H-D Michigan, Inc. v. Scott Fishkind a/k/a
Scotty Fish
Claim Number: FA0212000139691
PARTIES
Complainant is H-D Michigan, Inc., Ann Arbor, MI (“Complainant”) represented by Robert S. Gurwin, of Rader Fishman & Grauer PLLC. Respondent is Scotty Fish, Roslyn, NY (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <harleydavidsons100thanniversary.com>, <harleydavidson1903-2003.com>, <harleydavidson100years.com>, <harley-davidsons100thanniversary.com>, <harley-davidson100years.com>, <harleydavidsons100years.com> and <harley-davidson1903-2003.com>, registered with Innerwise, Inc. d/b/a Itsyourdomain.com.
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.
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on December 30, 2002; the Forum received a hard copy of the Complaint on December 31, 2002.
On January 9, 2003, Innerwise, Inc. d/b/a Itsyourdomain.com confirmed by e-mail to the Forum that the domain names <harleydavidsons100thanniversary.com>, <harleydavidson1903-2003.com>, <harleydavidson100years.com>, <harley-davidsons100thanniversary.com>, <harley-davidson100years.com>, <harleydavidsons100years.com> and <harley-davidson1903-2003.com> are registered with Innerwise, Inc. d/b/a Itsyourdomain.com and that Respondent is the current registrant of the names. Innerwise, Inc. d/b/a Itsyourdomain.com has verified that Respondent is bound by the Innerwise, Inc. d/b/a Itsyourdomain.com 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 January 9, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 29, 2003 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@harleydavidsons100thanniversary.com, postmaster@harleydavidson1903-2003.com, postmaster@harleydavidson100years.com, postmaster@harley-davidsons100thanniversary.com, postmaster@harley-davidson100years.com, postmaster@harleydavidsons100years.com and postmaster@harley-davidson1903-2003.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 February 10, 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <harleydavidsons100thanniversary.com>, <harleydavidson1903-2003.com>, <harleydavidson100years.com>, <harley-davidsons100thanniversary.com>, <harley-davidson100years.com>, <harleydavidsons100years.com> and <harley-davidson1903-2003.com> domain names are confusingly similar to Complainant’s HARLEY-DAVIDSON mark.
2. Respondent does not have any rights or legitimate interests in the disputed domain names.
3. Respondent registered and used the disputed domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant
is one of the world’s largest and most famous manufacturers and distributors of
motorcycles, motorcycle parts and accessories.
Complainant denotes its goods with the HARLEY-DAVIDSON mark. Complainant’s first motorcycles were
produced in 1903.
Since 1903, Complainant has developed into the foremost motorcycle manufacturer in the United States. In 2001, Complainant had sales over $3.36 billion. Moreover, Complainant has enjoyed sixteen consecutive years of record revenues and earnings.
As a result of Complainant’s steady financial success in connection with sales of its highly regarded motorcycles, the HARLEY-DAVIDSON mark has achieved a substantial level of recognition in association with quality products. In recognition of the value the HARLEY-DAVIDSON mark has accrued over the years, Complainant has registered the mark with the United States Patent and Trademark Office in both word and design form. In addition to Complainant’s United States trademark registrations, Complainant owns over 598 trademark registrations for HARLEY-DAVIDSON in over 75 countries.
Respondent registered the seven disputed domain names on December 26, 2002 and December 27, 2002. Respondent immediately placed the domain names up for auction on eBay. By December 30, 2002, one of the domain names had a bid of $7,600 for its registration rights. Complainant notified eBay of its interest in the HARLEY-DAVIDSON mark and alleged that the domain names infringed on Complainant’s trademark rights. Subsequently, eBay cancelled the auctions and notified Respondent. Thereafter, on December 31, 2002, Respondent sent an email to Complainant to solicit the sale of the seven domain name registrations.
Respondent has also registered other domain names that incorporate well-known trademarks, including HUMMER, CORVETTE and HONDA, and placed them for auction on eBay. Respondent’s auction advertises the domain names as “worth $$$$$$$$$$$$$.”
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 draw such inferences 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
has demonstrated its rights in the HARLEY-DAVIDSON mark through proof of
trademark registration and continuous use of the mark since 1903.
