H-D Michigan, Inc. v. Garry Skaggs d/b/a Garry Skaggs Company
Claim Number: FA0211000132449
Complainant is H-D Michigan, Inc., Ann Arbor, MI (“Complainant”) represented by Robert S. Gurwin, of Rader, Fishman & Grauer PLLC. Respondent is Garry Skaggs d/b/a Garry Skaggs Company, Crandall, IN (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <usedharleys.com>, <usedharleys.org>, <usedharleys.biz>, <usedharleysonline.com>, <rankharleys.com>, <harleypartsonline.com>, <usedharleyparts.com> and <usedharleys.info>, registered with Tucows, Inc., and Intercosmos Media Group, 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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 11, 2002; the Forum received a hard copy of the Complaint on November 11, 2002.
On November 11, 2002, Tucows, Inc., and Intercosmos Media Group, Inc., confirmed by e-mail to the Forum that the domain names <usedharleys.com>, <usedharleys.org>, <usedharleys.biz>, <usedharleysonline.com>, <rankharleys.com>, <harleypartsonline.com>, <usedharleyparts.com> and <usedharleys.info> are registered with Tucows, Inc., and Intercosmos Media Group, Inc., and that the Respondent is the current registrant of the names. Tucows, Inc., and Intercosmos Media Group, Inc., have verified that Respondent is bound by the Tucows, Inc., and Intercosmos Media Group, 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 November 12, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 2, 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, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, and firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on December 2, 2002.
Complainant filed a timely Additional Submission on December 6, 2002.
On December 12, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant H-D Michigan, Inc. and its subsidiary and licensee Harley-Davidson Motor Company Group, Inc. and related companies (collectively, “H-D”) are one of the world’s largest and most famous manufacturers and distributors of motorcycles. H-D was founded in 1903 and has operated under the name Harley-Davidson from that date to present. Today, shares trade on the New York Stock Exchange under the symbol “HDI.”
H-D has continued to grow and thrive in the U.S.A. and around the world. Through 2001, H-D delivered 16 consecutive years of record revenues and earnings. In 2002, H-D was named “Company of the Year” by Forbes magazine.
H-D’s primary trademark and service mark HARLEY-DAVIDSON is used and registered both in word and logo formats. H-D has made continuous use of the HARLEY-DAVIDSON Marks both inside and outside the U.S.A. since 1903. H-D is the owner of over 198 and 598 trademark registrations for the word marks HARLEY and HARLEY-DAVIDSON respectively in over 75 countries, including the U.S.A. H-D also owns another 365 trademark registrations through the world for various logos incorporating the words HARLEY or HARLEY-DAVIDSON. The H-D Marks are extremely well known, highly distinctive and associated by consumers solely with H-D and its goods and services. It is undeniable that the H-D Marks are famous and entitled to protection.
H-D has held its primary domain name, <harley-davidson.com> since 1994. In addition, H-D holds over 600 Internet domain name registrations of which 154 incorporate the mark HARLEY or HARLEY-DAVIDSON (or close variations). Among the services that H-D provides through its Internet presence is an up-to-date listing of used genuine H-D motorcycles that are available for sale through its network of authorized H-D dealers.
Without having any legitimate rights to the HARLEY-DAVIDSON name or marks, Respondent applied for and secured registrations for <usedharleys.com>, <usedharleys.org>, <usedharleys.biz>, <usedharleys.info>, <usedharleyparts.com>, <usedharleysonline.com>, <rankharleys.com>, <harleypartsonline.com> and <usedharleyparts.com>, on March 11, 1998, April 28, 2000, February 11, 2002, February 11, 2002, March 11, 1998, March 11, 1998, April 28, 2000, January 26, 2001 and March 10, 1998 respectively.
From reviewing the disclaimer page that Respondent has posted in connection with the URL, <usedharleys.com>, it is clear that Respondent is aware of H-D’s trademarks rights.
Respondent has demonstrated a pattern of bad faith conduct through registration of all eight and now offering to sell six of the names.
Respondent has engaged in wholesale copyright infringement by lifting large portions of text from the H-D website.
Respondent is trading on and using Complainant’s world famous trade names and marks to post and promote photographs of scantily clad women perched on Complainant’s motorcycles and to sell T-Shirts. By using the Infringing Names to sell shirts, consumers may falsely believe that the shirts that bear a sexist message is somehow sponsored by or affiliated with the Complainant.
