H-D Michigan Inc. v. Henrik
Hessbo d/b/a Fuc Et Viva
Claim Number: FA0709001082084
PARTIES
Complainant is H-D Michigan Inc. (“Complainant”), represented by David
M. Kelly, of Finnegan,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <motoharley.com>, registered with Tucows.
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.
Terry F. Peppard as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on September 26, 2007; the
National Arbitration Forum received a hard copy of the Complaint on September 27, 2007.
On September 26, 2007, Tucows confirmed by e-mail to the National
Arbitration Forum that the <motoharley.com> domain name is
registered with Tucows and that the
Respondent is the current registrant of the name. Tucows
has verified that Respondent is bound by the Tucows
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 1, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of October 22, 2007 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@motoharley.com by
e-mail.
A timely Response was received on or before October 22, 2007. However,
the Response was deemed deficient pursuant to ICANN Rule 5(a) because the
National Arbitration Forum did not receive a hard copy.
A timely Additional Submission was received from Complainant and
determined to be complete on October 29, 2007.
On October 30, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends, among other things, that:
Since 1903, Complainant has
manufactured, advertised, and sold motorcycles under the famous HARLEY-DAVIDSON
trademark and trade name.
For decades prior to the
commencement of this proceeding, Complainant has offered and sold motorcycle
parts and accessories, motorcycle clothing, and various other products and
services under the associated HARLEY trademark.
Complainant owns European Community Trademark (“CTM”) registrations for the HARLEY mark, which registrations cover
Sweden and Greece, where Respondent and his business are purportedly located,
including Registration No. 000083931 for the mark HARLEY, filed April 1, 1996,
issued February 3, 1999, covering vehicles and clothing.
Respondent registered the domain name <motoharley.com> on September 19, 2003.
Respondent uses the domain name to resolve to a commercial
website advertising motorcycle rental services on the Greek
Respondent
uses the <motoharley.com> domain name intentionally to attract Internet users to its website, for
commercial gain, by creating a likelihood of confusion as to Complainant’s
possible association with that web site.
Respondent is not commonly known by the <motoharley.com> domain name.
The domain name is
confusingly similar to Complainant’s HARLEY mark.
Respondent does not have
any rights to or a legitimate interest in the domain name.
Respondent is not and has never been a licensee of
Complainant, and Respondent is not and has never been authorized by Complainant
to use the HARLEY Mark.
Respondent’s
registration and use of the domain name are in bad faith.
B. Respondent
Respondent contends, among other things, that:
Respondent registered the contested domain name in 2003.
The related web site was created by Respondent on behalf of a business
owner in
Respondent no longer has anything to do with either the disputed domain
name or the related web site.
B. Additional Submissions
Complainant, in its additional submission, contends, among other
things, that:
Respondent does not deny that it registered the contested domain name
in September of 2003, as alleged.
Respondent does not deny that the disputed domain name is confusingly
similar to Complainant’s mark.
Respondent admits that it permitted the use of the contested domain
name for a web site that competes with the business of Complainant.
FINDINGS
(1) the domain name registered by Respondent is
confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the same domain name was registered and is being
used by Respondent in bad faith.
DISCUSSION
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:
i.
the
domain name registered by the Respondent is identical or confusingly similar to
a trademark or service mark in which the Complainant has rights;
ii.
the
Respondent has no rights or legitimate interests in respect of the domain name;
and
iii.
the domain name
has been registered and is being used in bad faith.
Preliminary Procedural
Issue: Deficient Response
Respondent has filed a deficient
Response in that a hard copy was not received by the Forum by the established
Response deadline. In light of this, we
are under no obligation to consider Respondent’s submission because it is not
in compliance with ICANN Rule 5(b). See Bank of Am. Corp. v. NW Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (refusing to accept a Respondent’s
deficient response submitted only in electronic form). However, in the interests of justice, we will
consider the Response for whatever value it may have. See Strum v. Nordic Net
On the merits, Complainant asserts rights to the HARLEY mark based upon its trademark registration with the European Community trademark authority. Respondent does not contest Complainant’s claim of rights in the mark. We therefore accept that Complainant’s trademark registration confers upon it rights in the HARLEY mark pursuant to Policy ¶ 4(a)(i). See Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that a complainant’s registration of a mark with the pertinent trademark authority established its rights in the mark); to the same effect, see also Diners Club Int’l Ltd. v. Rulator Corp., FA 967678 (Nat. Arb. Forum June 5, 2007).
