H-D Michigan Inc. v. William Martin d/b/a
Maramco
Claim
Number: FA0501000396800
Complainant is H-D Michigan Inc. (“Complainant”), represented
by David Kelly, of Finnegan Henderson Farabow Garrett & Dunner L.L.P., 901 New York Avenue NW, Washington,
DC 20001. Respondent is William Martin d/b/a Maramco (“Respondent”),
20440 International Blvd. #68, Seatac, WA 98198.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <paradiceharley.com>, <paradiceharleydavidson.com>,
<paradiseharley.com> and <paradiseharleydavidson.com>,
registered with Register.com.
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.
Honorable
Paul A. Dorf (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on January
3, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 4, 2005.
On
January 4, 2005, Register.com confirmed by e-mail to the National Arbitration
Forum that the domain names <paradiceharley.com>,
<paradiceharleydavidson.com>, <paradiseharley.com> and
<paradiseharleydavidson.com> are registered with Register.com and
that Respondent is the current registrant of the names. Register.com has
verified that Respondent is bound by the Register.com 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
January 5, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
January 25, 2005 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@paradiceharley.com,
postmaster@paradiceharleydavidson.com, postmaster@paradiseharley.com and
postmaster@paradiseharleydavidson.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
January 31, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Honorable
Paul A. Dorf (Ret.) 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 <paradiceharley.com>,
<paradiceharleydavidson.com>, <paradiseharley.com> and <paradiseharleydavidson.com>
domain names are confusingly similar to Complainant’s HARLEY and
HARLEY-DAVIDSON marks.
2. Respondent does not have any rights or
legitimate interests in the <paradiceharley.com>,
<paradiceharleydavidson.com>, <paradiseharley.com> and
<paradiseharleydavidson.com> domain names.
3. Respondent registered and used the <paradiceharley.com>,
<paradiceharleydavidson.com >, <paradiseharley.com> and <paradiseharleydavidson.com>
domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, H-D
Michigan, Inc., has engaged in the manufacture, advertising, and sale of
motorcycles under the HARLEY-DAVIDSON mark since 1903. In addition, Complainant has provided
motorcycle parts, motorcycle accessories, motorcycle clothing, travel-related
products and services, toys, calendars, posters, jewelry and novelties under
the HARLEY and HARLEY-DAVIDSON marks for decades.
Complainant owns
almost 850 trademarks and service mark registrations in more than 75 countries
around the world for the HARLEY and HARLEY-DAVIDSON marks. Complainant has registered the HARLEY (Reg.
Nos. 1,352,679 issued August 6, 1985; 1,406,876 issued August 26, 1986) and
HARLEY-DAVIDSON (Reg. Nos. 1,078,871 issued December 6, 1977; 1,311,457 issued
December 25, 1984; 2,496,088 issued October 9, 2001) marks with the United
States Patent and Trademark Office (“USPTO”).
Complainant
markets its motorcycles, motorcycle parts and accessories, clothing and travel
services through a network of authorized dealers. Complainant has more than 1,500 authorized dealers throughout the
world. One of Complainant’s authorized
dealerships, located in Tigard, Oregon, is named Paradise Harley-Davidson.
Respondent
registered the <paradiceharley.com> and <paradiceharleydavidson.com>
domain names on July 22, 2004 and the <paradiseharley.com> and <paradiseharleydavidson.com>
domain names on July 24, 2004.
Respondent’s domain names resolve to a website that features links to
various competing motorcycle-related websites.
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.
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 has
established rights in the HARLEY and HARLEY-DAVIDSON marks through registration
with the USPTO as well as through continuous use of the marks in commerce. See Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001)
(finding that successful trademark registration with the United States Patent
and Trademark Office creates a presumption of rights in a mark); see also Men’s
Wearhouse, Inc. v. 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.”).
Respondent’s
domain names are confusingly similar to Complainant’s famous marks because the
domain names incorporate either the HARLEY or HARLEY-DAVIDSON mark in its
entirety and merely add the term “paradise” or “paradice,” which describes
Complainant’s authorized dealership in Tigard, Oregon. Such minor changes are not enough to
overcome a finding of confusing similarity pursuant to Policy ¶ 4(a)(i). 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 Complainant combined with a generic
word or term); see also Space Imaging LLC v.
Brownell, AF-0298 (eResolution Sept. 22,
2000) (finding confusing similarity where Respondent’s domain name combines
Complainant’s mark with a generic term that has an obvious relationship to
Complainant’s business).
Furthermore,
the addition of the generic top-level domain “.com” and the omission of the
hyphen from the HARLEY-DAVIDSON mark is insufficient to negate the confusing
similarity between Respondent’s domain names and Complainant’s marks pursuant
to Policy ¶ 4(a)(i). See Nev.