Respondent is intentionally creating consumer confusion and attempting to direct for itself web traffic that is rightfully intended for the Complainant. Respondent attempts to reap financial gain from selling all six of the Infringing Names for a price that is well in excess of what it paid, and is actually selling advertisements for used motorcycles in direct competition with the Complainant while trading on the fame and goodwill associated with Complainant’s Marks.
The domain names registered by Respondent are confusingly similar to Complainant’s Marks.
Respondent does not, and has never, offered bona fide goods or services under the HARLEY-DAVIDSON Marks as required by the Policy.
Respondent has never been commonly known by the name HARLEY-DAVIDSON.
Respondent’s conduct cannot constitute noncommercial or fair use without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Respondent cannot establish legitimate rights and interests in the disputed domain name.
Respondent registered the domain names in bad faith because Respondent is now attempting to sell them for a windfall profit in excess of $400,000.00
Respondent registered the domain names in order to prevent Complainant from holding them in connection with its business.
Respondent has engaged in a documented pattern of registering multiple domain names that fully incorporate Complainant’s registered trademarks. This conduct intentionally creates consumer confusion to benefit Respondent and disrupts the business of Complainant as the rightful owner of the trademarks.
Respondent is Garry Skaggs doing business as Garry Skaggs Company located at Crandall, Indiana.
Respondent has had his website up and running for years and has helped fellow bikers to get their bikes sold. Respondent is simply offering the general public a way to promote motorcycles for sale. The site was put together in good faith and with no nudity or abusive language. Respondent has brought a lot of true bikers together sharing photos of their children and of loved ones. Being in the top 10 in the search engine for Used Harleys is a real good reason why any corporate giant would want to strip Respondent of his domain names.
Respondent is not using HARLEY or HARLEY-DAVIDSON. Respondent is using the name Used Harleys. This does not create confusion for customers. Respondent never used Complainant’s logo. The site has one banner at the top and it was from a site that offers free HARLEY banners for web sites and it was not taken from the Complainant’s web site.
Respondent has never confused the general public that Respondent was affiliated with the Harley-Davidson motorcycle company as posing as a dealer or a vendor from their company. Respondent has never used Harley Davidson’s logo on the site and has never claimed to be a part of the actual company.
Respondent has a disclaimer on the web site that states that Respondent has nothing to do with the Harley Davidson Company. It is not hidden deep with the site. There is a link on the left-hand side of the page and is seen on every page view.
Respondent denies selling advertisements.
No content was taken from the official Harley-Davidson web site and used on Respondent’s web site. The material is freely available on many sites and that is where the history and other material were obtained. Respondent has removed the T-shirt sales section from the site to please the Complainant.
Respondent did put up the site and domain names for sale on Ebay. The site has been running for several years and if it was a problem Respondent should have been contacted a long time age. The accusations brought against Respondent are padded very heavily and are not grounds to strip away Respondent’s web site.
Complainant’s Additional Submission supplies additional citation of authority and reargues points made in the Complaint.
1. Complainant is one of the world’s largest and most famous manufacturers and distributors of motorcycles.
2. Complainant has operated under the trademark HARLEY-DAVIDSON since 1903 and has continued to promote and utilize the trademark to the present date.
3. Complainant is the owner of hundreds of registered trademarks in the United States and elsewhere for the trademarks HARLEY and HARLEY-DAVIDSON.
4. Complainant has operated on the Internet since 1994 with the domain name <harley-davidson.com> and owns about 600 domain names, 154 of which use the trademark in whole or part.
5. Respondent is Garry Skaggs who does business under the name Garry Skaggs Company. Respondent fails to state the exact organization of his company, when it came into existence, his or the company’s past activities, or what his purpose or the company’s purpose is other than to operate the website at issue in this proceeding.
6. On March 11, 1998, Respondent registered the domain names <usedharleys.com> and <usedharleyparts.com> and <harleypartsonline.com> was registered by Respondent on March 10, 1998.
7. On some date not shown in the pleadings, Respondent began operating a website at <usedharleys.com> where Respondent offered to list motorcycles for sale by the owner, with photo, for $9.95. Respondent sold shirts and posted various information relating to motorcycles. Respondent says he has been operating the website for “several years”. Complainant does not contest this contention. The Panel finds that the website at <usedharleys.com> began operation before any notice of any dispute with Complainant.
