DECISION

H-D Michigan, Inc. v. CostNet a/k/a Domain Manager

Claim Number: FA0210000128681

PARTIES

Complainant is H-D Michigan, Inc., Ann Arbor, MI (“Complainant”) represented by Robert S. Gurwin, of Rader Fishman & Grauer PLLC.  Respondent is CostNet a/k/a Domain Manager, San Jose, CA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <4-harley-babes.com>, registered with Register.com, Inc.

PANEL

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

James A. Crary as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 22, 2002; the Forum received a hard copy of the Complaint on October 22, 2002.

On October 22, 2002, Register.com, Inc. confirmed by e-mail to the Forum that the domain name <4-harley-babes.com> is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.com, 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 October 24, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 13, 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@4-harley-babes.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 December 5, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Crary 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 name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant makes the following assertions:

Respondent’s <4-harley-babes.com> domain name is confusingly similar to Complainant’s registered HARLEY mark.

Respondent does not have any rights or legitimate interests in the <4-harley-babes.com> domain name.

Respondent registered and used the <4-harley-babes.com> domain name in bad faith.

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

FINDINGS

Complainant, H-D Michigan, Inc., holds rights in the HARLEY and HARLEY-DAVIDSON registered marks (e.g. U.S. Reg. No. 522,500). Complainant registered this 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 and HARLEY-DAVIDSON family of marks.

Complainant uses its registered HARLEY-DAVIDSON family of marks to distinguish its motorcycles, motorcycle parts 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, CostNet a/k/a Domain Manager, registered the <4-harley-babes.com> domain name on December 18, 2000.  Respondent is not licensed or otherwise authorized to make use of the HARLEY family of marks for any purpose.

By March 4, 2001, Respondent’s website at <4-harley-babes.com> redirected Internet users to various pornographic websites, some including photographes of scantily clad women on motorcycles (e.g. the <babesindex.com> domain name, which presents explicit language as well as pictures of women in various states of undress). Numerous pop-up advertisements are generated during the redirect, advertisements that also involve pornographic content.  

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

Complaint has established rights in its HARLEY family of marks through registration on the Principal Register of the USPTO along with its widespread and continuous use of its marks in commerce and advertising.

Respondent’s <4-harley-babes.com> domain name is confusingly similar to Complainant’s HARLEY mark. The only difference between Respondent’s domain name and the registered mark of Complainant is the addition of the top-level domain “.com” and the addition of the numeral “4” before, and the word “babes” after, Complainant’s registered mark. As top-level domains are a required feature for each domain name, the “.com” in the disputed domain name does not prevent a finding of confusing similarity. See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants"); see also Visit Am., Inc. v. Visit Am., FA 95093 (Nat. Arb. Forum Aug. 14, 2000) (finding that the “.com” is part of the Internet address and does not add source identity significance).

The addition of the numeral “4” and the word “babes” to Complainant’s registered HARLEY mark also fails to sufficiently differentiate the disputed domain name from Complainant’s mark. The dominant feature of the disputed domain name remains Complainant’s HARLEY mark, while the numeral “4” and word “babes” do not dispel any confusing similarity between the disputed domain name and Complainant’s mark. See Pfizer, Inc. v. Papol Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to Complainant’s mark); 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 the Complainant combined with a generic word or term).

Accordingly, the Panel finds that the <4-harley-babes.com> domain name is confusingly similar to Complainant’s registered HARLEY family of marks under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

If a complainant presents a prima facie case against a respondent in the complaint, the burden of proving rights and legitimate interests in a disputed domain name shifts 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”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

Once that burden has shifted to Respondent, failure to submit a Response is tantamount to admitting no rights or legitimate interests in the disputed domain name. Furthermore, the Panel will construe a lack of Response as evidence in and of itself that Respondent has no rights or legitimate interests in a 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). In the present dispute, Respondent submitted no Response rebutting the allegations set forth in the Complaint, and the Panel will accept all of Complainant’s reasonable assertions as true. 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 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).

Complainant asserts that Respondent is not using the <4-harley-babes.com> domain name in connection with any bona fide offerings of goods or services, nor is it making a legitimate noncommercial or fair use of the domain name, both examples of evidence of rights and legitamite interests under Policy ¶¶ 4(c)(i) and (iii). The Panel agrees with Complainant’s assessment. Respondent uses the disputed domain name, which contains Complainant’s registered mark in its entirety, to redirect Internet users to pornographic websites. This type of activity does not equate with a “bona fide offering of goods and services” under Policy ¶ 4(c)(i), as Respondent’s use of Complainant’s mark to attract Internet users tarnishes the goodwill surrounding that mark. See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well-known mark to provide a link to a pornographic site is not a legitimate or fair use); see also MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material where such use is calculated to mislead consumers and to tarnish the Complainant’s mark).

Complainant’s uncontested allegations assert that Respondent’s use of pop-up advertisements and its redirection of the disputed domain name to pornographic websites is calculated to earn a profit from each diverted Internet user. This type of activity is not a legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii). See AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks).

Complainant has not authorized Respondent to use its HARLEY family of marks and Respondent’s contact information implies that it is not “commonly known by” the name 4-HARLEY-BABES or <4-harley-babes.com>. In light of Respondent’s failure to offer any evidence that it has ever been commonly known by the disputed domain name, the Panel concludes that Respondent has no rights or legitimate interests in the disputed domain name 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 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 names “Nokia” and/or “wwwNokia”).  

Accordingly, the Panel finds that Respondent does not have any rights or legitimate interests in the <4-harley-babes.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Registering and using an infringing domain name to “intentionally attempt to attract, for commercial gain, Internet users…by creating a likelihood of confusion…as to the source, sponsorship, affiliation, or endorsement of…a product of service on your website,” exemplifies bad faith under Policy ¶ 4(b)(iv). In the present dispute, Respondent’s <4-harley-babes.com> domain name violates this provision of the Policy. By registering a domain name that infringes on Complainant’s mark, and using that domain name to gain commercial profit via pop-up advertisements and redirection of Internet users to pornographic websites, Respondent both registered and used its domain name in bad faith. See 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); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (use of another's well-known mark to provide a link to a pornographic site is evidence of bad faith registration and use); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith).

Accordingly, the Panel finds that Respondent registered and used the <4-harley-babes.com> domain name in bad faith, and Policy ¶ 4(a)(iii) is 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 <4-harley-babes.com> domain name be TRANSFERRED from Respondent to Complainant.

James A. Crary, Panelist

Dated: December 16, 2002

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