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Harley Shipbuilding Corporation et al v Fast Cat Boat Works [2001] GENDND 715 (6 April 2001)

National Arbitration Forum

The Complainants are Harley Shipbuilding Corporation ("Harley Shipbuilding"), Fiberfloat Corporation d/b/a Harley Boat Company ("Harley Boat") and Howard D. Harley ("Harley") Bartow, FL, USA ("Complainant") represented by Ronald D. Cook, of Cook & Koch P.A., One Tampa City Center, Suite 3010, 201 North Franklin Street, Tampa, FL 33602. The Respondent is Fast Cat BoatWorks, LLC, 560 Spinnaker DriveLongboat Key, FL, USA ("Respondent") represented by Melinda Delpech, of 2180 Main Street, Sarasota, FL 34237

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on February 15, 2001; the Forum received a hard copy of the Complaint on February 16, 2001. An Amended Complaint was filed on February 26, 2001.

On February 20, 2001, Network Solutions confirmed by e-mail to the Forum that the domain names "harleyshipbuilding.org", "harleyshipbuilding.com", "harleyshipbuilding.net", "harleyboat.com", "harleyboat.org", "harleyboat.net", "harleyboats.net", "harleyboats.org" are registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 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 February 21, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 13, 2001 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@harleyshipbuilding.org, postmaster@harleyshipbuilding.com, postmaster@harleyshipbuilding.net, postmaster@harleyboat.com, postmaster@harleyboat.org, postmaster@harleyboat.net, postmaster@harleyboats.net, postmaster@harleyboats.org by e-mail.

On March 23, 2001, pursuant to Complainant’s request to have the dispute decided by a One Member Panel, the Forum appointed Richard DiSalle as Panelist.

The Complainant requests that the domain names be transferred from the Respondent to the Complainant.

A. Complainant

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."

Complainant contends that Respondent’s domain names (harleyshipbuilding.org, harleyshipbuilding.com, harleyshipbuilding.net, harleyboat.com, harleyboat.org, harleyboat.net, harleyboats.net, harleyboats.org) are identical and/or confusingly similar to its famous marks. See Hollywood Network, Inc, v Video Citizen Network, FA 95897 (Nat. Arb. Forum Dec. 20, 2000) (finding that the domain name <hollywoodnetwork.tv> is identical and confusingly similar to Complainant’s HOLLYWOOD NETWORK mark because the "inclusion of the entirety of Complainant’s mark in the domain name at issue makes it confusingly similar"); see also Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that "the addition of an "s" to the end of the Complainant’s mark, "Cream Pie" does not prevent the likelihood of confusion caused by the use of the remaining identical mark. The domain name <creampies.com> is similar in sound, appearance, and connotation").

Complainant asserts that Respondent has no rights or legitimate interest in the disputed domain names because Respondent has registered the domain names primarily for the purpose of disrupting the Complainant’s business. See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights and legitimate interests where the Respondent diverted Complainant’s customers to his web sites).

Also, Respondent registered the domain names intentionally to attract Complainant’s customers via a likelihood of confusion with Complainant’s well-established marks. See Household Int’l, Inc. v. Cyntom Enter., FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (inferring that Respondent registered the domain name <householdbank.com>, which incorporates Complainants HOUSEHOLD BANK mark, with hopes of attracting Complainant’s customers and thus finding no rights or legitimate interests); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (finding that "unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services").

Complainant asserts that Respondent registered the disputed domain names to intentionally attract, for commercial gain, Internet users to its web site, or other online location, by creating a likelihood of confusion with Complainant’s well-established mark as to the source, sponsorship, affiliation and endorsement of Respondent ’s web site. See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the Respondent had engaged in bad faith use and registration by linking the domain name to a web site that offers services similar to Complainant’s services, intentionally attempting to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s marks); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the Complainant’s well known marks, thus creating a likelihood of confusion strictly for commercial gain).

Further, Complainant alleges Respondent is its competitor, and therefore was aware of its famous mark prior to registering the disputed domain names. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum, Apr.17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration); see also Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that the Respondent demonstrated bad faith where the Respondent was aware of the Complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names). In fact, in June of 1999, Complainant entered into a contract to build and sell a "Harley SES Fast Ferry" to Fast Cats Ferry Service, LLC, which is located at the same address as the Respondent.