Harley-Davidson of Glendale, Inc. v. Greg
Claim Number: FA0209000125225
Complainant is Harley-Davidson of Glendale, Inc., Glendale, CA (“Complainant”) represented by Jill M. Pietrini, of Manatt, Phelps, Phillips, LLP. Respondent is Greg Jach CF, Simi Valley, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <loveride.com>, registered with Register.com.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 13, 2002; the Forum received a hard copy of the Complaint on September 16, 2002.
On September 16, 2002, Register.com confirmed by e-mail to the Forum that the domain name <loveride.com> is registered with Register.com and that Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com 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 September 18, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 8, 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 email@example.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 October 25, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant’s Submission makes the following assertions:
1. Respondent’s <loveride.com> domain name is identical to Complainant’s registered LOVE RIDE mark.
2. Respondent does not have any rights or legitimate interests in the <loveride.com> domain name.
3. Respondent registered and used the <loveride.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Harley-Davidson of Glendale, Inc., is the holder of the trade and service mark LOVE RIDE (U.S. Reg. No. 2,254,994, registered on June 22, 1999 and U.S. Reg. No. 2,095,319, registered on September 9, 1997), and has also registered the mark in the State of California. Since 1984, the annual Love Ride (held by Complainant) has become the largest one-day motorcycle event in the world, generating over $1,000,000 in charitable contributions for the Muscular Dystrophy Association each year. Complainant, as one of the highest producing Harley-Davidson motorcycle dealerships in the United States, registered its mark for use in this charitable fund raising service. Significant and unsolicited publicity for the event has generated hundreds of websites dedicated to the Love Ride, and Complainant itself operates a website dedicated to the event at <loveride.org>.
On November 20, 1999, Greg Barnes registered the <loveride.com> domain name, placing the domain name registration for sale to the highest bidder with <domains.com>. After being contacted by Complainant about his trademark infringement, Barnes refused to transfer the disputed domain name to Complainant and claimed that he had a financial backer for a website that had nothing to do with motorcycles. To date, no such website has surfaced.
During Complainant’s attempts to resolve the dispute with Barnes, Barnes transferred the domain name to Respondent. Respondent, Greg Jach, claims to be related to Barnes. Respondent shares the same email address as Barnes, lives in the same city, and shares the same first name, while Respondent’s listed address is a post office box. Complainant has given uncontested evidence indicating that Barnes and Respondent are either the same person or acting in concert with one another. For the purposes of this dispute, the Panel has decided to treat both Barnes and Respondent as the same identity.
Prior to this dispute, Respondent’s domain name redirected Internet users to <imagemotorcycle.com>, registered by a motorcycle products company located in California. Image Motorcycle claims no affiliation with either Respondent or Barnes, and was not aware of the link between the <loveride.com> domain name and its own website. As of this dispute, Respondent’s domain name no longer links to <imagemotorcycle.com>, but instead links to a commercial listing for the <register4less.com> web service provider, and the registration is now for sale on Register.com. Respondent is not licensed or otherwise authorized to make any use of Complainant’s registered LOVE RIDE mark for any purpose.
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 its LOVE RIDE mark through registration on the Principal Register of the United States Patent and Trademark Office (“USPTO”), as well as via continuous and widespread use of the mark. Although Complainant’s mark consists of generic words, this does not prevent the Panel from holding that Complainant has sufficient rights to bring a Complaint. See Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not require Complainant to demonstrate ‘exclusive rights,’ but only that Complainant has a bona fide basis for making the Complaint in the first place). In this dispute, Complainant has demonstrated a “bona fide” basis for making this Complaint by demonstrating its widespread, active, and registered use of its mark.
Respondent’s <loveride.com> domain name is identical to Complainant’s LOVE RIDE mark. The only differences between the domain name and Complainant’s mark is the removal of the space from LOVE RIDE and the addition of “.com” after the mark. The deletion of a space and the addition of a “.com” from a registered mark does not prevent a domain name from being found identical to a mark. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”)
The fact that the disputed domain name is a combination of the two descriptive words “love” and “ride” also fails to prevent this finding by the Panel, in light of Complainant’s rights in its registered mark. See Nintendo Of Am. Inc. v. This Domain Is For Sale, D2000-1197 (WIPO Nov. 1, 2000) (finding <game-boy.com> identical and confusingly similar Complainant’s GAME BOY mark, even though the domain name is a combination of two descriptive words divided by a hyphen).
Accordingly, the Panel finds that the <loveride.com> domain name is identical to Complainant’s registered LOVE RIDE mark under Policy ¶ 4(a)(i).
