H-D Michigan, Inc. v. Petersons
Automobile a/k/a Larry Petersons
Claim Number: FA0212000135608
PARTIES
Complainant
is H-D Michigan, Inc., Ann Arbor,
MI, USA (“Complainant”) represented by Robert
S. Gurwin, of Rader Fishman &
Grauer. Respondent is Petersons Automobile a/k/a Larry Petersons, Toronto, ON, CANADA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <harleyfanclub.com>,
registered with Enom, Inc.
PANEL
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.
John
J. Upchurch as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically
on December 2, 2002; the Forum received a hard copy of the Complaint on December
2, 2002.
On
December 5, 2002, Enom, Inc. confirmed by e-mail to the Forum that the domain
name <harleyfanclub.com> is
registered with Enom, Inc. and that Respondent is the current registrant of the
name. Enom, Inc. has verified that
Respondent is bound by the Enom, 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
December 9, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of December 30, 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@harleyfanclub.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
January 6, 2003, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed John J. Upchurch 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
assertions:
1.
Respondent’s
<harleyfanclub.com> domain name is confusingly similar to
Complainant’s registered HARLEY-DAVIDSON family of marks.
2.
Respondent does not have any rights or legitimate interests in the <harleyfanclub.com>
domain name.
3. Respondent
registered and used the <harleyfanclub.com> domain name in
bad faith.
B. Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant, H-D Michigan, Inc., and its
primary subsidiary and licensee Harley-Davidson Motor Co. Group, Inc. earned
over $3.36 billion in worldwide sales in fiscal year 2001. Complainant is one
of the world’s largest and most recognized manufacturers and distributors of
motorcycles, motorcycle parts and accessories, and related goods and services.
Complainant traces the origin of its business to 1903. By 1912 Complainant had
established a network of over 200 dealers in the United States and shipped its
first HARLEY-DAVIDSON motorcycles to international destinations.
Among Complainant’s primary trademark and
service marks are the HARLEY and HARLEY-DAVIDSON marks, both of which are used
and registered in word and logo formats (collectively, the “HARLEY-DAVIDSON
Marks”). Presently, Complainant is the holder of 198 and 598 trademark
registrations for the HARLEY and HARLEY-DAVIDSON marks, respectively, in over
75 countries. Complainant also holds another 365 trademark registrations
throughout the world for various logos incorporating the HARLEY-DAVIDSON Marks.
Complainant holds numerous registrations protecting the HARLEY-DAVIDSON Marks
in Canada, Respondent’s recorded place of business. More specifically,
Complainant holds the following registrations: 294,796 registered Sept. 7,
1984; 456,051; 324,987; 237,635; and, 364,502, listed without limitation.
Respondent registered the disputed <harleyfanclub.com>
domain name on August 28, 2002. Complainant’s investigation of Respondent’s
use of the subject domain name indicates that Respondent posted and continues
to run an active website at the domain name that compares itself to
Complainant’s official HARLEY-DAVIDSON Visa Free Ride Sweepstakes website.
Moreover, Respondent’s website has “completely copied the text and graphics from
Complainant’s official Sweepstakes site, and has copied the overall look and
feel of the Complainant’s site.”
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 the Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
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 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 has established rights in the
HARLEY-DAVIDSON Marks through successful registration in over 75 countries, and
the relevant trademark authorities contained therein. Further, Complainant has
continuously used its HARLEY-DAVIDSON Marks in commerce since its 1903
inception.
Respondent’s <harleyfanclub.com> domain
name is confusingly similar to Complainant’s HARLEY-DAVIDSON Marks.
Specifically, Respondent’s domain name contains Complainant’s registered HARLEY
mark in its entirety and deviates only with the addition of the related words
“fan club.” The addition of the words “fan club” to Complaniant’s famous mark
does not dispel the confusing similarity between the domain name and the
HARLEY-DAVIDSON Marks because Complainant’s HARLEY mark remains the root of
Respondent’s second-level domain. Additionally, the words “fan club” relate to
Complainant’s public relations and fail to create any distinguishing
characteristics from Complainant’s mark or industry-related goals. See Oki
Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact
that a domain name incorporates a Complainant’s registered mark is sufficient
to establish identical or confusing similarity for purposes of the Policy
despite the addition of other words to such marks”); see also Arthur Guinness Son & Co. (Dublin)
Ltd. v. Healy/BOSTH, D2001-0026
(WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in
dispute contains the identical mark of Complainant combined with a generic word
or term).
Accordingly, the Panel finds that Policy
¶ 4(a)(i) has been satisfied.
Complainant’s submission to the Panel
intimates that Respondent does not have any rights or legitimate interests in
the <harleyfanclub.com> domain name. Because Respondent has failed
to submit a Response, Complainant’s assertions are unopposed and the Panel is
permitted to accept all reasonable inferences contained in the Complaint as
true. See Vertical Solutions
Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31,
2000) (failure to respond allows all reasonable inferences of fact in the
allegations of Complainant to be deemed true).
