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Generic Top Level Domain Name (gTLD) Decisions |
H-D Michigan, Inc. v. Garry Skaggs d/b/a
Garry Skaggs Company
Claim Number: FA0211000132449
PARTIES
Complainant
is H-D Michigan, Inc., Ann Arbor, MI
(“Complainant”) represented by Robert S.
Gurwin, of Rader, Fishman &
Grauer PLLC. Respondent is Garry Skaggs d/b/a Garry Skaggs Company,
Crandall, IN (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <usedharleys.com>,
<usedharleys.org>, <usedharleys.biz>,
<usedharleysonline.com>, <rankharleys.com>,
<harleypartsonline.com>,
<usedharleyparts.com> and <usedharleys.info>, registered
with Tucows, Inc., and Intercosmos Media Group, 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.
Tyrus
R. Atkinson, Jr., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on November 11, 2002; the Forum received
a hard copy of the
Complaint on November 11, 2002.
On
November 11, 2002, Tucows, Inc., and Intercosmos Media Group, Inc., confirmed
by e-mail to the Forum that the domain names <usedharleys.com>, <usedharleys.org>,
<usedharleys.biz>, <usedharleysonline.com>, <rankharleys.com>,
<harleypartsonline.com>, <usedharleyparts.com> and <usedharleys.info> are registered with Tucows, Inc., and
Intercosmos Media Group, Inc., and that the Respondent is the current
registrant of the names. Tucows, Inc.,
and Intercosmos Media Group, Inc., have verified that Respondent is bound by
the Tucows, Inc., and Intercosmos Media
Group, 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
November 12, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of December 2, 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@usedharleys.com, postmaster@usedharleys.org,
postmaster@usedharleys.biz, postmaster@usedharleysonline.com,
postmaster@rankharleys.com,
postmaster@harleypartsonline.com, postmaster@usedharleyparts.com, and postmaster@usedharleys.info
by
e-mail.
A
timely Response was received and determined to be complete on December 2, 2002.
Complainant
filed a timely Additional Submission on December 6, 2002.
On December 12, 2002, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Tyrus R.
Atkinson, Jr., as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
Complainant
H-D Michigan, Inc. and its subsidiary and licensee Harley-Davidson Motor
Company Group, Inc. and related companies (collectively,
“H-D”) are one of the
world’s largest and most famous manufacturers and distributors of
motorcycles. H-D was founded in 1903
and has operated under the name Harley-Davidson from that date to present. Today, shares trade on the New York Stock
Exchange under the symbol “HDI.”
H-D
has continued to grow and thrive in the U.S.A. and around the world. Through 2001, H-D delivered 16 consecutive
years of record revenues and earnings.
In 2002, H-D was named “Company of the Year” by Forbes magazine.
H-D’s
primary trademark and service mark HARLEY-DAVIDSON is used and registered both
in word and logo formats. H-D has made
continuous use of the HARLEY-DAVIDSON Marks both inside and outside the U.S.A.
since 1903. H-D is the owner of over
198 and 598 trademark registrations for the word marks HARLEY and
HARLEY-DAVIDSON respectively in over 75
countries, including the U.S.A. H-D also owns another 365 trademark
registrations through the world for various logos incorporating the words HARLEY
or HARLEY-DAVIDSON. The H-D Marks are
extremely well known, highly distinctive and associated by consumers solely
with H-D and its goods and services. It
is undeniable that the H-D Marks are famous and entitled to protection.
H-D
has held its primary domain name, <harley-davidson.com> since 1994. In addition, H-D holds over 600 Internet
domain name registrations of which 154 incorporate the mark HARLEY or
HARLEY-DAVIDSON (or
close variations).
Among the services that H-D provides through its Internet presence is an
up-to-date listing of used genuine H-D motorcycles that are
available for sale
through its network of authorized H-D dealers.
Without
having any legitimate rights to the HARLEY-DAVIDSON name or marks, Respondent
applied for and secured registrations for <usedharleys.com>, <usedharleys.org>,
<usedharleys.biz>, <usedharleys.info>,
<usedharleyparts.com>, <usedharleysonline.com>,
<rankharleys.com>, <harleypartsonline.com>
and <usedharleyparts.com>,
on March 11, 1998, April 28, 2000, February 11, 2002, February 11, 2002,
March 11, 1998, March 11, 1998, April 28, 2000, January 26,
2001 and March 10,
1998 respectively.
