H-D Michigan, Inc. v. Viper Holdings
Claim Number: FA0210000128680
PARTIES
Complainant
is H-D Michigan, Ann Arbor, MI
(“Complainant”) represented by Robert S.
Gurwin, of Rader Fishman &
Grauer PLLC. Respondent is Domain Manager Viper Holdings, San
Francisco, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <harleybabes.com>,
registered with Intercosmos Media Group d/b/a DirectNIC.
PANEL
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge, she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on October 22, 2002; the Forum received a hard copy of the
Complaint on October 22, 2002.
On
October 23, 2002, Intercosmos Media Group d/b/a DirectNIC confirmed by e-mail
to the Forum that the domain name <harleybabes.com>
is registered with Intercosmos Media Group d/b/a DirectNIC and that Respondent
is the current registrant of the name. Intercosmos
Media Group d/b/a DirectNIC verified that Respondent is bound by the Intercosmos
Media Group d/b/a DirectNIC 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
October 28, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of November 18, 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@harleybabes.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
December 9, 2002, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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 makes the following
allegations in this proceeding:
The
<harleybabes.com>
domain name is confusingly similar to Complainant's HARLEY and HARLEY-DAVIDSON
marks. Respondent has no rights or
legitimate interests in the disputed domain name. Respondent registered and used the disputed domain name in bad
faith.
B.
Respondent failed to submit a Response.
FINDINGS
Complainant is one of the world’s largest
and most famous manufacturers and distributors of motorcycles, motorcycle parts
and accessories. In 1903, William S. Harley and three Davidson brothers founded
the company; and by 1920, Complainant had become the largest motorcycle
manufacturer in the world, with more than 2,000 dealers in 67 countries. The worldwide fame of Complainant’s
motorcycles was encouraged by their widespread use by the military during WWI
and WWII, as well as the use by successful HARLEY-DAVIDSON racing teams. In 1983, the Harley Owners Group (“H.O.G.”)
was created and became the largest factory-sponsored motorcycle club in the
world. By 2002, H.O.G. membership
exceeded 640,000. Complainant was named
“Company of the Year” by Forbes magazine for 2002.
Complainant’s primary trademarks are
HARLEY and HARLEY-DAVIDSON, both of which are registered with the United States
Patent and Trademark Office (“USPTO”) under Registration Numbers 2,285,656 and
1,316,538 respectively. Complainant is
also the owner of some 198 and 598 trademark registrations for HARLEY and
HARLEY-DAVIDSON respectively, in some 75 countries. Complainant also owns another 365 trademark registrations
throughout the world for various logos that incorporate the words HARLEY or
HARLEY-DAVIDSON. Complainant has held
its primary domain name <harley-davidson.com> since November 8,
1994. Complainant holds an additional
600 Internet domain name registrations of which 154 incorporate the marks
HARLEY or HARLEY-DAVIDSON. All of these
domain names are used to promote the goods and services of Complainant.
Respondent registered the disputed domain
name <harleybabes.com> on February 1, 1997. As early as May 2001, Respondent posted
graphic pornographic content at the domain name, or redirected those who
accessed the domain name to other pornographic websites that also generate
numerous pop-up windows featuring pornographic content.
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 Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
will draw such inferences as it considers appropriate pursuant to paragraph 14(b)
of the Rules.
Paragraph
4(a) of the Policy requires that 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.
Complainant established in this
proceeding that it has rights in the HARLEY and HARLEY-DAVIDSON marks through
continuous use since 1903, as well as Complainant’s numerous trademark
registrations in the United States and throughout the world.
The domain name registered by Respondent,
<harleybabes.com>, is confusingly similar to Complainant’s HARLEY
mark because it incorporates Complainant’s entire mark and merely adds the
generic term “babes,” to the end. The
addition of a generic term to a famous mark does not create a distinct mark
capable of overcoming a claim of confusing similarity because Complainant’s
famous mark is still the dominant element. The mere addition of the word
“babes” to the shortened version of Complainant’s famous mark does not create
any distinct source significance because it conjures up the image of women who
like Complainant’s motorcycles and therefore will confuse Internet users as to
the source, sponsorship, and affiliation of the <harleybabes.com> domain
name. See Westfield Corp., Inc. v. Hobbs, D2000-0227 (WIPO May 18, 2000)
(finding the <westfieldshopping.com> domain name confusingly similar
because the WESTFIELD mark was the dominant element); see also Christie’s Inc. v. Tiffany’s Jewelry Auction
Inc., D2001-0075 (WIPO Mar. 6, 2001) (finding that the domain name <christiesauction.com> is confusingly
similar to Complainant's mark since it merely adds the word "auction"
used in its generic sense).
