H-D
Claim Number: FA1004001318741
Complainant is H-D Michigan, LLC (“Complainant”), represented by David
M. Kelly, of Finnegan, Henderson, Farabow, Garrett &
Dunner, L.L.P., Washington DC, USA.
Respondent is Jim Harley (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <harleysridertraining.com> and <harleysridertraining.net>, registered with Tucows, Inc.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 13, 2010.
On April 13, 2010, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <harleysridertraining.com> and <harleysridertraining.net> domain names are registered with Tucows, Inc. and that Respondent is the current registrant of the names. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. 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 April 13, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 3, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@harleysridertraining.com and postmaster@harleysridertraining.net. Also on April 13, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
Respondent did submit an untimely response which was considered by the Panel.
On May 11, 2010 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <harleysridertraining.com> and <harleysridertraining.net> domain names are confusingly similar to Complainant’s HARLEY mark.
2. Respondent does not have any rights or legitimate interests in the <harleysridertraining.com> and <harleysridertraining.net> domain names.
3. Respondent registered and used the <harleysridertraining.com> and <harleysridertraining.net> domain names in bad faith.
B. Respondent makes the following assertions:
1. Respondent has a business based upon his reputation in which he uses his last name, Harley.
2. There was an agreement with Complainant and Respondent’s company to change that company’s name to J Harley’s Rider Training Ltd. That agreement dealt only with the company name and not with Respondent’s individual use of the name Harley.
3. Respondent has not registered and used the domain name in bad faith.
Complainant, H-D Michigan,
LLC, owns and licenses, directly and indirectly, intellectual property to
various Harley-Davidson companies, including Harley-Davidson Motor Company
Group, LLC. Complainant holds
trademark registrations with the United States Patent and Trademark Office
(“USPTO”) for the HARLEY mark (e.g., Reg.
No. 1,352,679 registered August 6, 1985).
Respondent, Jim Harley, registered the disputed <harleysridertraining.com> and <harleysridertraining.net>
domain names on May 28, 2005. The <harleysridertraining.com>
domain name resolves to a website featuring Respondent’s motorcycle
training and testing business. The <harleysridertraining.net>
domain name resolves to a parked website.
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."
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.
For Complainant to prevail, it must prove all three elements. Because of the Panel’s ruling on the issue of Rights or Legitimate Interests, the Panel makes no ruling on this issue.
Respondent’s name is “James Harley.” Furthermore, the WHOIS information lists “Jim Harley” as the disputed <harleysridertraining.com> and <harleysridertraining.net> domain names registrant. Therefore, the Panel finds Respondent is commonly known by “Harley” pursuant to Policy ¶4(c)(ii). See G.A. Modefine S.A. v. Mani, D2001-0537 (WIPO July 20, 2001) (finding that a person who registers a variant of their full name has rights and legitimate interests in the domain name); see also G. A. Modefine S.A. v. Mani, D2001-0537 (WIPO July 20, 2001) (finding that the respondent had rights and legitimate interests in the <armani.com> domain name, where the domain name reflects the initials of the respondent’s first and middle name, combined with its entire last name).
Respondent uses the disputed <harleysridertraining.com> domain name to resolve to a website featuring Respondent’s motorcycle training and testing business. Respondent also offers car training and trailer training services. According to screen shots of Respondent’s website, Respondent has operated this business since 1997. Therefore, the Panel finds Respondent uses the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i). See Harrods Ltd. v. HDU Inc., D2004-0093 (WIPO Apr. 27, 2004) (finding that the <harrodssalon.com> domain name was used in a bona fide manner because the respondent had been in the salon business for ten years prior to registering the domain name and the owner’s surname was “Harrod”); see also Am. Online, Inc. v. West, FA 638005 (Nat. Arb. Forum Mar. 20, 2006) (finding that the respondent was making a bona fide offering of goods or services at the <aol-city.com> domain name where it had used the domain name for over five years in connection with a real estate business in the UK and there was little chance of consumer confusion).