From
reviewing the disclaimer page that Respondent has posted in connection with the
URL, <usedharleys.com>, it is clear that Respondent is aware of
H-D’s trademarks rights.
Respondent
has demonstrated a pattern of bad faith conduct through registration of all
eight and now offering to sell six of the names.
Respondent
has engaged in wholesale copyright infringement by lifting large portions of
text from the H-D website.
Respondent
is trading on and using Complainant’s world famous trade names and marks to
post and promote photographs of scantily clad
women perched on Complainant’s
motorcycles and to sell T-Shirts. By
using the Infringing Names to sell shirts, consumers may falsely believe that
the shirts that bear a sexist message is somehow
sponsored by or affiliated
with the Complainant.
Respondent
is intentionally creating consumer confusion and attempting to direct for itself
web traffic that is rightfully intended
for the Complainant. Respondent attempts to reap financial gain
from selling all six of the Infringing Names for a price that is well in excess
of what
it paid, and is actually selling advertisements for used motorcycles in
direct competition with the Complainant while trading on
the fame and goodwill
associated with Complainant’s Marks.
The
domain names registered by Respondent are confusingly similar to Complainant’s
Marks.
Respondent
does not, and has never, offered bona fide goods or services under the
HARLEY-DAVIDSON Marks as required by the Policy.
Respondent
has never been commonly known by the name HARLEY-DAVIDSON.
Respondent’s
conduct cannot constitute noncommercial or fair use without intent for commercial
gain to misleadingly divert customers
or to tarnish the trademark or service
mark at issue.
Respondent
cannot establish legitimate rights and interests in the disputed domain name.
Respondent
registered the domain names in bad faith because Respondent is now attempting
to sell them for a windfall profit in excess
of $400,000.00
Respondent
registered the domain names in order to prevent Complainant from holding them
in connection with its business.
Respondent
has engaged in a documented pattern of registering multiple domain names that
fully incorporate Complainant’s registered
trademarks. This conduct intentionally creates consumer
confusion to benefit Respondent and disrupts the business of Complainant as the
rightful
owner of the trademarks.
Respondent
is Garry Skaggs doing business as Garry Skaggs Company located at Crandall,
Indiana.
Respondent
has had his website up and running for years and has helped fellow bikers to
get their bikes sold. Respondent is
simply offering the general public a way to promote motorcycles for sale. The site was put together in good faith and
with no nudity or abusive language.
Respondent has brought a lot of true bikers together sharing photos of
their children and of loved ones. Being
in the top 10 in the search engine for Used Harleys is a real good reason why
any corporate giant would want to strip Respondent
of his domain names.
Respondent
is not using HARLEY or HARLEY-DAVIDSON.
Respondent is using the name Used Harleys. This does not create confusion for customers. Respondent never used Complainant’s
logo. The site has one banner at the
top and it was from a site that offers free HARLEY banners for web sites and it
was not taken from
the Complainant’s web site.
Respondent
has never confused the general public that Respondent was affiliated with the
Harley-Davidson motorcycle company as posing
as a dealer or a vendor from their
company. Respondent has never used
Harley Davidson’s logo on the site and has never claimed to be a part of the
actual company.
Respondent
has a disclaimer on the web site that states that Respondent has nothing to do
with the Harley Davidson Company. It is
not hidden deep with the site. There is
a link on the left-hand side of the page and is seen on every page view.
Respondent
denies selling advertisements.
No
content was taken from the official Harley-Davidson web site and used on
Respondent’s web site. The material is
freely available on many sites and that is where the history and other material
were obtained. Respondent has removed
the T-shirt sales section from the site to please the Complainant.
Respondent
did put up the site and domain names for sale on Ebay. The site has been running for several years
and if it was a problem Respondent should have been contacted a long time
age. The accusations brought against
Respondent are padded very heavily and are not grounds to strip away
Respondent’s web site.
Complainant’s
Additional Submission supplies additional citation of authority and reargues
points made in the Complaint.
FINDINGS
1. Complainant is one of the world’s largest
and most famous manufacturers and distributors of motorcycles.
