H-D Michigan Inc. v. Hog Heaven Motorcycles
Claim Number: FA0603000659657
Complainant is H-D Michigan Inc. (“Complainant”), represented by David M. Kelly, of Finnegan Henderson Farabow Garrett & Dunner L.L.P., 901 New York Avenue Nw, Washington, DC 20001. Respondent is Hog Heaven Motorcycles (“Respondent”), 3441 Hamilton Road, Columbus, GA 31904.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <columbusharley.com>, registered with GoDaddy Software Inc.
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 as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 14, 2006; the National Arbitration Forum received a hard copy of the Complaint on March 15, 2006.
On March 14, 2006, GoDaddy Software Inc. confirmed by e-mail to the National Arbitration Forum that the <columbusharley.com> domain name is registered with GoDaddy Software Inc. and that Respondent is the current registrant of the name. GoDaddy Software Inc. has verified that Respondent is bound by the GoDaddy Software 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 March 17, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 6, 2006 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@columbusharley.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 13, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant manufactures and markets motorcycles, motorcycle parts and accessories, and motorcycle clothing.
In 2004, Complainant generated over $5 billion in sales and has been named one of the world’s 100 most valuable brands according to Business Week Online.
Complainant owns rights in numerous marks, including the HARLEY mark, which has been registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,352,679, issued August 6, 1985).
Respondent registered the <columbusharley.com> domain name on June 20, 2003.
Respondent’s domain name redirects Internet users to a website offering products and services that compete directly with Complainant’s business.
Respondent’s <columbusharley.com> domain name is confusingly similar to Complainant’s HARLEY mark.
Respondent does not have any rights or legitimate interests in the domain name <columbusharley.com>.
Respondent registered and uses the <columbusharley.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark 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 was registered and is being used by Respondent 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."
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:
i. the domain name registered by Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii.the domain name has been registered and is being used in bad faith.
Complainant has established rights in the HARLEY mark through registration with the USPTO. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004): “Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.” See also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003): “Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”
Complainant contends that Respondent’s <columbusharley.com> domain name is confusingly similar to Complainant’s mark. Respondent’s domain name features Complainant’s entire HARLEY mark and adds the geographic term “Columbus.” The Panel finds that the addition of a geographic term to a mark is insufficient to properly distinguish Respondent’s domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the domain name <cmgiasia.com> is confusingly similar to the complainant’s CMGI mark); see also Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding that the domain name, <walmartcanada.com> is confusingly similar to the complainant’s famous mark).
The Panel therefore finds that Policy
¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have rights or
legitimate interests in the <columbusharley.com> domain name. Once Complainant makes a prima facie
case in support of its allegations, a rebuttable presumption exists that Respondent
lacks rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The burden then shifts to Respondent to show
otherwise. Because of Respondent’s
failure to respond to the Complaint, the Panel infers that Respondent does not
have rights or legitimate interests in the disputed domain name. See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(holding that, where a complainant has asserted that a respondent does not have
rights or legitimate interests with respect to the domain name, it is incumbent
on the respondent to come forward with concrete evidence rebutting this
assertion because this information is “uniquely within the knowledge and
control of the respondent”); see also
Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov.
28, 2000) (finding that, under appropriate circumstances, the assertion by a
complainant that a respondent does not have rights or legitimate interests is
sufficient to shift the burden of proof to the respondent to demonstrate that
such a right or legitimate interest does exist); further see Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000)
(finding that failing to respond allows a presumption that a complainant’s
allegations are true unless clearly contradicted by the evidence). Notwithstanding these principles, the Panel
elect to analyze the available evidence for support of rights or legitimate
interests favorable to Respondent.
In this instance, Complainant contends that Respondent is neither commonly known by the disputed domain name nor licensed to register domain names featuring Complainant’s HARLEY mark. No evidence to the contrary appearing in the record, the Panel finds that Respondent is not commonly known by the <columbusharley.com> domain name pursuant to Policy ¶ 4(c)(ii). See G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003):
Due to the fame of Complainant’s mark there must be strong evidence
that Respondent is commonly known by the disputed domain name in order to find
that Respondent has rights or legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(c)(ii). However,
there is no evidence on record, and Respondent has not come forward with any
proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.
See also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii), in circumstances parallel to those presented here, "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
Moreover, Complainant contends, and Respondent does not deny, that Respondent is using the disputed domain name to connect Internet users to a website that offers goods and services directly related to the business in which Complainant engages. The Panel therefore finds that Respondent’s use of the confusingly similar domain name is 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 Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003): “Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.” See also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that a respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with those of a complainant, was not a bona fide offering of goods or services).
Thus the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends, without contradiction from Respondent, that Respondent is using the confusingly similar <columbusharley.com> domain name to redirect Internet users to a site that sells goods and services competing with Complainant’s business. The Panel finds, therefore, that such competitive use constitutes impermissible disruption of Complainant’s business and amounts to bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that a respondent acted in bad faith by attracting Internet users to a website that competes with a complainant’s business); see also Gen. Media Commc’ns, Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26, 2001) (finding bad faith where a competitor of a complainant registered and used a domain name confusingly similar to the complainant’s PENTHOUSE mark to host a pornographic web site in competition with Complainant).
In addition, the Panel finds that due to the business-competive character of Respondent’s website, Internet users are likely to become confused as to Complainant’s sponsorship of or affiliation with the resulting website. Such use of Complainant’s mark in the domain name for Respondent’s commercial gain cotravenes Policy ¶ 4(b)(iv) and is further evidence of bad faith registration and use. See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where a respondent's use of the domain name to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that a complainant is the source of or is sponsoring the services offered at the site); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where a respondent registered a domain name confusingly similar to a complainant’s mark, and the domain name was used to host a commercial website that offered services similar to those offered by the complainant under its mark).
Finally under this heading, it is evident that Respondent
registered the contested domain name with either actual or constructive
knowledge of Complainant’s rights in the HARLEY mark by virtue of Complainant’s
prior registration of that mark with the pertinent national authorities. Registration of a confusingly similar domain
name despite such actual or constructive knowledge evidences bad faith
registration and use of the domain name pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506
(Nat. Arb. Forum Oct. 24, 2002); see
also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct.
4, 2002).
For all of these reasons, the Panel finds that Policy ¶
4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the domain name <columbusharley.com> be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 26, 2006
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum