H-D Michigan, Inc. v. TT&R Inc. a/k/a
L. Turner a/k/a Len Turner a/k/a Leonard John Turner
Claim Number: FA0209000126650
PARTIES
Complainant
is H-D Michigan, Inc., Ann Arbor, MI
(“Complainant”) represented by Michael
A. Lisi, of Rader Fishman &
Grauer PLLC. Respondent is T.T. & R. Inc., Danville, AZ
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <harley-davidson.net>, <harley-davidson.org>, <harleydavidsonsrus.com>, and <harleydavidsons-r-us.com>, registered with Register.com & NetworkSolutions d/b/a VeriSign, 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
Franklin as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on September 30, 2002; the Forum received a hard copy of the
Complaint on September 26, 2002.
On
September 30, 2002 & Oct 01, 2002, Register.com & NetworkSolutions
d/b/a VeriSign, Inc. confirmed by e-mail to the Forum that the domain names <harley-davidson.net>, <harley-davidson.org>, <harleydavidsonsrus.com>, and <harleydavidsons-r-us.com> are registered with Register.com &
NetworkSolutions d/b/a VeriSign, Inc. and that Respondent is the current
registrant of the names. Register.com
& NetworkSolutions d/b/a VeriSign, Inc. have verified that Respondent is
bound by the Register.com & NetworkSolutions d/b/a VeriSign, Inc. registration
agreements 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 4, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of October 24,
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@harley-davidson.net, postmaster@harley-davidson.org,
postmaster@harleydavidsonsrus.com, and postmaster@harleydavidsons-r-us.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
November 15, 2002, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed Sandra Franklin 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 names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following
assertions:
Respondent’s
<harley-davidson.net>, <harley-davidson.org>, <harleydavidsonsrus.com>, and <harleydavidsons-r-us.com> domain names are either identical or confusingly similar to Complainant’s
registered HARLEY-DAVIDSON mark.
Respondent does not have any rights or legitimate
interests in the <harley-davidson.net>, <harley-davidson.org>, <harleydavidsonsrus.com>, and <harleydavidsons-r-us.com> domain
names.
Respondent registered and used the <harley-davidson.net>, <harley-davidson.org>, <harleydavidsonsrus.com>, and <harleydavidsons-r-us.com>
domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant,
H-D Michigan, Inc., holds rights in the HARLEY-DAVIDSON registered mark (e.g.
U.S. Reg. No. 522,500). Complainant registered the mark on March 21, 1950
on the Principal Register of the United States Patent and Trademark Office
(“USPTO”) and has used it in commerce since 1923. Complainant holds many
additional registrations for variations of its HARLEY-DAVIDSON mark.
Complainant uses its registered
HARLEY-DAVIDSON mark to distinguish its motorcycles, motorcycle part and
accessories, clothing catalogs, and collectibles, as well as to distribute its
wide variety of advertising and promotional materials. Complainant has
registered its HARLEY-DAVIDSON trademark over 590 times in over 75 countries
worldwide, and holds an additional 365 trademark registrations for logos
incorporating variations of its
HARLEY-DAVIDSON mark. Complainant registered its <harley-davidson.com>
domain name on November 8, 1994, and has used it since June of 1996 as a
worldwide information and distribution channel for it business, receiving over
23 million page views in August of 2002. Complainant holds over 600 other
domain name registrations, 83 of which incorporate its HARLEY-DAVIDSON
registered mark.
Respondent, TT&R Inc. a/k/a L. Turner
a/k/a Len Turner a/k/a Leonard John Turner, registered the <harley-davidson.net>,
<harley-davidson.org>, and <harleydavidsonsrus.com> domain names with Register.com on May 26, 2002, July 7,
2001, and May 12, 2001, respectively. On February 24, 2000, Respondent
registered <harleydavidsons-r-us.com>
with NetworkSolutions d/b/a VeriSign, Inc. Respondent is not
licensed or otherwise authorized to make use of the HARLEY-DAVIDSON mark for
any purpose.
Respondent’s website at <harley-davidson.net>
states “FOR SALE: Harley-Davidson.net & Harley-Davidson.org.”
Respondent’s <harley-davidson.org> domain name states
“Harley-Davidson.org For Sale,” also suggesting to Internet users that they
could, “Use this to forward to your website or ?” Both sites ask Internet users
to e-mail any offers to Respondent and note that the sites are not affiliated
with Complainant, specifically stating that “Harley-Davidson is a registered
trademark of the Harley-Davidson Motor Company.”