2. Complainant has operated under the
trademark HARLEY-DAVIDSON since 1903 and has continued to promote and utilize
the trademark to
the present date.
3. Complainant is the owner of hundreds of
registered trademarks in the United States and elsewhere for the trademarks
HARLEY and HARLEY-DAVIDSON.
4. Complainant has operated on the Internet
since 1994 with the domain name <harley-davidson.com> and owns about 600
domain names,
154 of which use the trademark in whole or part.
5. Respondent is Garry Skaggs who does
business under the name Garry Skaggs Company.
Respondent fails to state the exact organization of his company, when it
came into existence, his or the company’s past activities,
or what his purpose
or the company’s purpose is other than to operate the website at issue in this
proceeding.
6. On March 11, 1998, Respondent registered
the domain names <usedharleys.com> and <usedharleyparts.com>
and <harleypartsonline.com> was registered by Respondent on March
10, 1998.
7. On some date not shown in the pleadings,
Respondent began operating a website at <usedharleys.com> where
Respondent offered to list motorcycles for sale by the owner, with photo, for
$9.95. Respondent sold shirts and
posted various information relating to motorcycles. Respondent says he has been operating the website for “several
years”. Complainant does not contest
this contention. The Panel finds that
the website at <usedharleys.com> began operation before any notice
of any dispute with Complainant.
8. The Panel infers that Respondent has
renewed the domain names above listed.
9. On April 28, 2000, Respondent registered
the domain name <usedharleysonline.com>.
10. On March 14, 2001, Respondent registered
the domain name <usedharleys.org>.
11. On January 26, 2001, Respondent
registered the domain name <rankharleys.com>.
12. On February 11, 2002, Respondent
registered the domain names <usedharleys.biz> and <usedharleys.info>.
13. On or about October 31, 2002, Respondent
placed the six domain names beginning with the word “used”, including <usedharleys.com>
for bid at eBay under the heading “Harley Davidson Web Site TOP 10 IN
SEARCH ENGINE”, setting a minimum bid of $400,000.00. The bidding was to end on November 10, 2002. No result of the bidding process was
revealed to the Panel.
14. Complainant presents no evidence of ever
communicating with Respondent regarding any of the domain names prior to filing
the Complaint
in this case.
15. All of the domain names registered by
Respondent that are in issue in this proceeding are confusingly similar to
Complainant’s trademarks,
HARLEY-DAVIDSON and HARLEY.
16. Respondent has no rights or legitimate
interests in any of the domain names at issue in this case.
17. Complainant fails to prove that the
domain names <usedharleys.com>, <usedharleys.org>,
<usedharleys.biz>, <usedharleysonline.com> , <usedharleyparts.com>
and <usedharleys.info> were registered and used in bad faith.
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.”
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 the Respondent is identical or confusingly
similar to a trademark or service mark in which the Complainant
has rights;
(2)
the 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 rights to the trademarks,
HARLEY-DAVIDSON and HARLEY by virtue of the registration with the United States
Patent and
Trademark Office. This circumstance is sufficient under Policy¶4(a)(i).
See Koninklijke KPN N.V. v. Telepathy Inc., D2000-0217 (WIPO May 7,
2001).
The remaining issue is whether the domain
names and trademarks are confusingly similar.
Panels have differed in consideration of
domain names where the trademark of the Complainant is registered with the word
“used” affixed
just before it. One
Panel found “that the addition of the word ‘used’ to the Caterpillar marks
distinguishes the domain names and thus the domain
names are not confusingly
similar…The domain names are merely descriptive of Respondent’s business
(selling used Caterpillar equipment)
and thus not confusingly similar.” Caterpillar Inc. v. Neal NcKean d/b/a
Machineworks, Inc. d/b/a/ machinetools.com, FA 97302 (Nat. Arb. Forum Apr.
6, 2001).
Another Panel found that where the domain
name consisted of the word “used”, followed by the trademark “Philips” that
“used” is a
generic addition to the domain name with no distinctiveness. The Panel found the domain name
<usedphilips> confusingly similar to complainant’s trademark
“Philips.” Koninklijke Philips
Electronics N.V. v. Lewis & Clark, Inc. D2000-1344 (WIPO Jan. 15,
2001).
