H-D Michigan Inc. v.
Kathleen Buell d/b/a Pre-owned Harleys a/k/a N/A:1ksnq1qs
Claim Number: FA0711001106640
PARTIES
Complainant is H-D Michigan Inc. (“Complainant”), represented by David
M. Kelly, of Finnegan Henderson Farabow Garrett &
Dunner L.L.P.,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <harley-davidson-buell.com> and <harley-davidson-buell.info>,
registered with Godaddy.com, Inc.
PANEL
The undersigned certifies that she has acted independently and impartially
and to the best of her knowledge has no known conflict in serving as Panelist
in this proceeding.
Sandra J. Franklin as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on
On
On November 21, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of December 11, 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@harley-davidson-buell.com, and
postmaster@harley-davidson-buell.info
by e-mail.
A timely Response was received on December 12, 2007. The Response was deficient under ICANN Rule 5
as it was not received in hard copy.
Complainant filed a timely Additional Submission on
On
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
states:
1. Respondent’s <harley-davidson-buell.com> and <harley-davidson-buell.info> domain names are confusingly similar to Complainant’s HARLEY-DAVIDSON mark.
2. Respondent does not have any rights or legitimate interests in the <harley-davidson-buell.com> and <harley-davidson-buell.info> domain names.
3. Respondent registered and used the <harley-davidson-buell.com> and <harley-davidson-buell.info> domain names in bad faith.
B.
Respondent
did not submit a compliant response.
C.
Complainant
submitted a timely Additional Submission noting that, in Respondent’s deficient
response, Respondent admitted to using the <harley-davidson-buell.com> and <harley-davidson-buell.info>
domain names for commercial websites with links to competing motorcycle-related
websites. Complainant also discredits
Respondent’s unsupported allegation that a family member is named
Harley-Davidson Buell.
FINDINGS
Complainant is a
DISCUSSION
PRELIMINARY
ISSUES
Multiple
Respondents
Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant asserts that the listed registrants for the <harley-davidson-buell.com> and <harley-davidson-buell.info> domain names are owned by one in the same person. “Katherine Buell” is the listed administrative and technical contact for the <harley-davidson-buell.info> domain name. The <harley-davidson-buell.com> domain name previously had listed in its WHOIS record the same postal mailing address, e-mail address and telephone number as listed currently in the WHOIS record for the <harley-davidson-buell.info> domain name. The <harley-davidson-buell.com> domain name was recently transferred from the Registerfly.com registrar to the GoDaddy.com registrar. Complainant argues that although the current WHOIS information differs between these two disputed domain names, this is the result of the WHOIS record not being updated after the <harley-davidson-buell.com> domain name was transferred to the GoDaddy.com registrar.
The Panel also notes that the
deficient response received in this case addressed only the <harley-davidson-buell.com>
domain name, but was submitted via
the e-mail address listed in Respondent’s WHOIS contact information for the <harley-davidson-buell.info>
domain name. See Dr. Ing. H.c. F. Porsche AG v. Kentech,
Inc., D2005-0890 (WIPO Oct. 24, 2005) (finding one respondent where
different aliases had completely different WHOIS contact info, because the
panel found the WHOIS information to have been “switched into different names”
as a part of “a campaign to hinder the Complainant.”). But
see Boehringer Ingelheim Pharma GmbH
& Co. KG v. Domains by Proxy, Inc., D2006-0465 (WIPO June 14, 2006)
(partial dismiss of complaint against the additional respondent, where the
second respondent was not found to be the same person or entity as the first
respondent, because the WHOIS contact details were different).
The Panel finds that the listed aliases “Kathleen Buell” and
“N/A:1ksnq1qs” are the same person or entity, or entities controlled by
the same person or entity, so that the filing of this Complainant is justified,
proper and in pursuant to Supplemental Rule ¶ 4(f)(ii).
Deficient
Response
The Panel has rejected Respondent’s brief, e-mail-only, unsupported and
uncertified Response because it is not in compliance with ICANN Rule 5. See Six Continents Hotels, Inc. v. Nowak,
D2003-0022 (WIPO Mar. 4, 2003) (holding that the respondent’s failure to submit
a hard copy of the response and its failure to include any evidence to support
a finding in its favor placed the respondent in a de facto default
posture, permitting the panel to draw all appropriate inferences stated in the
complaint); see also Talk City Inc. v. Robertson,
D2000-0009 (WIPO Feb. 29, 2000) (concluding that no weight would be afforded to
the facts alleged in the respondent’s deficient submission, partly because it
“did not contain any certification that the information contained in the e-mail
was, ‘to the best of Respondent’s knowledge complete and accurate’” in
accordance with Rule 5(b)(viii)).
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.”
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 registered its HARLEY-DAVIDSON mark with, among other
authorities, the United States Patent and Trademark Office (“USPTO”) (Reg. No.