Respondent’s website at <harleydavidsonsrus.com>
redirects Internet users to another of its domain names,
<motorcycles-r-us.com>, where Respondent sells motorcycles. Respondent
currently makes no use of its <harleydavidsons-r-us.com> domain
name.
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
HARLEY-DAVIDSON family of marks through registration on the Principal Register
of the USPTO, as well as via continuous and widespread use of the mark
worldwide.
Respondent’s <harley-davidson.net> and
<harley-davidson.org>
domain names are identical to Complainant’s registered HARLEY-DAVIDSON mark.
The only difference between these domain names and the registered mark of
Complainant is the addition of the top-level domain “.net” or “.org” after the
mark. As top-level domains are a standard feature for any domain name, its
addition does not prevent a finding of identicality between a domain name and a
registered mark. See Rollerblade,
Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the
top-level of the domain name such as “.net” or “.com” does not affect the
domain name for the purpose of determining whether it is identical or
confusingly similar); see also
Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr. 27,
2000) (holding that the domain name <robohelp.com> is identical to
Complainant’s registered ROBOHELP trademark, and that the "addition of
.com is not a distinguishing difference").
Respondent’s <harleydavidsonsrus.com> and <harleydavidsons-r-us.com>
domain names are confusingly similar to Complainant’s registered
HARLEY-DAVIDSON mark. Besides the inconsequential addition of a “.com” and the
pluralization of Complainant’s
registered mark, Respondent has only added a variation of the phrase “are us”
(either “rus” or “r-us”) after the mark. The addition of this generic phrase to
Complainant’s registered HARLEY-DAVIDSON mark fails to sufficiently
differentiate the disputed domain names from Complainant’s mark. The dominant
feature of the disputed domain names remains Complainant’s distinctive
HARLEY-DAVIDSON mark. The generic phrase “r-us,” with or without the hyphen,
does nothing to detract from this distinction. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000)
(finding that “[n]either the addition of an ordinary descriptive word…nor the
suffix ‘.com’ detract from the overall impression of the dominant part of the
name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is
satisfied); see also Quixtar Inv.,
Inc. v. Smithberger and QUIXTAR-IBO, D2000-0138 (WIPO Apr. 19, 2000) (finding
that because the domain name <quixtar-sign-up.com> incorporates in its
entirety Complainant’s distinctive mark, QUIXTAR, the domain name is
confusingly similar); 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 the <harley-davidson.net> and <harley-davidson.org>
domain names are identical to Complainant’s registered HARLEY-DAVIDSON
mark. The Panel also finds that the <harleydavidsonsrus.com> and <harleydavidsons-r-us.com> domain names are confusingly similar to Complainant’s registered
HARLEY-DAVIDSON mark, and Policy ¶ 4(a)(i) is satisfied with respect to all
domain names.
Rights or Legitimate Interests
The burden of proving a lack of rights or
legitimate interests in a domain name rests initially upon a complainant. Under
Policy ¶¶ 4(c)(i-iii), a respondent can rely on a “bona fide offering of 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. If a complainant rebuts each of these elements, it
has satisfied its burden by successfully addressing any of the specified claims
a respondent could make under Policy ¶¶ 4(c)(i-iii), thereby shifting the
burden to the respondent. See G.D. Searle v. Martin Mktg., FA 118277
(Nat. Arb. Forum Oct. 1, 2002) (holding where a Complainant has asserted that
Respondent has no rights or legitimate interests in respect of the domain name
it is incumbent on Respondent to come forward with concrete evidence rebutting
this assertion because this information is “uniquely within the knowledge and
control of the respondent”).
Furthermore,
Respondent’s lack of a Response to the Complaint is in and of itself evidence
of a lack of legitimate rights and interests in its domain name. See
Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000)
(finding that under certain circumstances the mere assertion by Complainant
that Respondent has no right or legitimate interest is sufficient to shift the
burden of proof to Respondent to demonstrate that such a right or legitimate
interest does exist); see also Pavillion
Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000)
(finding that Respondents’ failure to respond can be construed as an admission
that they have no legitimate interest in the domain names).
It is neither a bona fide offering of
goods or services, nor legitimate noncommercial or fair use under Policy ¶¶
4(c)(i) and (iii) when the holder of a domain name that is identical to an
established mark registers the domain name in order to sell the registration to
the holder of the mark. See Kinko’s
Inc. v. eToll, Inc., FA 94447 (Nat. Arb. Forum May 27, 2000) (finding that
Respondent has no rights or legitimate interests in the domain name where it
appeared that the domain name was registered for ultimate use by Complainant); see
also Cruzeiro Licenciamentos Ltda v.
Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that rights or legitimate
interests do not exist when one holds a domain name primarily for the purpose
of marketing it to the owner of a corresponding trademark). Respondent has done
nothing to develop the <harley-davidson.net>
and <harley-davidson.org> domain
names other than to note on its websites that these domain name registrations
are “For Sale.” Furthermore, both websites acknowledge that Complainant
holds rights in the mark that is reflected in the disputed domain names, and
one of the websites suggests that a purchaser could ideally “use this [domain
name] to forward to your website.” The Panel infers from the facts that
Respondent’s intent in registering the disputed domain names was to sell these
registrations to Complainant, an appropriate inference in light of Respondent’s
failure to make a submission in this proceeding. See Ziegenfelder Co. v. VMH Enter., Inc.,
D2000-0039 (WIPO Mar. 14, 2000) (drawing two inferences based on Respondent’s
failure to respond: (1) that Respondent does not deny the facts asserted by
Complainant, and (2) Respondent does not deny conclusions which Complainant
asserts can be drawn from the facts). Therefore, Respondent’s holding of the <harley-davidson.net> and <harley-davidson.org> domain names are not a bona fide
offering of goods or services nor use of the domain name for noncommercial or
fair use.
Likewise, neither Respondent’s <harleydavidsonsrus.com> nor <harleydavidsons-r-us.com> domain names represent a bona fide offering of goods or services
or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). The <harleydavidsonsrus.com> domain name redirects Internet users to Respondent’s own
<motorcycles-r-us> domain name, where Respondent sells the same product
as Complainant, namely motorcycles. Diverting Internet users to Respondent’s
own website by using Complainant’s mark violates Policy ¶¶ 4(c)(i) and (iii). See
Chip Merch., Inc. v. Blue Star
Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain
names were confusingly similar to Complainant’s mark and that Respondent’s use
of the domain names to sell competing goods was illegitimate and not a bona
fide offering of goods); see also Am.
Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that “[I]t
would be unconscionable to find a bona fide offering of services in a
respondent’s operation of web-site using a domain name which is confusingly
similar to Complainant’s mark and for the same business”).
On the other hand, Respondent’s <harleydavidsons-r-us.com> domain name has sat idle for over two years.
The Panel need not adopt a “wait and see” attitude in this matter, as
Respondent’s passive holding of its <harleydavidsons-r-us.com>
domain name is enough to support a
finding of a lack of rights or legitimate interests under the Policy. See Am. Home Prod. Corp. v. Malgioglio,
D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in
the domain name <solgarvitamins.com> where Respondent merely passively
held the domain name); see also Nike,
Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001) (finding no rights
or legitimate interests where Respondent made no use of the infringing domain
names); see also Flor-Jon Films,
Inc. v. Larson, FA 94974 (Nat. Arb. Forum July 25, 2000) (finding that
Respondent’s failure to develop the site demonstrates a lack of legitimate
interest in the domain name).
Complainant has not given Respondent
permission or consent to use its HARLEY-DAVIDSON mark, and has shown that
Respondent is not “commonly known by” the name HARLEYDAVIDSONSRUS,
HARLEYDAVIDSONS-R-US, <harley-davidson.net>, <harley-davidson.org>, <harleydavidsonsrus.com> or <harleydavidsons-r-us.com>. Furthermore, as Complainant’s mark is highly distinctive, it is
doubtful that anyone other than Complainant could claim to be “commonly known
by” the name. 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); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding
that Respondent is not commonly known by the mark contained in the domain name
where Complainant has not permitted Respondent to use the NOKIA mark and no
other facts or elements can justify prior rights or a legitimate connection to
the name). In light of Respondent’s failure to offer any evidence that it has
ever been commonly known by the disputed domain names, the Panel concludes that
Respondent has no rights or legitimate interests in the disputed domain names
under Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949
(Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require
a showing that one has been commonly known by the domain name prior to
registration of the domain name to prevail").
Once a complainant has successfully
presented its prima facie case illustrating a respondent’s lack of
rights or legitimate interests in its domain name, the burden of demonstrating
rights and legitimate interests in the domain name shifts to the respondent.