Another Panel decided that the domain
name <usedcatauctions.net> was confusingly similar to complainant’s
registered “CAT’ mark
“The only differences between Respondent’s domain names
and the registered mark of Complainant is the addition of the top-level domain
‘net’ and the words ‘used’ or ‘auction/s’ to the disputed domain names.” “Furthermore, the addition of the
descriptive words ‘used’ and ‘auction/s’ to the disputed domain names does not
defeat a finding
of confusing similarity by the Panel under
Policy¶4(a)(i).” Caterpillar Inc.
v. VMC Right Track, Inc. FA 125750 (Nat. Arb. Forum Nov. 14, 2002).
Another case involved the trademark,
“fadal.” Respondent registered
<usedfadal.net>, <usedfadal.com>, <fadal-used.com>,
<usedfadalcnc.com>, <usedfadals.net>,
<usedfadals.com>,
<used-fadals.net>, <used-fadals.com>, <fadalsused.com> and
<fedalused.com>. The Panel
stated, “The question of whether the contested domain names are confusingly
similar to a trademark in which the Complainant
has rights is not free from
doubt.” The Panel further stated: “The use of domain names to describe
products and services, rather than announce the name of the business offering
them on the Internet,
has been noted and affirmed as fair nominative use in a
number of UDRP cases.” The Panel cited,
as did the Panel in Caterpillar Inc. v.
Neil McKean, et al, the case of The Kittenger Company Inc. v.
Kittinger Collector, AF 0107 (eResolution May 8, 2000). The question of confusing similarity was
never decided in the “fadal” case. It
was resolved on other grounds. See
Giddings & Lewis LLC v. Neal McKean d/b/a Machineworks, Inc. d/b/a
Machinetools.com., D2000-1150 (WIPO Mar. 14, 2001).
The Panel finds that the weight of domain
dispute decisions favor the result that the domain names in question are
confusingly similar
to Complainant’s trademarks. The Panel adopts the reasoning in Koninklijke Philips Electronics
N.V. v. Lewis & Clark, Inc., wherein it was held that when the
word “used” is followed by the tradename of Complainant, it becomes merely a
generic addition
to the domain name, with no distinctiveness. The word “used”
and “rank” and “online” and the addition of the letter “s” to Complainant’s
mark, represent nothing more than descriptive words. These descriptive words do not change the fact that the dominant
feature of the disputed domain names is the use of Complainant’s
distinctive
and registered HARLEY mark. See Caterpillar Inc. v. VMC Right Track, Inc., supra. The addition of a top-level domain is
irrelevant when determining whether a domain name is confusingly similar to a
mark in which
a complainant has established rights, thus “com”, “org”, “info”
and “biz” are to be disregarded when making the determination. See Rollerblade, Inc. v. McCrady, D2000-0429
(WIPO June 25, 2000).
The Panel finds that the domain names <usedharleys.com>,
<usedharleys.org>, <usedharleys.biz>, <usedharleysonline>,
<rankharleys.com>, <harleypartsonline.com>,
<usedharleyparts.com> and <usedharleys.info> are confusingly
similar to Complainant’s HARLEY Mark.
Complainant prevails under the
requirements of Policy¶4(a)(i).
It is obvious that Respondent is not
affiliated with Complainant nor authorized by Complainant to use Complainant’s
trademarks or
service marks.
Complainant contends that Respondent has never been known by the name
HARLEY-DAVIDSON in accordance with Policy¶4(c)(ii). Complainant contends that Respondent does not, and has never,
offered bona fide goods or services under the HARLEY-DAVIDSON Marks
as required
under Policy¶4(c)(i). Respondent’s
conduct, Complainant argues, cannot constitute noncommercial or fair use
without intent for commercial gain to misleadingly
divert customers or to
tarnish the trademark or service mark at issue. Complainant contends that it has exclusive rights to use its
registered marks. See Am. Online v. Tencent Communications Corp., FA
93668 (Nat. Arb. Forum Mar. 21, 2000).
As a result of Complainant’s showing, and Respondent’s apparent lack of
rights and legitimate interests in the domain name, the burden
must shift to
Respondent to demonstrate Respondent’s rights and legitimate interests in the
domain names. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228
(WIPO Nov. 28, 2000).
