NATIONAL ARBITRATION FORUM
Complainant is H-D Michigan LLC ("Complainant"),
represented by David M Kelly, of Finnegan,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <h-d-roadhouse.com>, registered with 1 &1 Internet Ag.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 19, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 22, 2009.
On June 23, 2009, 1 &1 Internet Ag confirmed by e-mail to the National Arbitration Forum that the <h-d-roadhouse.com> domain name is registered with 1 &1 Internet Ag and that the Respondent is the current registrant of the name. 1 8L1 Internet Ag has verified that Respondent is bound by the 1 &1 Internet Ag 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 June 23, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 13, 2009 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.
A Response was received only in electronic copy on July 13, 2009 prior to the Response deadline. The National Arbitration Forum therefore does not consider the Response to be in compliance with ICANN Rule 5.
An Additional Submission by Complainant in compliance with Supplement rule 7 was timely received by the National Arbitration Forum.
On July 17, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhom as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant alleges as follows:
(1) Complainant owns a trademark registration for H-D. Complainant also argues that it owns common law rights to the mark H-D ROADHOUSE. Complainant argues that Respondent's domain <h-d-roadhouse.com> is confusingly similar to its mark.
(2) Respondent has no rights or legitimate interests with respect to this domain name.
(3) The domain name was registered and is being used in bad faith.
Respondent argues that the word "roadhouse" is defined as a restaurant on a country road and has nothing to do with Complainant. Respondent also argues that the domain <h-d-roadhouse.com> relates to its name "Hagerty's-Drivin-Roadhouse".
C. Additional Submissions
Complainant alleges that Respondent invented the name "Hagerty's-Drivin-Roadhouse" for the first time in its response and that Respondent's web site had made no use of that alleged trade name at the time when Complainant filed its UDRP complaint.
D. Order For Additional Submissions
This Panel sent to the Parties an order for additional submissions under Rule 12 of ICANN's Uniform Dispute Resolution Policy regarding the following issues:
(1) Complainant's contention that "The public has long regarded the HARLEY- DAVIDSON mark and the H-D Mark as being synonymous and interchangeable";
(2) Whether H-D is a famous mark. (In this regard, the parties were asked to direct their responses to the H-D Mark alone, and not the H-D mark considered collectively with the HARLEY-DAVIDSON mark); and
(3) Whether Hagerty's-Drivin-Roadhouse is Respondent's "company name"
In response, Complainant has submitted substantial evidence in support of its allegation that the H-D mark is regarded as interchangeable with the well-known HARLEY- DAVIDSON mark and has also submitted evidence of the fame of the H-D marks.
Respondent argues that the mark H-D is more likely to be construed to mean "high definition", rather than as "Harley-Davidson". Respondent did not submit evidence to support its bare allegation that Hagerty's-Drivin-Roadhouse, or Hagerty's-DrivingRoadhouse, is Respondent's "company name".
FINDINGS AND 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:
(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.
Respondent's Response was submitted in electronic format only by the response deadline. No hard copy was received. Thus, the response is not technically in compliance with ICANN Rule 5. This Panel, however, has discretion to accept and consider the response notwithstanding the failure of Respondent to file a hard copy.
This Panel, in this case, does exercise its discretion to consider this Response despite Respondent's failure to file a hard copy. See, similarly, J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003)("The Panel is of the view that given the technical notice of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight.").
Identical and/or Confusingly Similar
Complainant has demonstrated rights to the mark "H-D" based upon its ownership of many trademark registrations worldwide for the mark. Respondent has argued that H-D is more likely to be construed to mean "high definition" than as a source identifier for Harley-Davidson products. However, Complainant has presented evidence concerning the fame of the H-D mark. Even more significantly, Complainant has presented substantial documentary evidence to support its allegation that "the public has long regarded the HARLEY-DAVIDSON mark and the H-D mark as being synonymous and interchangeable." Based upon the evidence received, this Panel accepts Complainant's allegation that the mark H-D is well known.
Respondent's domain registration is for <h-d-roadhouse.com> and therefore consists of Complainant's mark with the addition of the word "Roadhouse". This Panel finds the <h-d-roadhouse.com> domain name to be confusingly similar to Complainant's well- known H-D mark. As was found in H-D Michigan, Inc. v. Chad Morris, FA 137094 (Nat. Arb. Forum Jan. 29, 2003)("[a]dding a generic term to a famous mark does not create any distinct features capable of overcoming a claim of confusing similarity pursuant to Policy ¶ 4(a)(i).").
Thus, this Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent argues that its selection of the domain name <h-d-roadhouse.com> reflects the fact that his business is called "Hagerty's Drivin Roadhouse". However, Respondent has not presented evidence in support of this contention, even after being provided a second opportunity to do so by Interlocutory Order.
Respondent's use of a disclaimer is insufficient as a defense under the Policy. See DaimlerChrysler Corp. v. Bagman, D2000-0222 (WIPO June 2, 2000)(finding that the use by the domain name holder of a disclaimer, where the domain name confirmed complainant's well-known trademark, did not counteract the expectation of web users that the domain name was sponsored by the complainant").
This Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Complainant argues that Respondent had both actual and constructive knowledge of its long-standing rights in its H-D mark. Respondent's website offers Harley-Davidson products for sale. In light of Complainant's evidence that consumers use the well-known marks HARLEY-DAVIDSON and H-D interchangeably, this Panel finds Respondent's web site as demonstrating Respondent's actual knowledge of Complainant's marks and products associated therewith. See similarly, H-D Michigan, Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan 2, 2008); cf. 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.").
Respondent's use of a disclaimer does not mitigate a finding of bad faith registration and use. See Continental Airlines, Inc. v. Vartanian, FA 1106528 (Nat. Arb. Forum Dec. 26,
This Panel finds that Policy 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <h-d-roadhouse.com> domain name be TRANSFERRED from Respondent to Complainant.
A. Einhorn, Panelist
Dated: August 24, 2009
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