8. The Panel infers that Respondent has renewed the domain names above listed.
9. On April 28, 2000, Respondent registered the domain name <usedharleysonline.com>.
10. On March 14, 2001, Respondent registered the domain name <usedharleys.org>.
11. On January 26, 2001, Respondent registered the domain name <rankharleys.com>.
12. On February 11, 2002, Respondent registered the domain names <usedharleys.biz> and <usedharleys.info>.
13. On or about October 31, 2002, Respondent placed the six domain names beginning with the word “used”, including <usedharleys.com> for bid at eBay under the heading “Harley Davidson Web Site TOP 10 IN SEARCH ENGINE”, setting a minimum bid of $400,000.00. The bidding was to end on November 10, 2002. No result of the bidding process was revealed to the Panel.
14. Complainant presents no evidence of ever communicating with Respondent regarding any of the domain names prior to filing the Complaint in this case.
15. All of the domain names registered by Respondent that are in issue in this proceeding are confusingly similar to Complainant’s trademarks, HARLEY-DAVIDSON and HARLEY.
16. Respondent has no rights or legitimate interests in any of the domain names at issue in this case.
17. Complainant fails to prove that the domain names <usedharleys.com>, <usedharleys.org>, <usedharleys.biz>, <usedharleysonline.com> , <usedharleyparts.com> and <usedharleys.info> were registered and used in bad faith.
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.
Complainant has rights to the trademarks, HARLEY-DAVIDSON and HARLEY by virtue of the registration with the United States Patent and Trademark Office. This circumstance is sufficient under Policy¶4(a)(i). See Koninklijke KPN N.V. v. Telepathy Inc., D2000-0217 (WIPO May 7, 2001).
The remaining issue is whether the domain names and trademarks are confusingly similar.
Panels have differed in consideration of domain names where the trademark of the Complainant is registered with the word “used” affixed just before it. One Panel found “that the addition of the word ‘used’ to the Caterpillar marks distinguishes the domain names and thus the domain names are not confusingly similar…The domain names are merely descriptive of Respondent’s business (selling used Caterpillar equipment) and thus not confusingly similar.” Caterpillar Inc. v. Neal NcKean d/b/a Machineworks, Inc. d/b/a/ machinetools.com, FA 97302 (Nat. Arb. Forum Apr. 6, 2001).
Another Panel found that where the domain name consisted of the word “used”, followed by the trademark “Philips” that “used” is a generic addition to the domain name with no distinctiveness. The Panel found the domain name <usedphilips> confusingly similar to complainant’s trademark “Philips.” Koninklijke Philips Electronics N.V. v. Lewis & Clark, Inc. D2000-1344 (WIPO Jan. 15, 2001).
Another Panel decided that the domain name <usedcatauctions.net> was confusingly similar to complainant’s registered “CAT’ mark “The only differences between Respondent’s domain names and the registered mark of Complainant is the addition of the top-level domain ‘net’ and the words ‘used’ or ‘auction/s’ to the disputed domain names.” “Furthermore, the addition of the descriptive words ‘used’ and ‘auction/s’ to the disputed domain names does not defeat a finding of confusing similarity by the Panel under Policy¶4(a)(i).” Caterpillar Inc. v. VMC Right Track, Inc. FA 125750 (Nat. Arb. Forum Nov. 14, 2002).
Another case involved the trademark, “fadal.” Respondent registered <usedfadal.net>, <usedfadal.com>, <fadal-used.com>, <usedfadalcnc.com>, <usedfadals.net>, <usedfadals.com>, <used-fadals.net>, <used-fadals.com>, <fadalsused.com> and <fedalused.com>. The Panel stated, “The question of whether the contested domain names are confusingly similar to a trademark in which the Complainant has rights is not free from doubt.” The Panel further stated: “The use of domain names to describe products and services, rather than announce the name of the business offering them on the Internet, has been noted and affirmed as fair nominative use in a number of UDRP cases.” The Panel cited, as did the Panel in Caterpillar Inc. v. Neil McKean, et al, the case of The Kittenger Company Inc. v. Kittinger Collector, AF 0107 (eResolution May 8, 2000). The question of confusing similarity was never decided in the “fadal” case. It was resolved on other grounds. See Giddings & Lewis LLC v. Neal McKean d/b/a Machineworks, Inc. d/b/a Machinetools.com., D2000-1150 (WIPO Mar. 14, 2001).