Respondent may demonstrate its rights and
legitimate interests in the domain names by any of the methods set out in
Policy¶4(c).
For Respondent to prove its contentions
as to rights and legitimate interests, Respondent must produce “concrete
evidence” not “mere
personal assertions.”
See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21,
2000) wherein it was stated as follows:
Where a
complainant has asserted that the respondent has no rights or legitimate
interests in respect of the domain name, it is incumbent
upon the respondent to
come forward with concrete evidence rebutting this assertion. This information is uniquely within the
knowledge and control of the respondent.
Failure of a respondent to come forward with such evidence is tantamount
to admitting to the truth of complainant’s assertions in
this regard
Respondent has presented nothing in the
way of evidence. There are no
affidavits, exhibits, or other types of proof attached to the Response. Respondent makes a rudimentary statement
wherein he simply states that he wanted to open a website to offer used
motorcycles for sale
on the Internet and that his site had been in operation
for several years. The only concrete
evidence is contained in the Exhibits of Complainant. Complainant included printouts of several of the pages contained
on Respondent’s website at <usedharleys.com>.
The web
pages disclose that, for a certain price to be paid by a motorcycle owner,
Respondent would list a photograph and description
of the used motorcycle for
sale. The owner’s name was not
listed. It is not explained on the web
page whether a potential buyer seeking to purchase one of the listed motorcycles
was referred to the
owner or some other method was used to forward the
sale. Respondent sold T-shirts
containing the name “usedharleys.com”.
Respondent also supplied some pages of general information relating to
motorcycles. Respondent states that he has
been operating the website in this manner for several years. Complainant does not dispute this
allegation, and it is taken as true.
The
question is whether this state of facts supports a finding that before any
notice to Respondent of the dispute, Respondent’s use
of, or demonstrable
preparations to use, the domain name was in connection with a bona fide
offering of goods or services under Policy¶4(c)(i). There is no question that Respondent began using the domain name <usedharleys.com>
years before any notice of the dispute.
The remaining question is whether it was a bona fide offering of goods.
There
can be no doubt that Respondent chose the domain names containing the word
HARLEY to attract persons interested in HARLEY-DAVIDSON
motorcycles.
Most
Panels apply the rule that the use of an infringing domain name does not
represent a bona fide offering of goods and services
under Policy¶4(c)(i) under
URDP precedent. See Madonna Ciccone, p/k/a Madonna v. Parisi and
“Madonna.com”, D2000-0847 (WIPO May 28, 2001) which held that “use which
intentionally trades on the fame of another can not constitute a ‘bona fide’
offering of goods and services. To
conclude otherwise would mean that a Respondent could rely on intentional
infringement to demonstrate a legitimate interest, an
interpretation that is
obviously contrary to the intent of the Policy.” See also Yahoo! Inc. v. Web Master a/k/a MedGo, FA 127717
(Nat. Arb. Forum Nov. 27, 2002); Yahoo! Inc. v. Microbiz, Inc. D2000-1050
(WIPO Nov. 7, 2000); Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO
Feb.22, 2001).
No
evidence is presented to show that Respondent has used any of the domain names
other than <usedharleys.com> for any purpose since each domain
name’s registration date to the present date.
Complainant
prevails under the requirements of Policy¶4(a)(ii).
Complainant bears the burden of proof on
the issue of bad faith. Complainant may proceed under any of the circumstances
set out in
Policy¶4(b) or by any other method calculated to illustrate bad
faith under the Policy, but not specifically set out in the Policy.
Complainant advances three arguments.
The first argument is that Respondent by
offering six of the disputed domain names for sale on eBay, proves circumstances
indicating
that Respondent registered the domain names primarily for the
purpose of selling the domain names to Complainant or a competitor
of
Complainant for a valuable consideration in excess of Respondent’s
out-of-pocket costs directly related to the domain names. Policy¶4(b)(i).
