H-D Michigan, Inc. v. Viper Holdings
Claim Number: FA0210000128680
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.
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.
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 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 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
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.
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.
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.
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.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page