The Panel finds that the weight of domain dispute decisions favor the result that the domain names in question are confusingly similar to Complainant’s trademarks. The Panel adopts the reasoning in Koninklijke Philips Electronics N.V. v. Lewis & Clark, Inc., wherein it was held that when the word “used” is followed by the tradename of Complainant, it becomes merely a generic addition to the domain name, with no distinctiveness. The word “used” and “rank” and “online” and the addition of the letter “s” to Complainant’s mark, represent nothing more than descriptive words. These descriptive words do not change the fact that the dominant feature of the disputed domain names is the use of Complainant’s distinctive and registered HARLEY mark. See Caterpillar Inc. v. VMC Right Track, Inc., supra. The addition of a top-level domain is irrelevant when determining whether a domain name is confusingly similar to a mark in which a complainant has established rights, thus “com”, “org”, “info” and “biz” are to be disregarded when making the determination. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000).
The Panel finds that the domain names <usedharleys.com>, <usedharleys.org>, <usedharleys.biz>, <usedharleysonline>, <rankharleys.com>, <harleypartsonline.com>, <usedharleyparts.com> and <usedharleys.info> are confusingly similar to Complainant’s HARLEY Mark.
Complainant prevails under the requirements of Policy¶4(a)(i).
It is obvious that Respondent is not affiliated with Complainant nor authorized by Complainant to use Complainant’s trademarks or service marks. Complainant contends that Respondent has never been known by the name HARLEY-DAVIDSON in accordance with Policy¶4(c)(ii). Complainant contends that Respondent does not, and has never, offered bona fide goods or services under the HARLEY-DAVIDSON Marks as required under Policy¶4(c)(i). Respondent’s conduct, Complainant argues, cannot constitute noncommercial or fair use without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue. Complainant contends that it has exclusive rights to use its registered marks. See Am. Online v. Tencent Communications Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000). As a result of Complainant’s showing, and Respondent’s apparent lack of rights and legitimate interests in the domain name, the burden must shift to Respondent to demonstrate Respondent’s rights and legitimate interests in the domain names. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000).
Respondent may demonstrate its rights and legitimate interests in the domain names by any of the methods set out in Policy¶4(c).
For Respondent to prove its contentions as to rights and legitimate interests, Respondent must produce “concrete evidence” not “mere personal assertions.” See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) wherein it was stated as follows:
Where a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion. This information is uniquely within the knowledge and control of the respondent. Failure of a respondent to come forward with such evidence is tantamount to admitting to the truth of complainant’s assertions in this regard
Respondent has presented nothing in the way of evidence. There are no affidavits, exhibits, or other types of proof attached to the Response. Respondent makes a rudimentary statement wherein he simply states that he wanted to open a website to offer used motorcycles for sale on the Internet and that his site had been in operation for several years. The only concrete evidence is contained in the Exhibits of Complainant. Complainant included printouts of several of the pages contained on Respondent’s website at <usedharleys.com>.
The web pages disclose that, for a certain price to be paid by a motorcycle owner, Respondent would list a photograph and description of the used motorcycle for sale. The owner’s name was not listed. It is not explained on the web page whether a potential buyer seeking to purchase one of the listed motorcycles was referred to the owner or some other method was used to forward the sale. Respondent sold T-shirts containing the name “usedharleys.com”. Respondent also supplied some pages of general information relating to motorcycles. Respondent states that he has been operating the website in this manner for several years. Complainant does not dispute this allegation, and it is taken as true.
The question is whether this state of facts supports a finding that before any notice to Respondent of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name was in connection with a bona fide offering of goods or services under Policy¶4(c)(i). There is no question that Respondent began using the domain name <usedharleys.com> years before any notice of the dispute. The remaining question is whether it was a bona fide offering of goods.
There can be no doubt that Respondent chose the domain names containing the word HARLEY to attract persons interested in HARLEY-DAVIDSON motorcycles.
Most Panels apply the rule that the use of an infringing domain name does not represent a bona fide offering of goods and services under Policy¶4(c)(i) under URDP precedent. See Madonna Ciccone, p/k/a Madonna v. Parisi and “Madonna.com”, D2000-0847 (WIPO May 28, 2001) which held that “use which intentionally trades on the fame of another can not constitute a ‘bona fide’ offering of goods and services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.” See also Yahoo! Inc. v. Web Master a/k/a MedGo, FA 127717 (Nat. Arb. Forum Nov. 27, 2002); Yahoo! Inc. v. Microbiz, Inc. D2000-1050 (WIPO Nov. 7, 2000); Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb.22, 2001).
No evidence is presented to show that Respondent has used any of the domain names other than <usedharleys.com> for any purpose since each domain name’s registration date to the present date.
Complainant prevails under the requirements of Policy¶4(a)(ii).
