DECISION

H-D Michigan, Inc. v. TT&R Inc. a/k/a L. Turner a/k/a Len Turner a/k/a Leonard John Turner

Claim Number: FA0209000126650

PARTIES

Complainant is H-D Michigan, Inc., Ann Arbor, MI (“Complainant”) represented by Michael A. Lisi, of Rader Fishman & Grauer PLLC.  Respondent is T.T. & R. Inc., Danville, AZ (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <harley-davidson.net>, <harley-davidson.org>, <harleydavidsonsrus.com>, and <harleydavidsons-r-us.com>, registered with Register.com & NetworkSolutions d/b/a VeriSign, Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 30, 2002; the Forum received a hard copy of the Complaint on September 26, 2002.

On September 30, 2002 & Oct 01, 2002, Register.com & NetworkSolutions d/b/a VeriSign, Inc. confirmed by e-mail to the Forum that the domain names <harley-davidson.net>, <harley-davidson.org>, <harleydavidsonsrus.com>, and <harleydavidsons-r-us.com> are registered with Register.com & NetworkSolutions d/b/a VeriSign, Inc. and that Respondent is the current registrant of the names.  Register.com & NetworkSolutions d/b/a VeriSign, Inc. have verified that Respondent is bound by the Register.com & NetworkSolutions d/b/a VeriSign, Inc. registration agreements 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 October 4, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 24, 2002 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@harley-davidson.net, postmaster@harley-davidson.org, postmaster@harleydavidsonsrus.com, and postmaster@harleydavidsons-r-us.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 Forum transmitted to the parties a Notification of Respondent Default.

On November 15, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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.”  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.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant makes the following assertions:

Respondent’s <harley-davidson.net>, <harley-davidson.org>, <harleydavidsonsrus.com>, and <harleydavidsons-r-us.com> domain names are either identical or confusingly similar to Complainant’s registered HARLEY-DAVIDSON mark.

Respondent does not have any rights or legitimate interests in the <harley-davidson.net>, <harley-davidson.org>, <harleydavidsonsrus.com>, and <harleydavidsons-r-us.com> domain names.

Respondent registered and used the <harley-davidson.net>, <harley-davidson.org>, <harleydavidsonsrus.com>, and <harleydavidsons-r-us.com> domain names in bad faith.

B. Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, H-D Michigan, Inc., holds rights in the HARLEY-DAVIDSON registered mark (e.g. U.S. Reg. No. 522,500). Complainant registered the mark on March 21, 1950 on the Principal Register of the United States Patent and Trademark Office (“USPTO”) and has used it in commerce since 1923. Complainant holds many additional registrations for variations of its HARLEY-DAVIDSON mark.

Complainant uses its registered HARLEY-DAVIDSON mark to distinguish its motorcycles, motorcycle part and accessories, clothing catalogs, and collectibles, as well as to distribute its wide variety of advertising and promotional materials. Complainant has registered its HARLEY-DAVIDSON trademark over 590 times in over 75 countries worldwide, and holds an additional 365 trademark registrations for logos incorporating  variations of its HARLEY-DAVIDSON mark. Complainant registered its <harley-davidson.com> domain name on November 8, 1994, and has used it since June of 1996 as a worldwide information and distribution channel for it business, receiving over 23 million page views in August of 2002. Complainant holds over 600 other domain name registrations, 83 of which incorporate its HARLEY-DAVIDSON registered mark.

Respondent, TT&R Inc. a/k/a L. Turner a/k/a Len Turner a/k/a Leonard John Turner, registered the <harley-davidson.net>, <harley-davidson.org>, and <harleydavidsonsrus.com> domain names with Register.com on May 26, 2002, July 7, 2001, and May 12, 2001, respectively. On February 24, 2000, Respondent registered <harleydavidsons-r-us.com> with NetworkSolutions d/b/a VeriSign, Inc. Respondent is not licensed or otherwise authorized to make use of the HARLEY-DAVIDSON mark for any purpose.

Respondent’s website at <harley-davidson.net> states “FOR SALE: Harley-Davidson.net & Harley-Davidson.org.” Respondent’s <harley-davidson.org> domain name states “Harley-Davidson.org For Sale,” also suggesting to Internet users that they could, “Use this to forward to your website or ?” Both sites ask Internet users to e-mail any offers to Respondent and note that the sites are not affiliated with Complainant, specifically stating that “Harley-Davidson is a registered trademark of the Harley-Davidson Motor Company.”

Respondent’s website at <harleydavidsonsrus.com> redirects Internet users to another of its domain names, <motorcycles-r-us.com>, where Respondent sells motorcycles. Respondent currently makes no use of its <harleydavidsons-r-us.com> domain name.

DISCUSSION

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 the 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 the 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.

Identical and/or Confusingly Similar

Complainant has established rights in its HARLEY-DAVIDSON family of marks through registration on the Principal Register of the USPTO, as well as via continuous and widespread use of the mark worldwide.