Although the Panel finds Respondent has established rights and legitimate interests in the disputed domain names, Complainant provides evidence of a prior agreement between the parties as evidence that Respondent relinquished these rights. Complainant offers a letter from 2008 in which Respondent writes, “That my company shall forthwith take all such steps as lie within its power to change or facilitate change of its corporate name to ‘J. Harley’s Rider Training Limited’…[I hereby undertake] not in any event use the word ‘Harley’ in relation to motorcycle training services or any other goods or services relating to the motorcycle industry or motorcycling without prefixing the word ‘Harley’ with the letter ‘J’, the word ‘Jim’ or the word ‘James.’”
Respondent claims the agreement applies only to his company and not to him individually.
The Panel finds that this is a contractual dispute between two parties that falls outside the scope of the UDRP. In Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007), the panel stated:
A dispute, such as the present one,
between parties who each have at least a prima facie case for rights in
the disputed domain names is outside the scope of the Policy … the present case
appears to hinge mostly on a business or civil dispute between the parties,
with possible causes of action for breach of contract or fiduciary duty.
Thus, the majority holds that the subject matter is outside the scope of the
UDRP and dismisses the Complaint.
In Love, the panel was concerned with possible causes of action for breach of contract. In this case, Complainant provides evidence of an agreement with Respondent where Respondent appears to relinquish his rights and legitimate interests in the disputed domain names. According to the panel in Love, complex cases such as the one presented here may be better decided by the courts than by a UDRP panel:
When the parties differ markedly with respect to the basic facts, and
there is no clear and conclusive written evidence, it is difficult for a Panel
operating under the Rules to determine which presentation of the facts is more
credible. National courts are better
equipped to take evidence and to evaluate its credibility.
The Panel in Luvilon Industries NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005) concurred with this reasoning:
[The Policy’s purpose is to] combat abusive domain
name registrations and not to provide a prescriptive code for resolving more
complex trade mark disputes .… The issues between the parties are not
limited to the law of trade marks. There
are other intellectual property issues.
There are serious contractual issues.
There are questions of governing law and proper forum if the matter were
litigated. Were all the issues fully
ventilated before a Court of competent jurisdiction, there may be findings of
implied contractual terms, minimum termination period, breach
of contract, estoppels or other equitable defenses. So far as the facts fit within trade mark
law, there may be arguments of infringement, validity of the registrations,
ownership of goodwill, local reputation, consent, acquiescence, and so on.
Based upon the reasoning outlined in the aforementioned cases and the record, the Panel finds that the instant dispute contains a question of contractual interpretation and contract enforcement, and thus falls outside the scope of the UDRP. See Everingham Bros. Bait Co. v. Contigo Visual, FA 440219 (Nat. Arb. Forum Apr. 27, 2005) (“The Panel finds that this matter is outside the scope of the Policy because it involves a business dispute between two parties. The UDRP was implemented to address abusive cybersquatting, not contractual or legitimate business disputes.”); see also Fuze Beverage, LLC v. CGEYE, Inc., FA 844252 (Nat. Arb. Forum Jan. 8, 2007) (“The Complaint before us describes what appears to be a common-form claim of breach of contract or breach of fiduciary duty. It is not the kind of controversy, grounded exclusively in abusive cyber-squatting, that the Policy was designed to address.”); see also Frazier Winery LLC v. Hernandez, FA 841081 (Nat. Arb. Forum Dec. 27, 2006) (holding that disputes arising out of a business relationship between the complainant and respondent regarding control over the domain name registration are outside the scope of the UDRP Policy).
Because of the contractual dispute, Complainant cannot prevail on this issue.
The Panel finds Complainant has not satisfied Policy ¶ 4(a)(ii).
For Complainant to prevail, it must prove all three elements. Because of the Panel’s ruling on the issue of Rights or Legitimate Interests, the Panel makes no ruling on this issue.
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <harleysridertraining.com> and <harleysridertraining.net> domain names REMAIN with Respondent.
Honorable Karl V. Fink (Ret.), Panelist
Dated: May 25, 2010
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