Complainant bears the burden of proof on the issue of bad faith. Complainant may proceed under any of the circumstances set out in Policy¶4(b) or by any other method calculated to illustrate bad faith under the Policy, but not specifically set out in the Policy.
Complainant advances three arguments.
The first argument is that Respondent by offering six of the disputed domain names for sale on eBay, proves circumstances indicating that Respondent registered the domain names primarily for the purpose of selling the domain names to Complainant or a competitor of Complainant for a valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the domain names. Policy¶4(b)(i).
No evidence is presented that Respondent attempted to sell the domain names to Complainant or a competitor of Complainant. Respondent attempted to sell the six domain names beginning with the word “used” on eBay to the general public. It has been held that where the evidence is clear that Respondent registered a domain name for the purpose of selling the domain name to the general public, rather than specifically to a complainant or a competitor of complainant, that the inference may be properly drawn that the spirit of Policy¶4(b)(i) has been violated. “…[T]hose requisite elements may be inferred from the circumstances, including the nature of the domain name (its incorporation of the Complainant’s famous and specific trademark) and the manner in which the domain name has been advertised for sale.” Bayerische Motoren Werke AB v. (This Domain is For Sale) Joshuathan Investments, Inc., D2002-0787 (WIPO Oct. 8, 2002). In the Bayerische case is was obvious that the domain name was registered solely to sell to the public. That is not obvious in this case. Respondent registered three of the domain names in 1998. He operated a web site at one of them for several years before he offered it for sale. The Panel is not prepared to make the inference made in the Bayerische case under the facts and circumstances of this case.
Complainant’s second point is that the domain names were registered to prevent Complainant from holding them in connection with its business. Complainant presents no evidence to support this allegation. No suggestion is made by Complainant that it would ever have a desire to register any domain name beginning with the word “used”. Complainant is in the business of selling new motorcycles, not used ones. Complainant owns 154 domain names incorporating its trademark. The Panel will not infer that Respondent by registering the domain names beginning with the word “used” had an intent to prevent Complainant from reflecting the Mark HARLEY-DAVIDSON or HARLEY in a domain name nor is there presented any evidence of a pattern of such conduct other than the registration of the domain names at issue. Complainant cannot prevail under Policy¶4(b)(ii).
Complainant next contends that Respondent used Complainant’s trademark to attract advertisers, buyers and sellers of used HARLEY-DAVIDSON motorcycles to Respondent’s web site, creating a very strong likelihood of confusion. Consumers are likely to mistakenly believe that Respondent and Respondent’s web site somehow originate from, are sponsored or endorsed by, or affiliated with Complainant, it is argued.
Respondent advertises used HARLEY-DAVIDSON motorcycles for sale. Complainant also advertises used HARLEY-DAVIDSON motorcycles for sale as part of its web site at <harley-davidson.com>. This is illustrated by Complainant’s Exhibit N showing a web page titled “Used Bike Search Results.” This service is provided for Complainant’s dealers who may list used motorcycles on Complainant’s web site.
However, no evidence is presented to the effect that Complainant or its authorized dealers are the only ones legally entitled to sell used HARLEY-DAVIDSON motorcycles. No evidence of any kind is presented by Complainant to show any actual confusion on the part of any single consumer who mistakenly believed that Respondent’s web site at <usedharleys.com> was sponsored or endorsed by, or affiliated with Complainant.
A user searching for Complainant’s HARLEY-DAVIDSON company would surely first enter either <harley-davidson.com>, <harleydavidson.com>, or <harley.com>. Upon doing so, the user would be taken to Complainant’s web site. It is exceedingly unlikely that any user seeking to find Complainant would enter <usedharleys.com>. Complainant is known as a manufacturer and seller of new motorcycles, not used motorcycles. Moreover, there is a clear disclaimer at Respondent’s web site of any affiliation between Complainant and Respondent. Compare DaimlerChrysler A.G. v. Drummonds, D2001-0160 (WIPO June 18, 2001) which held that a Respondent did not, operating a web site at <mercedesshop.com>, attract users to the site by creating a likelihood of confusion, nor were such users likely to believe that they are dealing with an authorized agent of Complainant (Mercedes-Benz) or that Mercedes-Benz sponsored the site. The Panel in the Daimler-Chrysler case stated as follows:
Under the present facts, if the panel were to find for the Complainant, the majority can conceive of no case in which a legitimate competitor in the sale of parts and aftermarket accessories could ever register a domain name descriptive of that business. The Policy was designed to deal only with the limited problem of cybersquatting. It was not designed to establish for the holder of a strong trademark a bar to entry of online competitors. The majority also notes that the Policy was not designed to deal with, nor is the Panel asked to determine, the issue of trademark infringement. Whether the use of Complainant’s trademark on Respondent’s web site constitutes trademark infringement is not for the Panel to decide. If Complainant wishes to pursue that issue, other forums are available.
