Generic Top Level Domain Name (gTLD) Decisions

DECISION

H-D Michigan, Inc. v. Domain for sale -- Contact Us a/k/a Internet Associates Inc.

Claim Number: FA0210000127721

PARTIES

Complainant is H-D Michigan, Inc., Ann Arbor, MI, USA (“Complainant”) represented by Robert S. Gurwin, of Rader Fishman & Grauer PLLC.  Respondent is Domain for Sale—Contact Us a/k/a Internet Associates Inc., Takapuna, NEW ZEALAND (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <harley-davidsonmotorcompany.com>, and <harleydavidsonmotorcompany.net>, registered with Capital Networks/Total NIC.

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 October 10, 2002; the Forum received a hard copy of the Complaint on October 10, 2002.

On October 14, 2002, Capital Networks/Total NIC confirmed by e-mail to the Forum that the domain names <harley-davidsonmotorcompany.com> and <harleydavidsonmotorcompany.net> are registered with Capital Networks/Total NIC and that Respondent is the current registrant of the names.  Capital Networks/Total NIC has verified that Respondent is bound by the Capital Networks/Total NIC 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 October 15, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 4, 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-davidsonmotorcompany.com and postmaster@harleydavidsonmotorcompany.net 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 25, 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

The  <harley-davidsonmotorcompany.com> domain name is identical to Complainant’s HARLEY-DAVIDSON MOTOR COMPANY mark.

The <harleydavidsonmotorcompany.net> domain name is confusingly similar to Complainant's HARLEY-DAVIDSON MOTOR COMPANY mark.

Respondent has no rights or legitimate interests in the disputed domain names.

Respondent registered and used the disputed domain names in bad faith.

B. Respondent

Respondent failed to submit a Response.

FINDINGS

Complainant has used the HARLEY-DAVIDSON and HARLEY-DAVIDSON MOTOR COMPANY marks since 1903.  Complainant is one of the world’s largest and most famous manufacturer and distributor of motorcycles, motorcycle parts, and accessories.  Complainant’s Harley Owners Group (H.O.G.) is the largest factory-sponsored motorcycle club in the world.  In 2002, its membership exceeded 640,000 members worldwide.  Complainant shipped over 234,461 motorcycles in 2001 with worldwide net sales of $3.36 billion and was named “Company of the Year” by Forbes magazine for 2002.

Complainant holds numerous registrations for its marks in the United States and throughout the world.  Complainant is presently the owner of 590 trademark registrations for HARLEY-DAVIDSON in over 75 countries.   Complainant’s marks are on the Principal Register of the United States Patent and Trademark Office, including Registration Numbers 1,640,258; 1,571,032; and 2,406,156.

Respondent registered the <harley-davidsonmotorcompany.com> domain name on January 27, 2002, and the <harleydavidsonmotorcompany.net> domain name on  February 18, 2002.  Respondent put both of the disputed domain name registrations up for sale immediately.  Respondent is displaying a “for sale” page at both of the dispute domain names.  Respondent has made no other use of the disputed domain names.  Respondent does not have a license from Complainant to use the HARLEY-DAVIDSON or HARLEY-DAVIDSON MOTOR COMPANY marks.

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 that it has rights in the HARLEY-DAVIDSON and HARLEY-DAVIDSON MOTOR COMPANY marks through registration in the United States and throughout the world, and through its longstanding use of the marks in relation to its motorcycle business.

Respondent’s <harley-davidsonmotorcompany.com> domain name is identical to Complainant’s HARLEY-DAVIDSON MOTOR COMPANY mark because it incorporates the entirety of Complainant’s mark and merely adds the generic top-level domain “.com.”  The addition of a generic top-level domain does not add any distinctive characteristics because it is a required feature of every domain name.  Therefore, Respondent’s <harley-davidsonmotorcompany.com> domain name does not overcome a claim of identical or confusing similarity pursuant to Policy ¶ 4(a)(i).  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Sporty's Farm L.L.C. vs. Sportsman's Mkt., Inc., [2000] USCA2 33; 202 F.3d 489 (2d Cir. 2000), cert. denied, 530 U.S. 1262 (2000), ("For consumers to buy things or gather information on the Internet, they need an easy way to find particular companies or brand names. The most common method of locating an unknown domain name is simply to type in the company name or logo with the suffix .com").