State Bank v. Modern Ltd. – Cayman Web Dev., FA
204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that
the addition of a generic top-level domain is irrelevant when considering
whether a domain name is identical or confusingly similar under the Policy.”); see
also Isleworth
Land Co. v. Lost in Space, SA,
FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding it is a “well established principle
that generic top-level domains are irrelevant when conducting a Policy ¶
4(a)(i) analysis”); see also 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).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint.
Therefore, the Panel may accept all reasonable allegations and
assertions set forth in the Complaint as true.
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 Ziegenfelder Co. v. VMH Enter.,
Inc., D2000-0039 (WIPO Mar. 14, 2000) (drawing two inferences based on
Respondent’s failure to respond: (1) Respondent does not deny the facts
asserted by Complainant, and (2) Respondent does not deny conclusions which
Complainant asserts can be drawn from the facts).
In addition, the
Panel may consider Respondent’s failure to respond as evidence that Respondent
lacks rights and legitimate interests in the domain names pursuant to Policy ¶
4(a)(ii). See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec.
31, 2002) (“Respondent's failure to respond not only results in its failure to
meet its burden, but also will be viewed as evidence itself that Respondent
lacks rights and legitimate interests in the disputed domain name.”); see
also Geocities v.
Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has
no rights or legitimate interests in the domain name because Respondent never
submitted a response or provided the Panel with evidence to suggest otherwise).
There is no
indication that Respondent is commonly known by the disputed domain
names or that Respondent is authorized to register domain names that
incorporate Complainant’s HARLEY or HARLEY-DAVIDSON marks. Therefore, the Panel concludes that
Respondent lacks rights and legitimate interests in the domain name pursuant to
Policy ¶ 4(c)(ii). See Ian
Schrager Hotels, L.L.C. v. Taylor, FA
173369 (Nat. Arb. Forum Sept. 25, 2003) (finding
that without demonstrable evidence to support the notion that a respondent is
commonly known by a domain name, the notion must be rejected); see also Compagnie
de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
Respondent was not commonly known by the mark and never applied for a license
or permission from Complainant to use the trademarked name).
Furthermore,
Respondent is using the disputed domain names, which contain confusingly
similar versions of Complainant’s marks, to market competing motorcycle-related
websites. Such use is not 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 of the mark pursuant to
Policy ¶ 4(c)(iii). See DLJ Long
Term Inv. Corp. v. BargainDomainNames.com, FA
104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent
is not using the disputed domain name in connection with a bona fide offering
of goods and services because Respondent is using the domain name to divert
Internet users to <visual.com>, where services that compete with
Complainant are advertised.”); see also N.
Coast Med., Inc. v. Allegro Med.,
FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no rights or legitimate
interests in a domain name that diverted Internet users to Respondent’s
competing website through the use of Complainant’s mark).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has
registered and used the disputed domain names in bad faith pursuant to Policy ¶
4(b)(iii) by using the domain names, which contain confusing similar versions
of Complainant’s HARLEY and HARLEY-DAVIDSON marks, to market competing
motorcycle-related websites. See S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding
Respondent acted in bad faith by attracting Internet users to a website that
competes with Complainant’s business); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385
(Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from
Complainant's marks suggests that Respondent, Complainant’s competitor, registered
the names primarily for the purpose of disrupting Complainant's business).
Furthermore,
Respondent is capitalizing on the goodwill of the HARLEY and HARLEY-DAVIDSON
marks by using the disputed domain names to divert Internet users to a website
featuring links to competing motorcycle-related websites. The Panel infers that Respondent receives
click-through fees for redirecting Internet users to these competing
websites. Since the disputed domain
names contain Complainant’s marks, consumers searching for Complainant would
become confused as to Complainant’s affiliation with the resulting
website. Therefore, Respondent’s
opportunistic use of the disputed domain names represents bad faith
registration and use under Policy ¶ 4(b)(iv).
See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002)
(finding that if Respondent profits from its diversionary use of Complainant's
mark when the domain name resolves to commercial websites and Respondent fails
to contest the Complaint, it may be concluded that Respondent is using the
domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Reuters Ltd. v. Global Net 2000, Inc.,
D2000-0441 (WIPO July 13, 2000) (finding bad faith where Respondent attracted
users to a website sponsored by Respondent and created confusion with
Complainant’s mark as to the source, sponsorship, or affiliation of that
website).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <paradiceharley.com>,
<paradiceharleydavidson.com >, <paradiseharley.com> and <paradiseharleydavidson.com>
domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated:
February 16, 2005
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