Respondent’s <harley-davidson.net> and <harley-davidson.org> domain names are identical to Complainant’s registered HARLEY-DAVIDSON mark. The only difference between these domain names and the registered mark of Complainant is the addition of the top-level domain “.net” or “.org” after the mark. As top-level domains are a standard feature for any domain name, its addition does not prevent a finding of identicality between a domain name and a registered mark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top-level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to Complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference").

Respondent’s <harleydavidsonsrus.com> and <harleydavidsons-r-us.com> domain names are confusingly similar to Complainant’s registered HARLEY-DAVIDSON mark. Besides the inconsequential addition of a “.com” and the pluralization of  Complainant’s registered mark, Respondent has only added a variation of the phrase “are us” (either “rus” or “r-us”) after the mark. The addition of this generic phrase to Complainant’s registered HARLEY-DAVIDSON mark fails to sufficiently differentiate the disputed domain names from Complainant’s mark. The dominant feature of the disputed domain names remains Complainant’s distinctive HARLEY-DAVIDSON mark. The generic phrase “r-us,” with or without the hyphen, does nothing to detract from this distinction. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word…nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Quixtar Inv., Inc. v. Smithberger and QUIXTAR-IBO, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name <quixtar-sign-up.com> incorporates in its entirety Complainant’s distinctive mark, QUIXTAR, the domain name is confusingly similar); see also 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).

Accordingly, the Panel finds that the <harley-davidson.net> and <harley-davidson.org> domain names are identical to Complainant’s registered HARLEY-DAVIDSON mark. The Panel also finds that the <harleydavidsonsrus.com> and <harleydavidsons-r-us.com> domain names are confusingly similar to Complainant’s registered HARLEY-DAVIDSON mark, and Policy ¶ 4(a)(i) is satisfied with respect to all domain names.

Rights or Legitimate Interests

The burden of proving a lack of rights or legitimate interests in a domain name rests initially upon a complainant. Under Policy ¶¶ 4(c)(i-iii), a respondent can rely on a “bona fide offering of goods or services” connected with the disputed domain name, the fact that it has been “commonly known by the domain name,” or that it is making a “legitimate noncommercial or fair use of the domain name” to demonstrate a right or legitimate interest in a domain name. If a complainant rebuts each of these elements, it has satisfied its burden by successfully addressing any of the specified claims a respondent could make under Policy ¶¶ 4(c)(i-iii), thereby shifting the burden to the respondent. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding where a Complainant has asserted that Respondent has no rights or legitimate interests in respect of the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).

Furthermore, Respondent’s lack of a Response to the Complaint is in and of itself evidence of a lack of legitimate rights and interests in its domain name. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by Complainant that Respondent has no right or legitimate interest is sufficient to shift the burden of proof to Respondent to demonstrate that such a right or legitimate interest does exist); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

It is neither a bona fide offering of goods or services, nor legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii) when the holder of a domain name that is identical to an established mark registers the domain name in order to sell the registration to the holder of the mark. See Kinko’s Inc. v. eToll, Inc., FA 94447 (Nat. Arb. Forum May 27, 2000) (finding that Respondent has no rights or legitimate interests in the domain name where it appeared that the domain name was registered for ultimate use by Complainant); see also Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that rights or legitimate interests do not exist when one holds a domain name primarily for the purpose of marketing it to the owner of a corresponding trademark). Respondent has done nothing to develop the <harley-davidson.net> and <harley-davidson.org> domain names other than to note on its websites that these domain name registrations are “For Sale.” Furthermore, both websites acknowledge that Complainant holds rights in the mark that is reflected in the disputed domain names, and one of the websites suggests that a purchaser could ideally “use this [domain name] to forward to your website.” The Panel infers from the facts that Respondent’s intent in registering the disputed domain names was to sell these registrations to Complainant, an appropriate inference in light of Respondent’s failure to make a submission in this proceeding. See Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (drawing two inferences based on Respondent’s failure to respond: (1) that 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). Therefore, Respondent’s holding of the <harley-davidson.net> and <harley-davidson.org> domain names are not a bona fide offering of goods or services nor use of the domain name for noncommercial or fair use.

Likewise, neither Respondent’s <harleydavidsonsrus.com> nor <harleydavidsons-r-us.com> domain names represent a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). The <harleydavidsonsrus.com> domain name redirects Internet users to Respondent’s own <motorcycles-r-us> domain name, where Respondent sells the same product as Complainant, namely motorcycles. Diverting Internet users to Respondent’s own website by using Complainant’s mark violates Policy ¶¶ 4(c)(i) and (iii). See Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that “[I]t would be unconscionable to find a bona fide offering of services in a respondent’s operation of web-site using a domain name which is confusingly similar to Complainant’s mark and for the same business”).

On the other hand, Respondent’s <harleydavidsons-r-us.com> domain name has sat idle for over two years. The Panel need not adopt a “wait and see” attitude in this matter, as Respondent’s passive holding of its <harleydavidsons-r-us.com> domain name is enough to support a finding of a lack of rights or legitimate interests under the Policy. See Am. Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where Respondent merely passively held the domain name); see also Nike, Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001) (finding no rights or legitimate interests where Respondent made no use of the infringing domain names); see also Flor-Jon Films, Inc. v. Larson, FA 94974 (Nat. Arb. Forum July 25, 2000) (finding that Respondent’s failure to develop the site demonstrates a lack of legitimate interest in the domain name).