Respondent stated that he registered the domain name <usedharleys.com> believing that it was legitimate to advertise for sale used Harley-Davidson motorcycles held by individual owners seeking buyers. That is, in fact, what Respondent did for several years after his registration of the domain name in 1998. Complainant advances no evidence that this statement and intention is untrue. This Panel finds no evidence in the pleadings and exhibits to prove that Respondent registered the domain name <usedharleys.com> with the intent to sell the domain name, to disrupt Complainant’s business of manufacturing and selling new motorcycles, to prevent Complainant from reflecting its trademark in a corresponding domain name, or to intentionally attempt to attract Internet users to the web site by creating a likelihood of confusion with Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the web site.
Where a party registers a domain name believing that they were within their legal rights to do so, though it later turns out that this belief was incorrect, that does not mean complainant must automatically prevail. In a case where respondent registered several infringing domain names owned by the NCAA, for the purpose of selling tickets to NCAA events on the Internet, the Panel found that the respondents apparently registered the domain names believing that they were within their legal rights to do so.
They may be wrong…Even if they are wrong, however, this does not mean Complainant should prevail…The ICANN Policy is directed to cybersquatting, e.g., the types of activities set forth in paragraph 4(b)-registering the domain not for potential by the registrant, but rather to sell to another or intentionally creating a likelihood of confusion. Here, Respondents are attempting to sell tickets to the NCAA Tournaments. Whether they can properly do so or not turns on the law of trademark, unfair competition or dilution, not on ones’ intent, which is crucial in an ICAAN proceeding.
NCAA v. Pitkin, et al, D2000-0903 (WIPO Mar. 9, 2001).
Policy¶4(a)(iii) requires the intent on the part of a respondent to register and use the domain name in bad faith. “A conscious decision was made that UDRP proceedings be limited to abusive registrations.” A Panel is not permitted to extend the Policy to cover cases not intended to be with the scope of the Policy. See Teradyne, Inc. v. 4Tel Technology, D2000-0026 (WIPO May 9, 2000).
The Panel can find no evidence that the domain names in question were registered in bad faith. Without such proof, the Panel is not permitted to find for Complainant. See Domain Bank, Inc. v. Sonic Co., Ltd., D2001-00014 (Feb. 13, 2002).
This entire dispute arose due to Respondent placing six of the domain names for sale on eBay, some time after they had been registered. Complainant was apparently content to permit Respondent to operate his web site for several years either because of the fact that it did insufficient damage to Complainant to bring the site to Complainant’s attention, or that Complainant knew about the site but did not object to Respondent’s activities.
But when the domain names were placed with eBay, Complainant filed this Complaint. Complainant must understand that even if the placement of the domain names for sale at eBay in itself was a violation of the Policy that alone would not permit Complainant to prevail if the initial registrations were not made in bad faith. See Teradyne, Inc. v. 4Tel Technology, supra.
With regard to the six names placed on eBay Complainant does not prevail under Policy¶4(a)(iii).
However, Respondent made no attempt to defend the registration and use of the domain names <harleypartsonline.com> and <rankharleys.com>. Rule 5 requires a respondent to respond specifically to the statements and allegations contained in the complaint and include any and all bases for the respondent to retain registration and use of the disputed domain name. See Rules for Uniform Domain Name Dispute Resolution Policy.
The Panel finds that Respondent, by his failure to dispute Complainant’s contentions regarding these two domain names, admitted the truth of Complainant’s contentions. Therefore, the domain names <harleypartsonline.com> and <rankharleys.com> will be transferred to Complainant.
The Panel finds that the domain names <harleypartsonline.com> and <rankharleys.com> now registered to Respondent, Garry Skaggs d.b.a. Garry Skaggs Company, be transferred to Complainant, H-D Michigan, Inc., and the domain names <usedharleys.com>, <usedharleys.org>, <usedharleys.biz>, <usedharleysonline.com>, <usedharleyparts.com>, and <usedharleys.info> be retained by the Respondent.
Tyrus R. Atkinson, Jr., Panelist
Dated: December 24, 2002
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