H-D Michigan Inc. v. Network Operations Center c/o Alberta Hot Rods
Claim Number: FA0604000671212
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, USA. Respondent is Network Operations Center c/o Alberta Hot Rods (“Respondent”), P.O. Box 1000 4901 51st Ave, High Prairie, AB T0G 1E0, Canada.
The domain names at issue are <harleydavidsonracing.com> and <harleydavidsonracers.com>, registered with Core.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 3, 2006; the National Arbitration Forum received a hard copy of the Complaint on April 4, 2006.
On April 13, 2006, Core confirmed by e-mail to the National Arbitration Forum that the <harleydavidsonracing.com> and <harleydavidsonracers.com> domain names are registered with Core and that Respondent is the current registrant of the names. Core has verified that Respondent is bound by the Core 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 April 13, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 3, 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@<harleydavidsonracing.com> and postmaster@<harleydavidsonracers.com> by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 9, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 <harleydavidsonracing.com> and <harleydavidsonracers.com> domain names are confusingly similar to Complainant’s HARLEY-DAVIDSON mark.
2. Respondent does not have any rights or legitimate interests in the <harleydavidsonracing.com> and <harleydavidsonracers.com> domain names.
3. Respondent registered and used the <harleydavidsonracing.com> and <harleydavidsonracers.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, H-D Michigan, Inc., has been involved in the manufacture and sale of motorcycles under the HARLEY-DAVIDSON mark continuously since 1903. Complainant holds several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the HARLEY-DAVIDSON mark (Reg. No. 1,078,871 issued December 6, 1977; Reg. No, 1,311,457 issued December 25, 1984; Reg. No. 518,062 issued November 29, 1949). Complainant currently has more than 1,500 authorized dealers throughout the world, and had approximately $5 billion in worldwide sales in 2004. Additionally, the fame of Complainant’s HARLEY-DAVIDSON brand is evidenced by its listing as one of the “Top 100 Global Brands” by BusinessWeek Online.
Respondent registered the <harleydavidsonracing.com> and <harleydavidsonracers.com> domain names on July 13, 1999. Internet users who access these domain names are diverted to Respondent’s commercial website at the <dreammachines.com> domain name, which displays advertisements for such things as email services, classified ads, music services and auto shows.
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 has established rights in the HARLEY-DAVIDSON mark, pursuant to Policy ¶ 4(a)(i), through registration of the mark 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 Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the mark is registered in a country even if the complainant has never traded in that country).
Respondent’s <harleydavidsonracing.com> and <harleydavidsonracers.com> domain names are confusingly similar to Complainant’s HARLEY-DAVIDSON mark because they incorporate Complainant’s mark with the omission of the hyphen and the addition of a descriptive term. The Panel finds that the mere addition of a descriptive term to Complainant’s registered mark does not adequately distinguish Respondent’s domain names from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com> is confusingly similar to the complainant’s THE BODY SHOP trademark). Moreover, the omission of a hyphen from Complainant’s mark does not negate the confusing similarity of the disputed domain names to Complainant’s mark. See Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June 19, 2000) (holding that the domain name <cspan.net>, which omitted the hyphen from the trademark spelling, C-SPAN, is confusingly similar to the complainant's mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <harleydavidsonracing.com> and <harleydavidsonracers.com> domain names. Once 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 pursuant to Policy ¶ 4(a)(ii). Due to Respondent’s failure to respond to the Complaint, Complainant’s assertions are unopposed, and the Panel will evaluate the evidence to determine if Respondent has rights or legitimate interests in the disputed domain names. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
Respondent uses the <harleydavidsonracing.com> and
<harleydavidsonracers.com> domain names, which are confusingly
similar to Complainant’s famous HARLEY-DAVIDSON mark, to direct Internet users
to a commercial website featuring advertisements to a variety of services. The Panel presumes that Respondent earns
payment in exchange for exposing Internet users to these advertisements. Therefore, Respondent is taking advantage of
the confusing similarity between its domain names and Complainant’s mark for
its own financial gain. Such use of the
disputed domain names is not in connection with a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or
fair use pursuant to Policy ¶ 4(c)(iii).
See Bank of Am. Corp. v. Nw. Free
Cmty. Access, FA 180704 (Nat. Arb. Forum
Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users
seeking Complainant's website to a website of Respondent and for Respondent's benefit
is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it
is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see
also Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb.
Forum Dec. 6, 2003) (“Diverting customers, who are looking for products
relating to the famous SEIKO mark, to a website unrelated to the mark is not a
bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it
represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”).
There is no evidence that Respondent has ever been commonly known by the <harleydavidsonracing.com> or <harleydavidsonracers.com> domain names, and Complainant asserts that Respondent has never been known by those names. Respondent has not answered the Complaint with any information contradicting Complainant’s assertion. Furthermore, the WHOIS database contains no information implying that Respondent is commonly known by the <harleydavidsonracing.com> or <harleydavidsonracers.com> domain names. The Panel infers that Respondent has no rights or legitimate interests in these domain names under Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent uses the <harleydavidsonracing.com> and <harleydavidsonracers.com> domain names, which are confusingly similar to Complainant’s HARLEY-DAVIDSON mark, to present Internet users with advertisements for services unrelated to Complainant. Respondent most likely receives payment in return for presenting these advertisements to Internet users. Such use of the disputed domain names constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the respondent registered and used a domain name confusingly similar to the complainant’s mark to attract users to a website sponsored by the respondent)
Complainant asserts that Respondent has registered many domain names that incorporate other parties’ trademarks. Additionally, Respondent has been involved in several more disputes in which Respondent’s domain names were transferred to third parties because the domain names infringed on the parties’ trademark rights. See Spacey v. Alberta Hot Rods, FA 114437 (Nat. Arb. Forum Aug. 1, 2002) (ordering the transfer of the <kevinspacey.com> domain name from Respondent to the complainant); see also King v. Alberta Hot Rods, D2005-0570 (WIPO July 21, 2005) (ordering the transfer of the <larryking.com> domain name from Respondent to the complainant); see also TT Merchandising, Inc. v. Alberta Hot Rods, FA 139661 (Nat. Arb. Forum Feb. 14, 2003) (ordering the transfer of the <travistritt.com> domain name from Respondent to the complainant.). The Panel finds that this pattern of behavior also indicates that Respondent’s registration of the <harleydavidsonracing.com> and <harleydavidsonracers.com> domain names constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(ii). See Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks); see also Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 16, 2000) (finding a bad faith pattern of conduct where the respondent registered many domain names unrelated to its business which infringe on famous marks and websites).
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 <harleydavidsonracing.com > and <harleydavidsonracers.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: May 22, 2006
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