Generic Top Level Domain Name (gTLD) Decisions

DECISION

H-D Michigan, Inc. v. Chad Morris

Claim Number: FA0212000137094

PARTIES

Complainant is H-D Michigan, Inc., Ann Arbor, MI (“Complainant”) represented by Robert S. Gurwin, of Rader, Fishman & Grauer PLLC.  Respondent is Chad Morris, Alliance, OH (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <2003harleydavidson.com>, < 2003harley.com>, <2004harley.com>, < 2005harley.com>, <harleyanniversary.com> and <harleyleases.com>, registered with Wild West Domains, Inc.

PANEL

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

Honorable Paul A. Dorf (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 16, 2002; the Forum received a hard copy of the Complaint on December 16, 2002.

On December 16, 2002, Wild West Domains, Inc. confirmed by e-mail to the Forum that the domain names <2003harleydavidson.com>, <2003harley.com>, <2004harley.com>, < 2005harley.com>, < harleyanniversary.com> and <harleyleases.com> are registered with Wild West Domains, Inc. and that Respondent is the current registrant of the names.  Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 December 17, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 6, 2003 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@2003harleydavidson.com, postmaster@2003harley.com, postmaster@2004harley.com, postmaster@2005harley.com, postmaster@harleyanniversary.com, and postmaster@harleyleases.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 January 17, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) 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

1. The  <2003harleydavidson.com>, <2003harley.com>, <2004harley.com>, <2005harley.com>, <harleyanniversary.com>, and <harleyleases.com> domain names are confusingly similar to Complainant's HARLEY and HARLEY-DAVIDSON marks.

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

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

B. Respondent failed to submit a Response.

FINDINGS

Complainant, Harley-Davidson, was founded in 1903 by William S. Harley and three Davidson brothers.  By 1912, Complainant had a network of over 200 dealers in the United States.  In 1920, Complainant became the largest motorcycle manufacturer in the world, with over 2000 dealers in 67 countries.  In 2002 Complainant was named “Company of the Year” by Forbes magazine.

Complainant holds 198 and 598 trademark registrations for HARLEY and HARLEY-DAVIDSON respectively in over 75 countries throughout the world, including Registration Numbers 2,285,656 and 1,352,679 for HARLEY and 522,500 and 508,160 for HARLEY-DAVIDSON with the United States Patent and Trademark Office (“USPTO”).

Respondent registered the disputed domain names on December 10, 2002. Respondent is selling all of the disputed domain names on eBay for a “Buy It Now” price of $300,000, noting that the domain names “all have awesome value!!!”  Respondent is also attempting to auction off other domain names that include marks such as HUMMER and FERRARI as well as domain names that incorporate the names of such celebrities as Jennifer Lopez and Ben Affleck.  Respondent has not developed a website at any of the disputed domain names.

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 and HARLEY-DAVIDSON marks through registration with the USPTO as well as registration of the marks in numerous countries throughout the world.

Respondent’s  <2003harley.com>, <2004harley.com> and <2005harley.com> domain names are confusingly similar to Complainant’s HARLEY mark because they incorporate Complainant’s entire HARLEY mark and merely add the numerical prefixes “2003,” “2004,” and “2005.”  Despite the addition of these prefixes Complainant’s HARLEY mark is still the dominant element of the domain names and therefore the addition of the numerical prefix does not add any distinct features capable of overcoming a claim of confusing similarity.  See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion); see also Hitachi, Ltd. v. Fortune Int’l Dev. Ent, D2000-0412 (WIPO July 2, 2000) (finding that the domain name <hitachi2000.net> is confusingly similar to Complainant’s mark).

Respondent’s <2003harleydavidson.com> domain name is confusingly similar to Complainant’s HARLEY-DAVIDSON mark because it merely adds the numerical prefix “2003” and deletes the hyphen between HARLEY and DAVIDSON.  The omission of a hyphen does not create any distinct characteristics capable of distinguishing Respondent’s domain name from Complainant’s HARLEY-DAVIDSON mark.  See 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); see also Ritz-Carlton Hotel Co. v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that removing a hyphen in the domain names is not sufficient to differentiate the domain names from the mark).  Furthermore, the addition of the numerical prefix “2003” is an insubstantial change to Complainant’s HARLEY-DAVIDSON mark, which remains the dominant feature of the domain name.  The addition of the numbers instead signifies the year 2003, which could lead Internet users to believe that the domain name features current models of Complainant’s motorcycles; thus, it does not create a distinct feature capable of overcoming a claim of confusing similarity.  See Am. Online Inc. v. Chinese ICQ Network, D2000-0808 (WIPO Aug. 31, 2000) (finding that the addition of the numeral 4 in the domain name <4icq.com> does nothing to deflect the impact on the viewer of the mark ICQ and is therefore confusingly similar); see also Hitachi, Ltd. v. Fortune Int’l Dev. Ent, D2000-0412 (WIPO July 2, 2000) (finding that the domain name <hitachi2000.net> is confusingly similar to Complainant’s mark).

