICTORY MOTORCYCLES mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <victorymotorcycles.org> domain name, and that Respondent registered and uses the domain name in bad faith.
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."
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.
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.”).
Complainant is a manufacturer of sport vehicles, including ATVs, snowmobiles, and motorcycles and it carries out this business using the VICTORY MOTORCYCLES mark. Complainant has rights in the VICTORY MOTORCYCLES mark through its registration with the USPTO (Reg. No. 2,207,376, registered on December 1, 1998). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant alleges that Respondent’s <victorymotorcycles.org> domain name is identical to Complainant’s VICTORY MOTORCYCLES mark because it is differentiated by only the addition of the gTLD “.org” and the removal of spaces between the words. Despite this changes, Respondent’s domain name is considered identical to Complainant’s mark. See Sea World, Inc. v. JMXTRADE.com, FA 872052 (Nat. Arb. Forum Feb. 12, 2007) (“[Since] [t]he top-level gTLD is merely a functional element required of every domain name, the <shamu.org> domain name is identical to the SHAMU mark under a Policy ¶ 4(a)(i).”); see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant alleges that Respondent is not commonly known by the disputed domain name. The WHOIS information lists “Domains by Proxy, Inc. c/o Dynadot Privacy” as Registrant and that Respondent has failed to provide any evidence to indicate that it is commonly known by the domain name. Moreover, Complainant urges that Respondent is not authorized to use Complainant’s mark. This lack of evidence is sufficient to show that the Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Accordingly, the Panel finds that Respondent is not commonly known by the <victorymotorcycles.org> domain name under Policy ¶ 4(c)(ii).
Complainant alleges that Respondent fails to use the resolving website to provide a bona fide offering of goods or services or legitimate and noncommercial fair use because Respondent uses the resolving website to host competing links and malware. Such uses show a lack of bona fide offering of goods or services or legitimate and noncommercial fair use pursuant to Policy ¶4(c)(i) and ¶4(c)(iii). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”); see also Hilton Hotels Corp. v. Padonack, FA 1043687 (Nat. Arb. Forum Sept. 6, 2007) (holding that the use of a disputed domain name to host a website that attempted to download a virus when accessed did not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name). Accordingly, the Panel finds that Respondent fails to use the resolving website to provide a bona fide offering of goods or services or legitimate and noncommercial fair use pursuant to Policy ¶4(c)(i) and ¶4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Responded registered and uses the <victorymotorcycles.org> domain name for the purpose of disrupting Complainant’s business operations. Complainant has shown that Respondent uses the resolving website to host competing links. Providing links to competitors of a complainant constitutes disruption under Policy ¶ 4(b)(iii), thereby showing bad faith in use and registration. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”). Accordingly, the Panel finds that Respondent registered and uses the <victorymotorcycles.org> domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant alleges that Respondent uses its resolving website to take advantage of the confusion of Internet users for financial gain by using the <victorymotorcycles.org> domain name to confuse Internet users about the identity of Respondent. Complainant argues that Respondent hosts links to competitors on its resolving website and does so with the intention of capitalizing on the confusion of Internet users who are looking for Complainant’s website. This amounts to bad faith use and registration pursuant to Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). Consequently, the Panel finds that Respondent has acted in bad faith according to Policy ¶ 4(b)(iv).
Complainant alleges that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the VICTORY MOTORCYCLES mark. Complainant urges that it is the only company to sell motorcycles branded with the VICTORY MOTORCYCLES. Complainant contends that because Respondent registered a domain entirely incorporating the mark to link to advertisements for motorcycles, Respondent must have actually been aware of Complainant’s rights in the VICTORY MOTORCYCLES mark. When a respondent has actual knowledge of a complainant’s rights in a mark, the registration of an identical domain name is done in bad faith under Policy ¶ 4(a)(iii). See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights). On this record, the Panel concludes that Respondent had actual knowledge of Complainant’s rights in the VICTORY MOTORCYCLES mark at the time of registration, and therefore Respondent registered the <victorymotorcycles.org> domain in bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant notes that Respondent uses the disputed domain name to distribute malware to unsuspecting Internet users that come upon Respondent’s website. Such behavior indicates bad faith under Policy ¶ 4(a)(iii). See Victoria’s Secret Stores Brand Mgmt., Inc. v. PrivacyProtect.org, FA 1357512 (Nat. Arb. Forum December 17, 2010) (finding that a domain name attracting Internet users to a resolving website that attempts to download malicious software onto their computers to steal personal information “indicates bad faith registration and use according to Policy ¶ 4(a)(iii)”). Accordingly, the Panel finds that Respondent has acted in bad faith under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <victorymotorcycles.org> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: June 22, 2015
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