DECISION

H-D Michigan, Inc. v. Petersons Automobile a/k/a Larry Petersons

Claim Number: FA0212000135608

PARTIES

Complainant is H-D Michigan, Inc., Ann Arbor, MI, USA (“Complainant”) represented by Robert S. Gurwin, of Rader Fishman & Grauer.  Respondent is Petersons Automobile a/k/a Larry Petersons, Toronto, ON, CANADA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <harleyfanclub.com>, registered with Enom, 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.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 2, 2002; the Forum received a hard copy of the Complaint on December 2, 2002.

On December 5, 2002, Enom, Inc. confirmed by e-mail to the Forum that the domain name <harleyfanclub.com> is registered with Enom, Inc. and that Respondent is the current registrant of the name.  Enom, Inc. has verified that Respondent is bound by the Enom, 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 9, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 30, 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@harleyfanclub.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 6, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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:

1. Respondent’s <harleyfanclub.com> domain name is confusingly similar to Complainant’s registered HARLEY-DAVIDSON family of marks.

2. Respondent does not have any rights or legitimate interests in the <harleyfanclub.com> domain name.

3. Respondent registered and used the <harleyfanclub.com> domain name in bad faith.

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

FINDINGS

Complainant, H-D Michigan, Inc., and its primary subsidiary and licensee Harley-Davidson Motor Co. Group, Inc. earned over $3.36 billion in worldwide sales in fiscal year 2001. Complainant is one of the world’s largest and most recognized manufacturers and distributors of motorcycles, motorcycle parts and accessories, and related goods and services. Complainant traces the origin of its business to 1903. By 1912 Complainant had established a network of over 200 dealers in the United States and shipped its first HARLEY-DAVIDSON motorcycles to international destinations.

Among Complainant’s primary trademark and service marks are the HARLEY and HARLEY-DAVIDSON marks, both of which are used and registered in word and logo formats (collectively, the “HARLEY-DAVIDSON Marks”). Presently, Complainant is the holder of 198 and 598 trademark registrations for the HARLEY and HARLEY-DAVIDSON marks, respectively, in over 75 countries. Complainant also holds another 365 trademark registrations throughout the world for various logos incorporating the HARLEY-DAVIDSON Marks. Complainant holds numerous registrations protecting the HARLEY-DAVIDSON Marks in Canada, Respondent’s recorded place of business. More specifically, Complainant holds the following registrations: 294,796 registered Sept. 7, 1984; 456,051; 324,987; 237,635; and, 364,502, listed without limitation.

Respondent registered the disputed <harleyfanclub.com> domain name on August 28, 2002. Complainant’s investigation of Respondent’s use of the subject domain name indicates that Respondent posted and continues to run an active website at the domain name that compares itself to Complainant’s official HARLEY-DAVIDSON Visa Free Ride Sweepstakes website. Moreover, Respondent’s website has “completely copied the text and graphics from Complainant’s official Sweepstakes site, and has copied the overall look and feel of the Complainant’s site.”

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 the HARLEY-DAVIDSON Marks through successful registration in over 75 countries, and the relevant trademark authorities contained therein. Further, Complainant has continuously used its HARLEY-DAVIDSON Marks in commerce since its 1903 inception.

Respondent’s <harleyfanclub.com> domain name is confusingly similar to Complainant’s HARLEY-DAVIDSON Marks. Specifically, Respondent’s domain name contains Complainant’s registered HARLEY mark in its entirety and deviates only with the addition of the related words “fan club.” The addition of the words “fan club” to Complaniant’s famous mark does not dispel the confusing similarity between the domain name and the HARLEY-DAVIDSON Marks because Complainant’s HARLEY mark remains the root of Respondent’s second-level domain. Additionally, the words “fan club” relate to Complainant’s public relations and fail to create any distinguishing characteristics from Complainant’s mark or industry-related goals. See Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish identical or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); 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 Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant’s submission to the Panel intimates that Respondent does not have any rights or legitimate interests in the <harleyfanclub.com> domain name. Because Respondent has failed to submit a Response, Complainant’s assertions are unopposed and the Panel is permitted to accept all reasonable inferences contained in the Complaint 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).

Additionally, because Complainant has provided proof of valid, subsisting rights in a mark that is confusingly similar to the domain name in question and alleged that Respondent lacks rights or legitimate interests in the domain name the burden shifts to Respondent. By failing to respond, Respondent has consequently failed to assert any circumstances that could substantiate its rights or interests in the subject domain name. 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, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).

As stated, Respondent utilizes Complainant’s HARLEY-DAVIDSON Marks on its infringing website located at the <harleyfanclub.com> domain name. Respondent’s website attempts to opportunistically trade on the goodwill and recognition associated with Complainant’s famous marks. For instance, Respondent’s website utilizes various banners that display: “HARLEY-DAVIDSON VISA FREE RIDE SWEEPSTAKES” as well as Complainant’s “Bar and Shield” logo mark and the “overall look and feel of Complainant’s official Sweepstakes website.” Respondent is attempting to benefit from the advertising and promotional undertakings of Complainant as well as a perceived affiliation with Complainant’s product. Therefore, Respondent fails to establish rights or legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) and (iii). See 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); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, it's use of the names was not in connection with the offering of goods or services or any other fair use).

No evidence before the Panel suggests that Respondent has a legitimate connection with the <harleyfanclub.com> domain name, nor has Respondent proposed any set of circumstances that would indicate it is commonly known as the “harleyfanclub” second-level domain under Policy ¶ 4(c)(ii). The relevant WHOIS information reveals that Respondent is Petersons Automobile, and Larry Petersons is apparently the responsible agent for the said entity. Complainant’s use of the HARLEY-DAVIDSON Marks in commerce for nearly a century creates a presumption that Respondent is not commonly known by a domain name that incorporates Complainant’s HARLEY mark in its entirety. 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 CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent failed to demonstrate any rights or legitimate interests in the <twilight-zone.net> domain name since Complainant had been using the TWILIGHT ZONE mark since 1959).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

The evidence before the Panel supports a finding that Respondent registered and used the subject domain name in bad faith as described in Policy ¶ 4(b)(iv). The presented circumstances and evidence demonstrate that through registration and use of the infringing domain name, Respondent is intentionally attempting to attract Internet users to its fraudulent website by using Complainant’s famous marks and likeness. Moreover, Respondent’s actions tarnish Complainant’s mark and the goodwill associated with the HARLEY-DAVIDSON Marks by causing consumers to believe that Respondent’s fabricated sweepstakes represents Complainant’s Harley Sweepstakes. Respondent’s use of Complainant’s mark and various logos on its website supports the conclusion that Respondent’s registration and use of the <harleyfanclub.com> domain name evidences opportunistic bad faith under Policy ¶ 4(b)(iv). See Singapore Airlines Ltd v. P & P Servicios de Communicacion S.L., D2000-0643 (WIPO Aug. 29, 2000) (“The domain name ‘singaporeairlines.com’ is so obviously connected with a well-known airline that its very registration and use by someone with no connection to the airline suggests opportunistic bad faith.  Indeed, it is hard to imagine a more blatant exercise in ‘cybersquatting’”); see also London Metal Exch. Ltd. v. Hussain; D2000-1388 (WIPO Dec. 15, 2000) (finding that the “letters ‘lme’ are so obviously connected with a well-known entity that their very use by someone with no connection to Complainant suggests opportunistic bad faith”); see also Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy 4(b)(iv)).

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

DECISION

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

Accordingly, it is Ordered that the <harleyfanclub.com> domain name be TRANSFERRED from Respondent to Complainant.

John J. Upchurch, Panelist

Dated: January 8, 2003

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