Respondent’s <harleyanniversary.com> domain name is confusingly similar to Complainant’s mark because it merely adds the word “anniversary” after Complainant’s HARLEY mark.  Since the year 2003 is the one-hundredth anniversary of the founding of Complainant’s company, the addition of the term “anniversary” to HARLEY is likely lead Internet users to believe that Complainant sponsors the domain name.  Therefore the added term does not abate potential consumer confusion.  See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business); see also Parfums Christian Dior v. 1 Netpower, Inc., D2000-0023 (WIPO Mar. 3, 2000) (finding that four domain names that added the descriptive words "fashion" or "cosmetics" after the trademark were confusingly similar to the trademark).

The <harleyleases.com> domain name is confusingly similar to Complainant’s HARLEY mark because it merely adds the generic term “lease” to the end of the domain name.  Adding a generic term to a famous mark does not create any distinct features capable of overcoming a claim of confusing similarity pursuant to Policy ¶ 4(a)(i).  See 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); see also 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).

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

Rights or Legitimate Interests

When Complainant asserts a prima facie case against Respondent, the burden of proof shifts to Respondent to show that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See 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); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the Respondent has failed to invoke any circumstance that could demonstrate any rights or legitimate interests in the domain name).

Respondent has failed to submit a Response in this proceeding; thus the Panel may accept all of Complainant’s reasonable assertions and inferences as true. 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 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’s only use of the disputed domain names has been to offer them all for sale on eBay for $300,000.  Respondent has developed no website, nor has it submitted any evidence of a potential business plan in relation to the disputed domain names.  Thus it can be inferred that Respondent’s only purpose in registering the domain names is to attempt to sell them for profit.  This type of opportunistic registration is not considered 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).  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 names 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).

There is no evidence on record to establish that Respondent is commonly known as 2003HARLEY, 2004HARLEY, 2005HARLEY, 2003HARLEYDAVIDSON, HARLEYANNIVERSARY, HARLEYLEASES, <2003harleydavidson.com>, <2003harley.com>, <2004harley.com>, <2005harley.com>, <harleyanniversary.com>, or <harleyleases.com>. Based on the fame of Complainant’s mark it would be very difficult to establish that Respondent is commonly known by any variation of HARLEY or HARLEY-DAVIDSON.  Respondent has failed to come forward with any proof or explanation in relation to its use; thus the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

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

Registration and Use in Bad Faith

Given the fame of Complainant’s HARLEY and HARLEY-DAVIDSON marks, and Respondent’s promotional claim that the domain names have “awesome value,” it can be inferred that Respondent had actual knowledge of Complainant’s rights when it registered the disputed domain names.  Registration of infringing domain names, despite actual or constructive knowledge of Complainant’s rights, is evidence of registration in bad faith pursuant to Policy ¶ 4(a)(iii).  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); 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 domain names with the primary intent of selling those registrations for profit is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(i). Respondent’s bad faith registration is demonstrated by its attempt to sell the disputed domain names on eBay for $300,000 within a month after Respondent registered them.  See World Wrestling Fed’n Entmt., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out of pocket costs); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding bad faith where the Respondent offered the domain name for sale for $150,000 the day after registration of the domain name); see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding bad faith based on the apparent willingness of the Respondent to sell the domain name in issue from the outset, albeit not at a price reflecting only the costs of registering and maintaining the name).

Furthermore, Respondent has registered six domain names that infringe on Complainant’s famous marks in the same instance.  Respondent has also registered domain names that incorporate the famous marks of others. This is evidence of a pattern of bad faith registration pursuant to Policy ¶ 4(b)(ii).  See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also YAHOO! Inc. v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy ¶ 4(b)(ii) in Respondent's registration of two domain names incorporating Complainant's YAHOO! mark); see also Australian Stock Exch. v. Cmty. Internet (Australia), D2000-1384 (WIPO Nov. 30, 2000) (finding bad faith under Policy ¶ 4(b)(ii) where Respondent registered multiple infringing domain names containing the trademarks or service marks of other widely known Australian businesses).

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 names <2003harleydavidson.com>, <2003harley.com>, <2004harley.com>, <2005harley.com>, <harleyanniversary.com>, <harleyleases.com> be TRANSFERRED from Respondent to Complainant.

Honorable Paul A. Dorf (Ret.) Panelist

Dated:  January 29, 2003

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