 

Complainant has not given Respondent permission or consent to use its HARLEY-DAVIDSON mark, and has shown that Respondent is not “commonly known by” the name HARLEYDAVIDSONSRUS, HARLEYDAVIDSONS-R-US, <harley-davidson.net>, <harley-davidson.org>, <harleydavidsonsrus.com> or <harleydavidsons-r-us.com>. Furthermore, as Complainant’s mark is highly distinctive, it is doubtful that anyone other than Complainant could claim to be “commonly known by” the name. See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding that Respondent is not commonly known by the mark contained in the domain name where Complainant has not permitted Respondent to use the NOKIA mark and no other facts or elements can justify prior rights or a legitimate connection to the name). In light of Respondent’s failure to offer any evidence that it has ever been commonly known by the disputed domain names, the Panel concludes that Respondent has no rights or legitimate interests in the disputed 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").  

Once a complainant has successfully presented its prima facie case illustrating a respondent’s lack of rights or legitimate interests in its domain name, the burden of demonstrating rights and legitimate interests in the domain name shifts to the respondent.

As Respondent submitted nothing to the Panel in response to this Complaint, Respondent fails to meet that burden, and the Panel may conclude that Respondent has no rights or legitimate interests in the disputed domain names. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).

Accordingly, the Panel finds that Respondent does not have any rights or legitimate interests in the domain names under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent registered and used the <harley-davidson.net> and <harley-davidson.org> domain names in bad faith, in violation of Policy ¶ 4(b)(i). In “circumstances indicating that [Respondent has] registered…the domain name primarily for the purpose of selling…the domain name registration to…the owner of the trademark…or to the competitor of that [owner of the trademark]” it is evidence of bad faith use and registration under the Policy. This has been interpreted to include generic sale offers placed on Respondent’s website. See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”); Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where Respondent offered domain names for sale). In the present dispute, Respondent has not only offered two of its identical and infringing domain name registrations for sale, but has done so in circumstances inferring that the ultimate purchaser is intended to be Complainant. Respondent’s online acknowledgment of Complainant’s rights in the HARLEY-DAVIDSON mark, as well as its suggestion that the disputed domain names could be used to forward to another website, allows the inference that sale of the domain name registrations to Complainant was what Respondent had in mind when it registered <harley-davidson.net> and <harley-davidson.org>. Respondent submitted no Response to the Complaint, leading the Panel to conclude that this was Respondent’s motive, and that <harley-davidson.net> and <harley-davidson.org> were both registered and used in bad faith. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

Respondent registered and used the <harleydavidsonsrus.com> domain name in bad faith, violating Policy ¶ 4(b)(iv). By using its domain name, Respondent “intentionally attempted to attract, for commercial gain, Internet users to [its] website…by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement,” evidencing bad faith under the Policy. In redirecting its <harleydavidsonsrus.com> domain name to its motorcyle sales website at <motorcycles-r-us.com>, Respondent used Complainant’s mark to attract motorcycle buyers to its own website and created a strong likelihood of confusion as to whether Respondent had any affiliation with Complainant. These actions violate Policy ¶ 4(b)(iv). See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent).

Respondent registered and used its <harleydavidsons-r-us.com> domain name in bad faith. Respondent’s bad faith is evidenced in its passive holding of the domain name for over two years. See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith); see also Mondich & Am. Vintage Wine Biscuits, Inc. v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that Respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith). While passive holding does not directly violate any provision of the Policy, Policy ¶¶ 4(b)(i-iv) represents a non-exhaustive list of circumstances evidencing bad faith. See Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in ¶4(b), does not mean that the domain names at issue were not registered in and are not being used in bad faith”); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence). Respondent’s lack of use of its <harleydavidsons-r-us.com> domain name, in light of its bad faith use and registration of <harley-davidson.net>, <harley-davidson.org> and <harleydavidsonsrus.com> permits the inference that any use of this domain name in the future runs the risk of being done in bad faith. In fact, the Panel finds it difficult to imagine a circumstance where Respondent would be able to use <harleydavidsons-r-us.com> in good faith. Regardless, with no Response by Respondent contradicting the facts and allegations of Complainant, the Panel finds that Respondent’s passive holding of the <harleydavidsons-r-us.com> domain name indicates registration and use of the domain name in bad faith. See See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

Accordingly, the Panel finds that Respondent both registered and used its <harley-davidson.net>, <harley-davidson.org>, <harleydavidsonsrus.com>, and <harleydavidsons-r-us.com> domain names in bad faith, and Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.

Accordingly, it is Ordered that the <harley-davidson.net>, <harley-davidson.org>, <harleydavidsonsrus.com>, and <harleydavidsons-r-us.com> domain names be TRANSFERRED from Respondent to Complainant.

Sandra Franklin, Panelist

Dated: November 20, 2002

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2002/1577.html