No evidence is presented that Respondent
attempted to sell the domain names to Complainant or a competitor of
Complainant. Respondent attempted to
sell the six domain names beginning with the word “used” on eBay to the general
public. It has been held that where the
evidence is clear that Respondent registered a domain name for the purpose of
selling the domain name
to the general public, rather than specifically to a
complainant or a competitor of complainant, that the inference may be properly
drawn that the spirit of Policy¶4(b)(i) has been violated. “…[T]hose requisite
elements may be inferred from the circumstances, including
the nature of the
domain name (its incorporation of the Complainant’s famous and specific trademark)
and the manner in which the
domain name has been advertised for sale.” Bayerische Motoren Werke AB v. (This
Domain is For Sale) Joshuathan Investments, Inc., D2002-0787 (WIPO Oct. 8,
2002). In the Bayerische case is
was obvious that the domain name was registered solely to sell to the
public. That is not obvious in this
case. Respondent registered three of
the domain names in 1998. He operated a
web site at one of them for several years before he offered it for sale. The Panel is not prepared to make the
inference made in the Bayerische case under the facts and circumstances
of this case.
Complainant’s
second point is that the domain names were registered to prevent Complainant
from holding them in connection with its
business. Complainant presents no evidence to support this allegation. No suggestion is made by Complainant that it
would ever have a desire to register any domain name beginning with the word
“used”. Complainant is in the business
of selling new motorcycles, not used ones. Complainant owns 154 domain names
incorporating its trademark. The Panel
will not infer that Respondent by registering the domain names beginning with
the word “used” had an intent to prevent Complainant
from reflecting the Mark
HARLEY-DAVIDSON or HARLEY in a domain name nor is there presented any evidence
of a pattern of such conduct
other than the registration of the domain names at
issue. Complainant cannot prevail under
Policy¶4(b)(ii).
Complainant next contends that Respondent
used Complainant’s trademark to attract advertisers, buyers and sellers of used
HARLEY-DAVIDSON
motorcycles to Respondent’s web site, creating a very strong
likelihood of confusion. Consumers are
likely to mistakenly believe that Respondent and Respondent’s web site somehow
originate from, are sponsored or endorsed
by, or affiliated with Complainant,
it is argued.
Respondent advertises used
HARLEY-DAVIDSON motorcycles for sale.
Complainant also advertises used HARLEY-DAVIDSON motorcycles for sale as
part of its web site at <harley-davidson.com>. This is illustrated by Complainant’s Exhibit N showing a web page
titled “Used Bike Search Results.” This
service is provided for Complainant’s dealers who may list used motorcycles on
Complainant’s web site.
However, no evidence is presented to the
effect that Complainant or its authorized dealers are the only ones legally
entitled to sell
used HARLEY-DAVIDSON motorcycles. No evidence of any kind is presented by Complainant to show any
actual confusion on the part of any single consumer who mistakenly
believed
that Respondent’s web site at <usedharleys.com> was sponsored or
endorsed by, or affiliated with Complainant.
A user searching for Complainant’s
HARLEY-DAVIDSON company would surely first enter either
<harley-davidson.com>, <harleydavidson.com>,
or
<harley.com>. Upon doing so, the
user would be taken to Complainant’s web site.
It is exceedingly unlikely that any user seeking to find Complainant
would enter <usedharleys.com>.
Complainant is known as a manufacturer and seller of new
motorcycles, not used motorcycles.
Moreover, there is a clear disclaimer at Respondent’s web site of any
affiliation between Complainant and Respondent. Compare DaimlerChrysler A.G. v. Drummonds, D2001-0160
(WIPO June 18, 2001) which held that a Respondent did not, operating a web site
at <mercedesshop.com>, attract users
to the site by creating a likelihood
of confusion, nor were such users likely to believe that they are dealing with
an authorized
agent of Complainant (Mercedes-Benz) or that Mercedes-Benz
sponsored the site. The Panel in the
Daimler-Chrysler case stated as follows:
Under the
present facts, if the panel were to find for the Complainant, the majority can
conceive of no case in which a legitimate
competitor in the sale of parts and
aftermarket accessories could ever register a domain name descriptive of that
business. The Policy was designed to
deal only with the limited problem of cybersquatting. It was not designed to establish for the holder of a strong
trademark a bar to entry of online competitors. The majority also notes that the Policy was not designed to deal
with, nor is the Panel asked to determine, the issue of trademark
infringement. Whether the use of
Complainant’s trademark on Respondent’s web site constitutes trademark infringement
is not for the Panel to decide. If
Complainant wishes to pursue that issue, other forums are available.