Rights or Legitimate Interests
The burden of proving a lack of rights or legitimate interests in a domain name rests upon Complainant. Under Policy ¶¶ 4(c)(i-iii), Respondent can rely on an offering of bona fide goods or services connected with the disputed domain name, the fact that it has been commonly known by the domain name, or that it is making a legitimate noncommercial or fair use of the domain name to demonstrate a right or legitimate interest in a domain name. Once a complainant has presented a prima facie case showing a respondent’s lack of rights or legitimate interests in its domain name, the burden of proof shifts to the respondent. See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).
It is neither a bona fide offering of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii), when the holder of a domain name that is confusingly similar to an established mark is attempting to sell the domain. See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name registration suggests it has no legitimate use). Likewise, registering a domain name and then linking it to an unaffiliated site is not a legitimate or fair use. See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name). Furthermore, without supporting evidence, a mere claim by a respondent that it is preparing to launch a business associated with the disputed domain name is not an example of an offering of bona fide goods or services. See AT&T Corp. v. Domains by Brian Evans, D2000-0790 (WIPO Sept. 27, 2000) (finding no rights or legitimate interests where Respondent did not provide any documentation on the existence of its alleged company that might show what the company’s business was, or how it might mesh with Complainant’s trademark claims).
Respondent had used its <loveride.com> domain name to direct Internet users to the website of one of Complainant’s suppliers. That supplier claims no association with Respondent. Lacking this association, Complainant has demonstrated that the disputed domain name is not connected with any offering of bona fide goods or services associated with the <loveride.com> domain name. Respondent’s ongoing offering of the domain name for sale also indicates no legitimate right or interest in the domain name.
Respondent is not commonly known by the domain name. In linking the disputed domain name directly to an unassociated website, it can be inferred that Respondent had never been commonly known by this name. See Great S. Wood Pres., Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that Respondent was not commonly known by the domain name <greatsouthernwood.com> where Respondent simply linked the domain name to <bestoftheweb.com>). Additionally, due to Complainant’s widespread and continuous use of the registered LOVE RIDE mark in California, and the popularity of the Love Ride in general, it is difficult to see how Respondent could start a company under that mark, or claim to be commonly known by it. See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark).
Accordingly, the Panel finds that Respondent does not have any rights or legitimate interests in its domain name under Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Policy ¶ 4(b)(i) illustrates an example of bad faith use and registration when dealing with a popular mark. Bad faith use and registration is shown when a domain name that is identical or confusingly similar to another’s trademark is registered with the primary purpose of, “selling, renting, or otherwise transferring the domain name registration…for valuable consideration in excess of [Respondent’s] out-of pocket expenses.” Offering a domain name registration that is identical to a registered mark for sale to the highest bidder is an example of this behavior. See Gen. Elec. Co. v. Forddirect.com, Inc., D2000-0394 (WIPO June 22, 2000) (finding that Respondent registered and used the domain name in bad faith by using the domain name to direct users to a general site offering the domain name for sale); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”); see also Wrenchead.com, Inc. v. Hammersla, D2000-1222 (WIPO Dec. 12, 2000) (finding that offering the domain name for sale at an auction site is evidence of bad faith registration and use). Respondent is offering the disputed domain name for sale to the “highest bidder”, and has done nothing original to develop the website since its registration. This qualifies as bad faith use and registration under the Policy. See Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that a general offer of sale combined with no legitimate use of the domain name constitutes registration and use in bad faith).
Furthermore, Barnes’ transfer of the domain name to Respondent once Complainant notified him that he was infringing on its trademark evidences bad faith use and registration. As the Panel views both Barnes and Respondent as the same identity, this shuffling of the holder of the domain name implies bad faith. See Banco Mercantil del Norte, S.A., v. Servicios de Comunicación En Linea, D2000-1215 (WIPO Nov. 23, 2000) (transferring the domain name where the constant change of parties having ownership of the domain name evidenced bad faith registration and use).
Complainant has shown that Respondent has no intention of developing a website associated with the disputed domain name, and Respondent’s only use has consisted of offering the domain name registration for sale. Respondent has not rebutted these showings, demonstrating that Respondent acquired and used the disputed domain name in bad faith. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence). Furthermore, the Panel can infer that Respondent and Barnes are in fact the same person, and the transfer of the domain name to Respondent is evidence of bad faith use and registration. 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).
Accordingly, the Panel finds that Respondent both registered and used its domain name in bad faith, and Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <loveride.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 30, 2002
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page