On the point of confusing similarity, the <motoharley.com> domain name contains Complainant’s HARLEY mark in its entirety and merely adds the generic prefix “moto.” This prefix is commonly used to refer to motorcycles, which is the primary product sold by Complainant. Therefore, the disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). Furthermore, the addition of the generic top-level domain (“gTLD”) is without relevance to this analysis. See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum, Apr. 30, 2007):
The
additions of generic words with an obvious relationship to Complainant’s
business and a gTLD renders the disputed domain name confusingly similar to
Complainant’s mark pursuant to Policy ¶ 4(a)(i).
See also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum, June 2, 2006) (finding that the addition of the generic term “finance,” which described a complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish a respondent’s disputed domain name from that complainant’s mark under Policy ¶ 4(a)(i)).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant must first make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The burden then shifts to Respondent to show that it nonetheless does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum, Aug. 18, 2006). See also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respondent does
not have rights or legitimate interest in the subject domain names, which
burden is light. If Complainant
satisfies its burden, then the burden shifts to Respondent to show that it does
have rights or legitimate interests in the subject domain names.
Complainant has made a showing sufficient to meet its initial
evidentiary burden, and Respondent has failed to respond. We may therefore presume that
Respondent has no rights or legitimate interests in the disputed domain name. See BIC Deutschland GmbH & Co. KG v.
By
not submitting a response, Respondent has failed to invoke any circumstance
which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or
legitimate interests in the domain name.
See also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that a respondent has no rights or legitimate interests in a domain name where that respondent never submitted a response or provided a panel with evidence to suggest otherwise).
There is no need
for further consideration of this branch of the Policy. We note, however, that Complainant
asserts, and Respondent does not deny, that Respondent is using the <motoharley.com> domain name to advertise motorcycle rental services
that compete with Complainant’s business.
In Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat.
Arb. Forum Dec. 1, 2003), a
respondent used a disputed domain name to divert Internet users to a competing
commercial site. The panel there found
that that respondent was taking advantage of a complainant’s mark, and was not
using the disputed domain name within the parameters of Policy ¶¶ 4(c)(i) or (iii). Similarly, in Coryn Group, Inc. v. Media Insight, FA 198959
(Nat. Arb. Forum Dec. 5, 2003), a respondent used a disputed domain
names to divert Internet users to a website offering services that competed
with those offered by a complainant under its marks. The panel there concluded that that
respondent was not using the disputed domain names for a bona fide
offering of goods or services, or a legitimate noncommercial or fair use. Because Respondent here appears to be using
the <motoharley.com> domain name in the same
manner as did the respondents in Glaxo
and Coryn, we would be inclined to conclude
that Respondent’s use does not constitue either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
We also observe that Complainant alleges that Respondent is not commonly known by the <motoharley.com> domain name. Complainant also contends that Respondent does not have any rights to use its HARLEY mark. Respondent does not contest these allegations. Moreover, the pertinent WHOIS information identifies Respondent as “Henrik Hessbo d/b/a Fue Et Viva,” which supports Complainant’s contentions. We are therefore free to, and do, conclude that Respondent is not commonly known by the <motoharley.com> domain name within the meaning of Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that a respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip’t as the registrant of a disputed domain name, and there was no other evidence in the record to suggest that that respondent was commonly known by the domain names in dispute); see also the panel decision in M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Under this heading, Complainant
alleges that Respondent uses the <motoharley.com> domain name intentionally
to attract Internet users to its website, for commercial gain, by creating a
likelihood of confusion as to Complainant’s possible association with that web
site. Respondent does not deny this
assertion. Therefore, we conclude that Respondent registered and is using the <motoharley.com> domain name in
bad faith pursuant to Policy ¶ 4(b)(iv).
See Asbury Auto. Group, Inc. v.
In addition, it appears that Respondent registered the <motoharley.com> domain name with at least constructive knowledge of
Complainant’s rights in the HARLEY trademark by virtue of Complainant’s prior
registration of that mark with the European Community trademark authority. Registration of a confusingly similar domain
name despite such constructive knowledge is, without more, evidence of bad
faith registration and use of the domain name pursuant to Policy ¶ 4(a)(iii).
See Digi Int’l v. DDI Sys., FA 124506
(Nat. Arb. Forum Oct. 24, 2002); see
also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct.
4, 2002).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Complainant having established all three elements required to be proven
under the ICANN Policy, the Panel concludes that the relief
requested must be GRANTED.
Accordingly, it is Ordered that the <motoharley.com> domain name be forthwith
TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 13, 2007
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