Additionally, because Complainant has
provided proof of valid, subsisting rights in a mark that is confusingly
similar to the domain name in question and alleged that Respondent lacks rights
or legitimate interests in the domain name the burden shifts to Respondent. By
failing to respond, Respondent has consequently failed to assert any
circumstances that could substantiate its rights or interests in the subject
domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug.
21, 2000) (finding that once Complainant asserts that Respondent has no rights
or legitimate interests in respect of the domain, the burden shifts to
Respondent to provide credible evidence that substantiates its claim of rights
and legitimate interests in the domain name); see also Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response,
Respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name).
As stated, Respondent utilizes
Complainant’s HARLEY-DAVIDSON Marks on its infringing website located at the <harleyfanclub.com>
domain name. Respondent’s website attempts to opportunistically trade on
the goodwill and recognition associated with Complainant’s famous marks. For
instance, Respondent’s website utilizes various banners that display:
“HARLEY-DAVIDSON VISA FREE RIDE SWEEPSTAKES” as well as Complainant’s “Bar and
Shield” logo mark and the “overall look and feel of Complainant’s official
Sweepstakes website.” Respondent is attempting to benefit from the advertising
and promotional undertakings of Complainant as well as a perceived affiliation
with Complainant’s product. Therefore, Respondent fails to establish rights or
legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) and
(iii). See Big Dog Holdings, Inc.
v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use
when Respondent was diverting consumers to its own website by using
Complainant’s trademarks); see also Toronto-Dominion
Bank v. Karpachev, 188 F.Supp.2d
110, 114 (D.
Mass. 2002) (finding that, because Respondent's sole purpose in selecting the
domain names was to cause confusion with Complainant's website and marks, it's
use of the names was not in connection with the offering of goods or services
or any other fair use).
No evidence before the Panel
suggests that Respondent has a legitimate connection with the <harleyfanclub.com>
domain name, nor has Respondent proposed any set of circumstances that
would indicate it is commonly known as the “harleyfanclub” second-level domain
under Policy ¶ 4(c)(ii). The relevant WHOIS information reveals that Respondent
is Petersons Automobile, and Larry Petersons is apparently the responsible
agent for the said entity. Complainant’s use of the HARLEY-DAVIDSON Marks in
commerce for nearly a century creates a presumption that Respondent is not
commonly known by a domain name that incorporates Complainant’s HARLEY mark in
its entirety. See Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28,
2001) (finding sufficient proof that Respondent was not commonly known by a
domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because
of Complainant’s well-established use of the mark); see also CBS Broad., Inc. v. LA-Twilight-Zone,
D2000-0397 (WIPO June 19, 2000) (finding that Respondent failed to demonstrate
any rights or legitimate interests in the <twilight-zone.net> domain name
since Complainant had been using the TWILIGHT ZONE mark since 1959).
Accordingly, the Panel finds that Policy
¶ 4(a)(ii) has been satisfied.
The evidence before the Panel supports a
finding that Respondent registered and used the subject domain name in bad
faith as described in Policy ¶ 4(b)(iv). The presented circumstances and
evidence demonstrate that through registration and use of the infringing domain
name, Respondent is intentionally attempting to attract Internet users to its fraudulent
website by using Complainant’s famous marks and likeness. Moreover,
Respondent’s actions tarnish Complainant’s mark and the goodwill associated
with the HARLEY-DAVIDSON Marks by causing consumers to believe that
Respondent’s fabricated sweepstakes represents Complainant’s Harley
Sweepstakes. Respondent’s use of Complainant’s mark and various logos on its
website supports the conclusion that Respondent’s registration and use of the <harleyfanclub.com>
domain name evidences opportunistic bad faith under Policy ¶ 4(b)(iv). See
Singapore Airlines Ltd v. P & P
Servicios de Communicacion S.L.,
D2000-0643 (WIPO Aug. 29, 2000) (“The domain name ‘singaporeairlines.com’ is so
obviously connected with a well-known airline that its very registration and
use by someone with no connection to the airline suggests opportunistic bad
faith. Indeed, it is hard to imagine a
more blatant exercise in ‘cybersquatting’”); see also London Metal Exch. Ltd. v. Hussain;
D2000-1388 (WIPO Dec. 15, 2000) (finding that the “letters ‘lme’ are so
obviously connected with a well-known entity that their very use by someone
with no connection to Complainant suggests opportunistic bad faith”); see
also Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that
if Respondent profits from its diversionary use of Complainant's mark when the
domain name resolves to commercial websites and Respondent fails to contest the
Complaint, it may be concluded that Respondent is using the domain name in bad
faith pursuant to Policy 4(b)(iv)).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having established all three elements required under
ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <harleyfanclub.com>
domain name be TRANSFERRED
from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: January 8, 2003
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