Furthermore, Respondent’s domain name is
confusingly similar to Complainant’s HARLEY-DAVIDSON mark because it merely
drops the name “Davidson,” and adds the word “babes.” Since Complainant and its products are commonly referred to as
“Harley,” the failure to include the name “Davidson” does not make the disputed
domain name any less confusingly similar.
See Coca-Cola Co. v. Busch, 44 F.Supp. 405, 410 (E.D.Pa. 1942) (“abbreviation of the
trade-mark which the public has used and adopted as designating the product of
the [trademark owner] is equally as much to be protected as the trademark
itself”); see also Microsoft
Corp. v. Montrose Corp., D2000-1568
(WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be
confusingly similar even though the mark MICROSOFT is abbreviated).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Respondent failed to come forward with a
Response. Therefore, the Panel presumes
that Respondent has no rights or legitimate interests in the disputed domain
name. See 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).
Furthermore, when Respondent fails to
submit a Response, the Panel is permitted to make all inferences in favor of
Complainant. See Talk City, Inc.
v. Robertson, D2000-0009, (WIPO Feb. 29, 2000)
(“In the absence of a response, it is appropriate to accept as true all
allegations of the Complaint”).
Respondent is using the disputed domain
name to display pornographic material and divert Internet users to other
pornographic websites. This use
tarnishes Complainant’s famous mark and is therefore not considered to be a use
in connection with 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 Nat’l Football League Prop., Inc. v. One
Sex Entm’t Co., D2000-0118 (WIPO Apr. 17, 2000) (finding that Respondent
had no rights or legitimate interests in the domain names
<chargergirls.com> and <chargergirls.net> where Respondent linked
these domain names to its pornographic website); see also Brown & Bigelow, Inc. v. Rodela, FA
96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's
well-known mark to provide a link to a pornographic site is not a legitimate or
fair use).
Based on the international fame of
Complainant’s HARLEY marks it would be very difficult for Respondent to
establish that it is commonly known as HARLEY BABES or <harleybabes.com>. Therefore, because Respondent failed to come
forward with any evidence in this dispute, the Panel may infer that Respondent
is not commonly known by the disputed domain name and that Respondent has no
rights or legitimate interests pursuant to Policy ¶ 4(c)(ii). 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 names “Nokia” and/or “wwwNokia”).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
The four factors discussed in Policy
paragraph 4(b) are meant to be exemplary but not exclusive. Many circumstances give rise to bad faith
that are not specifically enumerated within the Policy. 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 bad faith and are not being used in bad
faith”); see also Educ. Testing
Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that the Policy
“[I]ndicates that its listing of bad faith factors is without limitation”).
Based on the fact that since May 2001
Respondent used the dispute domain name to divert Internet users to
pornographic websites and on the fact that these websites feature pop-up
advertisements for even more explicit websites, the Panel may infer that
Respondent is making a profit from the Internet traffic it diverts to these websites. Therefore, Respondent’s use of a domain name
confusingly similar to Complainant’s distinctive HARLEY mark creates a
likelihood of confusion for Respondent’s commercial gain, which is evidence of
bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See State
Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11,
2000) (finding that Respondent registered the domain name
<statefarmnews.com> in bad faith because Respondent intended to use
Complainant’s marks to attract the public to the website without permission
from Complainant); see also Youtv,
Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad
faith where Respondent attracted users to his website for commercial gain and
linked his website to pornographic websites).
The use of a domain name that is
confusingly similar to Complainant’s famous mark in order to display
pornographic material gives rise to the presumption of bad faith use pursuant
to Policy ¶ 4(a)(iii). See Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO
June 27, 2000) (finding that absent contrary evidence, linking the domain names
in question to graphic, adult-oriented websites is evidence of bad faith); see
also Oxygen Media, LLC v. Primary
Source, D2000-0362 (WIPO June 19, 2000) (finding bad faith where Respondent
threatened to develop the domain name in question into a pornography site).
Moreover, based on the international fame
of Complainant’s HARLEY and HARLEY-DAVIDSON marks, the Panel may infer that
Respondent had actual knowledge of Complainant’s rights in the marks before it
registered the infringing domain name.
Registration of an infringing domain name, despite actual knowledge of
Complainant’s rights, is evidence of bad faith registration pursuant to Policy
¶ 4(a)(iii). See Entrepreneur Media,
Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that
"[w]here an alleged infringer chooses a mark he knows to be similar to
another, one can infer an intent to confuse"); see also Nintendo of Am. Inc v. Pokemon,
D2000-1230 (WIPO Nov. 23, 2000) (finding that Respondent, at the time of
registration, had notice of Complainant’s famous POKÉMON and PIKACHU
trademarks given their extreme popularity).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that the requested relief
shall be hereby granted.
Accordingly, it is Ordered that the
domain name <harleybabes.com>
be transferred from Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: December 17, 2002.
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