Respondent stated that he registered the
domain name <usedharleys.com> believing that it was legitimate to
advertise for sale used Harley-Davidson motorcycles held by individual owners
seeking buyers. That is, in fact, what
Respondent did for several years after his registration of the domain name in
1998. Complainant advances no evidence
that this statement and intention is untrue.
This Panel finds no evidence in the pleadings and exhibits to prove that
Respondent registered the domain name <usedharleys.com> with the
intent to sell the domain name, to disrupt Complainant’s business of
manufacturing and selling new motorcycles, to prevent
Complainant from
reflecting its trademark in a corresponding domain name, or to intentionally
attempt to attract Internet users to
the web site by creating a likelihood of
confusion with Complainant’s mark as to source, sponsorship, affiliation, or
endorsement
of the web site.
Where a party registers a domain name
believing that they were within their legal rights to do so, though it later
turns out that
this belief was incorrect, that does not mean complainant must
automatically prevail. In a case where respondent registered several
infringing
domain names owned by the NCAA, for the purpose of selling tickets to NCAA
events on the Internet, the Panel found that
the respondents apparently
registered the domain names believing that they were within their legal rights
to do so.
They may be wrong…Even if they are wrong, however, this does
not mean Complainant should prevail…The ICANN Policy is directed to
cybersquatting,
e.g., the types of activities set forth in paragraph
4(b)-registering the domain not for potential by the registrant, but rather
to
sell to another or intentionally creating a likelihood of confusion. Here, Respondents are attempting to sell
tickets to the NCAA Tournaments.
Whether they can properly do so or not turns on the law of trademark,
unfair competition or dilution, not on ones’ intent, which is
crucial in an
ICAAN proceeding.
NCAA v. Pitkin, et al, D2000-0903 (WIPO Mar. 9, 2001).
Policy¶4(a)(iii) requires the intent on
the part of a respondent to register and use the domain name in bad faith. “A conscious decision was made that UDRP
proceedings be limited to abusive registrations.” A Panel is not permitted to
extend the
Policy to cover cases not intended to be with the scope of the
Policy. See Teradyne, Inc. v. 4Tel
Technology, D2000-0026 (WIPO May 9, 2000).
The Panel can find no evidence that the
domain names in question were registered in bad faith. Without such proof, the Panel is not
permitted to find for Complainant. See Domain Bank, Inc. v. Sonic Co., Ltd.,
D2001-00014 (Feb. 13, 2002).
This entire dispute arose due to
Respondent placing six of the domain names for sale on eBay, some time after
they had been registered. Complainant
was apparently content to permit Respondent to operate his web site for several
years either because of the fact that
it did insufficient damage to Complainant
to bring the site to Complainant’s attention, or that Complainant knew about
the site but
did not object to Respondent’s activities.
But when the domain names were placed
with eBay, Complainant filed this Complaint.
Complainant must understand that even if the placement of the domain
names for sale at eBay in itself was a violation of the Policy
that alone would
not permit Complainant to prevail if the initial registrations were not made in
bad faith. See Teradyne, Inc. v. 4Tel Technology, supra.
With regard to the six names placed on
eBay Complainant does not prevail under Policy¶4(a)(iii).
However, Respondent made no attempt to
defend the registration and use of the domain names <harleypartsonline.com>
and <rankharleys.com>. Rule
5 requires a respondent to respond specifically to the statements and
allegations contained in the complaint and include any
and all bases for the
respondent to retain registration and use of the disputed domain name. See Rules for Uniform Domain Name Dispute
Resolution Policy.
The Panel finds that Respondent, by his
failure to dispute Complainant’s contentions regarding these two domain names,
admitted the
truth of Complainant’s contentions. Therefore, the domain names <harleypartsonline.com>
and <rankharleys.com> will be transferred to Complainant.
DECISION
The Panel finds that the
domain names <harleypartsonline.com> and <rankharleys.com>
now registered to Respondent, Garry Skaggs d.b.a. Garry Skaggs Company, be transferred
to Complainant, H-D Michigan, Inc., and the domain names <usedharleys.com>,
<usedharleys.org>, <usedharleys.biz>, <usedharleysonline.com>,
<usedharleyparts.com>, and <usedharleys.info> be retained
by the Respondent.
Tyrus R. Atkinson, Jr., Panelist
Dated: December 24, 2002
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