Furthermore, Respondent’s <harleydavidsonmotorcompany.net> domain name is confusingly similar to Complainant’s  HARLEY-DAVIDSON MOTOR COMPANY mark because it merely omits the hyphen between HARLEY and DAVIDSON, and adds the generic top-level domain “.net”.  The omission of a hyphen does not create a distinct mark capable of overcoming a claim of confusing similarity.  See Teradyne Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"); see also 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 Complainant's mark).  The addition of a generic top-level domain also does not add any distinctive characteristics to the domain name and therefore the disputed domain name does not overcome a Policy ¶ 4(a)(i) confusingly similar analysis.

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to come forward with a Response.  Therefore it is presumed that Respondent has no rights or legitimate interests in the disputed domain names.  See 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); 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).

Furthermore, when Respondent fails to submit a Response the Panel is permitted to make all inferences in favor of Complainant.  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 Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).

Respondent is making no use of the disputed domain names other than to offer its registrations up for sale.  To use a disputed domain name exclusively to engage in the sale of its registration is not considered to be 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 pursuant to Policy ¶ 4(c)(iii) and therefore Complainant has established that Respondent has no rights or legitimate interests in the disputed domain names.  See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain name registrations for profit); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where Respondent registered the domain name with the intention of selling its rights).

Furthermore, based on the fame of Complainant’s HARLEY-DAVIDSON family of marks it would be very difficult for Respondent to establish that it is commonly known as HARLEY-DAVIDSON MOTOR COMPANY, <harleydavidsonmotorcompany.net>, <harley-davidsonmotorcompany.com>, or any variation of the HARLEY-DAVIDSON family of marks.  Respondent has failed to submit a Response in this proceeding and therefore has presented no evidence that it is commonly known by any variation of the HARLEY-DAVIDSON mark.  As a result, the Panel infers that Respondent is not commonly known by the disputed domain names and does not have rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii).  See Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark); see also 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).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 Registration and Use in Bad Faith

Based on the fame of Complainant’s HARLEY-DAVIDSON MOTOR COMPANY and HARLEY-DAVIDSON family of marks it can be inferred that Respondent had knowledge of Complainant’s rights when it registered the disputed domain names.  Registration of an infringing domain name, despite knowledge of Complainant’s rights, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).

Registration of a domain name primarily for the purpose of selling the registration is evidence of bad faith pursuant to Policy ¶ 4(b)(i).  Based on the circumstances it can be inferred that Respondent registered the disputed domain names in order to sell its rights in the registrations.  Respondent has not used the disputed domain names for any purpose other than to post a “for sale” website, which it posted immediately after it registered the two domain names in dispute.  Furthermore, the name of Respondent’s business is “Domain for Sale.”  Therefore, Respondent’s behavior is evidence of registration and use in bad faith pursuant to Policy ¶ 4(b)(i).  See Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding bad faith based on the apparent willingness of Respondent to sell the domain name registration in issue from the outset, albeit not at a price reflecting only the costs of registering and maintaining the name); see also Microsoft Corp. v. Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding bad faith where Respondent registered the domain name for the purpose of selling its rights, as revealed by the name Respondent chose for the registrant, “If you want this domain name, please contact me”).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

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

Accordingly, it is Ordered that the domain name <harleydavidsonmotorcompany.net> and <harley-davidsonmotorcompany.com> be transferred from Respondent to Complainant.

Sandra Franklin, Panelist

Dated: December 2, 2002

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