As Respondent submitted nothing to the
Panel in response to this Complaint, Respondent fails to meet that burden, and
the Panel may conclude that Respondent has no rights or legitimate interests in
the disputed domain names. See BIC
Deutschland GmbH & Co. KG v. Tweed,
D2000-0418 (WIPO June 20, 2000) (“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 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).
Accordingly, the Panel finds that
Respondent does not have any rights or legitimate interests in the domain names
under Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Respondent registered and used the <harley-davidson.net> and <harley-davidson.org> domain names in bad faith, in violation
of Policy ¶ 4(b)(i). In “circumstances indicating that [Respondent has]
registered…the domain name primarily for the purpose of selling…the domain name
registration to…the owner of the trademark…or to the competitor of that [owner
of the trademark]” it is evidence of bad faith use and registration under the
Policy. This has been interpreted to include generic sale offers placed on
Respondent’s website. See 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”); Am. Online, Inc. v. Avrasya Yayincilik
Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad
faith where Respondent offered domain names for sale). In the present dispute,
Respondent has not only offered two of its identical and infringing domain name
registrations for sale, but has done so in circumstances inferring that the
ultimate purchaser is intended to be Complainant. Respondent’s online
acknowledgment of Complainant’s rights in the HARLEY-DAVIDSON mark, as well as
its suggestion that the disputed domain names could be used to forward to another
website, allows the inference that sale of the domain name registrations to
Complainant was what Respondent had in mind when it registered <harley-davidson.net> and <harley-davidson.org>.
Respondent submitted no Response to the Complaint, leading the Panel to
conclude that this was Respondent’s motive, and that <harley-davidson.net> and <harley-davidson.org>
were both registered and used in bad faith. 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); see also 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).
Respondent registered and used the <harleydavidsonsrus.com> domain
name in bad faith, violating Policy ¶ 4(b)(iv). By using its domain name,
Respondent “intentionally attempted to attract, for commercial gain, Internet
users to [its] website…by creating a likelihood of confusion with the
complainant’s mark as to the source, sponsorship, affiliation, or endorsement,”
evidencing bad faith under the Policy. In redirecting its <harleydavidsonsrus.com> domain name to its motorcyle sales website at
<motorcycles-r-us.com>, Respondent used Complainant’s mark to attract
motorcycle buyers to its own website and created a strong likelihood of
confusion as to whether Respondent had any affiliation with Complainant. These
actions violate Policy ¶ 4(b)(iv). See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum
Aug. 21, 2000) (finding bad faith where Respondent directed Internet users
seeking Complainant’s site to its own website for commercial gain); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum
Mar. 21, 2000) (finding bad faith where Respondent registered and used an
infringing domain name to attract users to a website sponsored by Respondent).
Respondent
registered and used its <harleydavidsons-r-us.com> domain name in
bad faith. Respondent’s bad faith is evidenced in its passive holding of the
domain name for over two years. See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30,
2000) (finding that Respondent made no use of the domain name or website that
connects with the domain name, and that passive holding of a domain name
permits an inference of registration and use in bad faith); see also Mondich & Am. Vintage Wine Biscuits,
Inc. v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that Respondent’s
failure to develop its website in a two year period raises the inference of
registration in bad faith). While passive holding does not directly violate any
provision of the Policy, Policy ¶¶ 4(b)(i-iv) represents a non-exhaustive list
of circumstances evidencing bad faith. See Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010
(WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within
the ‘particular’ circumstances set out in ¶4(b), does not mean that the domain
names at issue were not registered in and are not being used in bad faith”); see
also Cellular One Group v. Brien,
D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of
the Policy is not an exhaustive list of bad faith evidence). Respondent’s lack
of use of its <harleydavidsons-r-us.com>
domain name, in light of its bad
faith use and registration of <harley-davidson.net>, <harley-davidson.org> and <harleydavidsonsrus.com> permits the inference that any use of this domain name in the future runs
the risk of being done in bad faith. In fact, the Panel finds it difficult to
imagine a circumstance where Respondent would be able to use <harleydavidsons-r-us.com> in good faith. Regardless, with no
Response by Respondent contradicting the facts and allegations of Complainant,
the Panel finds that Respondent’s passive holding of the <harleydavidsons-r-us.com> domain name indicates registration and use of the domain name in bad
faith. See 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 <harley-davidson.net>, <harley-davidson.org>, <harleydavidsonsrus.com>, and <harleydavidsons-r-us.com> domain names 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 <harley-davidson.net>, <harley-davidson.org>, <harleydavidsonsrus.com>, and <harleydavidsons-r-us.com> domain names be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated: November 20, 2002
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