Harley-Davidson of Glendale, Inc. v. Greg
Claim Number: FA0209000125225
PARTIES
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.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
PROCEDURAL HISTORY
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 postmaster@loveride.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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
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.
FINDINGS
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.
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 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.
DECISION
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
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