1,078,871 issued Dec. 6, 1977). The
Panel finds that Complainant has sufficiently established its rights in the
HARLEY-DAVIDSON mark pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs.,
FA 221171 (Nat. Arb. Forum
Both of the <harley-davidson-buell.com>
and
<harley-davidson-buell.info> domain names contain Complainant’s mark
in its entirety followed by a hyphen, the descriptive term “buell,” and either
the generic top-level domain (“gTLD”) “.com” or “.info.” Complainant acquired a minority interest in
the Buell Motorcycle Company in 1993. The
inclusion of a gTLD is irrelevant to a Policy ¶ 4(a)(i)
analysis and that the inclusion of a hyphen or the descriptive term such as
“buell,” which has an obvious relationship to Complainant’s business, does not
distinguish a disputed domain name.
Consequently, the Panel finds that the <harley-davidson-buell.com> and <harley-davidson-buell.info>
domain names are confusingly similar to Complainant’s mark pursuant to Policy ¶
4(a)(i). See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb.
Forum Sept. 27, 2002) (“[I]t is a well established principle that generic
top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see
also Health Devices Corp. v.
The Panel
concludes that Policy ¶ 4(a)(i) has been satisfied.
Once Complainant makes a prima
facie case that Respondent lacks rights and legitimate interests in the
disputed domain name under Policy ¶ 4(a)(ii), the
burden shifts to Respondent to show it does have rights or legitimate
interests. See Hanna-Barbera Prods., Inc. v.
Entm’t Commentaries,
FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must
first make a prima facie case that the respondent lacks rights and
legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show
that it does have rights or legitimate interests in a domain name); 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.”).
The Panel finds that Complainant has made its prima facie case.
Complainant contends
that Respondent is not and has not been commonly known by the disputed domain
names. Complainant has never granted
Respondent permission to use the HARLEY-DAVIDSON mark in any way and the
inclusion of Respondent’s alleged surname “Buell” does not demonstrate the
Respondent is commonly known by either disputed domain name. The Panel therefore finds that Respondent has
no rights or legitimate interests in the disputed domain names because it is
not commonly known by either of them pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb.
Forum Jan. 23, 2001) (finding that the respondent does not have rights in a
domain name when the respondent is not known by the mark); see also Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests
where (1) the respondent is not a licensee of the complainant; (2) the
complainant’s prior rights in the domain name precede the respondent’s
registration; (3) the respondent is not commonly known by the domain name in
question).
Moreover, Respondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under Complainant’s mark. Consequently, the Panel finds that Respondent is not using the disputed domain names for 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 Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
The Panel
concludes that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s registration and use
of the disputed domain names was and is in bad faith because Respondent is
using the confusing similarity between Complainant’s mark and Respondent’s
disputed domain names to attract Internet users to its websites. The Panel presumes that Respondent is
commercially benefiting from such use through “click-through fees,” for each
Internet user who clicks a hyperlink and is redirected to a competitor of
Complainant. This establishes
Respondent’s bad faith registration and use of the disputed domain names
pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v.
Domain Manager, FA 201976 (Nat. Arb. Forum
Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain
name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain
name provided links to Complainant's competitors and Respondent presumably
commercially benefited from the misleading domain name by receiving
‘click-through-fees.’”); see also 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).
The disputed domain names resolve
to websites that list links to competitors of Complainant, evidence that
Respondent intends to disrupt Complainant’s business, a further indication of
bad faith pursuant to Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum
The Panel also finds that Respondent
registered and is using the disputed domain names with actual knowledge of
Complainant’s rights in the long-standing, well-known HARLEY-DAVIDSON mark. The disputed domain names resolve to websites
that state that a visiting Internet user is probably seeking Complainant’s home
page, and provides a link accordingly.
Respondent’s websites explicitly demonstrate Respondent’s knowledge of
Complainant’s marks and the products and services associated therewith. Such knowledge is additional evidence of
Respondent’s bad faith registration and use of the disputed domain name
pursuant to Policy ¶ 4(a)(iii). See 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); see also Entrepreneur
Media, Inc. v. Smith, 279 F.3d 1135,
1148 (9th Cir. 2002) ("Where an
alleged infringer chooses a mark he knows to be similar to another, one can
infer an intent to confuse."); see also eBay, Inc v. Progressive
Life Awareness Network, D2001-0068 (WIPO Mar. 16, 2001) (finding bad faith
pursuant to Policy ¶ 4(b)(iv) where the respondent capitalized on the fame
associated with the complainant’s EBAY mark and profited from it by diverting
users seeking the complainant to the respondent’s website).
The Panel
concludes that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <harley-davidson-buell.com> and <harley-davidson-buell.info>
domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: January 2, 2008
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