The
disputed domain names are confusingly similar to Complainant’s HARLEY-DAVIDSON
mark because they merely incorporate the mark with a suffix that suggests that
Complainant has been in business producing goods under the mark for one-hundred
years. The suffixes consist of either
“100thanniversary,” “100years,” or “1903-2003,” and they carry no significant
meaning without Complainant’s HARLEY-DAVIDSON mark preceding them. Hence, Complainant’s mark remains the
dominant portion of the domain names. See
Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an
ordinary descriptive word…nor the suffix ‘.com’ detract from the overall impression
of the dominant part of the name in each case, namely the trademark SONY” and
thus Policy ¶ 4(a)(i) is satisfied); see also Brambles Industries Ltd. v. Geelong Car Co. Pty. Ltd., trading as
Geelong City Motors, D2000-1153 (WIPO Oct. 17, 2000) (finding that the
domain name <bramblesequipment.com> is confusingly similar because the
combination of the two words "brambles" and "equipment" in
the domain name implies that there is an association with the Complainant’s
business).
Some of
the domain names incorporate an “s” in between the word “davidson” and the
suffix. The deliberate introduction of
the letter “s” is not a distinguishing difference capable of taking the domain
name out of the realm of confusing similarity.
See Victoria’s Secret v.
Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by
misspelling words and adding letters to words, a Respondent does not create a
distinct mark but nevertheless renders the domain name confusingly similar to
Complainant’s marks); see also Nat’l
Geographic Soc. v. Stoneybrook Inv., FA 96263 (Nat. Arb. Forum Jan. 11,
2001) (finding that the domain name <nationalgeographics.com> was
confusingly similar to Complainant’s “National Geographic” mark).
Furthermore,
a few domain names incorporate Complainant’s HARLEY-DAVIDSON mark absent the
hyphen. Since a hyphen is not a
distinguishing feature, omitting it in the domain name does not defeat a
confusingly similar claim. See Nat’l
Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June
19, 2000) (holding that the domain name <cspan.net>, which omitted the
hyphen from the trademark spelling C-SPAN, is confusingly similar to
Complainant's mark); see also Ritz-Carlton
Hotel Co. v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding
that removing a hyphen in the domain names is not sufficient to differentiate
the domain names from the mark).
The
Panel therefore finds that all seven disputed domain names, reflecting the
aforementioned characteristics in one way or another, are confusingly similar
to Complainant’s HARLEY-DAVIDSON mark.
Thus, Policy ¶ 4(a)(i) has been satisfied.
Immediately
after registering the disputed domain names Respondent placed them on eBay for
auction. The auction was halted when
Complainant notified eBay that Respondent had no authorization to use the
HARLEY-DAVIDSON mark. Furthermore, once
Respondent found out eBay dissolved the auction, Respondent contacted
Complainant in an effort to sell the domain name registrations. The evidence shows that Respondent’s primary
motivation was to profit from the goodwill associated with the HARLEY-DAVIDSON
mark and Complainant’s 100-year anniversary.
Respondent has not come forward to refute this evidence and the Panel
therefore finds that Respondent’s actions indicate a lack of rights or
legitimate interests in the domain name pursuant to Policy ¶¶ 4(c)(i) or
(iii). See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000)
(finding Respondent’s conduct purporting to sell the domain name suggests it
has no legitimate use); see also Hewlett-Packard
Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31,
2000) (finding no rights or legitimate interests where Respondent registered
the domain name with the intention of selling its rights).
Respondent
has no established interest in the HARLEY-DAVIDSON mark and Complainant has
never granted Respondent permission to use the mark. Respondent is identified as Scott Fishkind a/k/a Scotty Fish and
there is no evidence that suggests Respondent is commonly known by the disputed
domain names. In addition, because
Complainant has exclusively used the HARLEY-DAVIDSON mark for 100 years in
association with its well-respected motorcycle business, it is highly unlikely
that Respondent could be commonly known by the disputed domain names. Therefore, the Panel finds that Respondent
has no rights or legitimate interests in the disputed domain names under Policy
¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark); see also
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).
Accordingly,
the Panel finds that Respondent has no rights or legitimate interests in the
disputed domain names and Policy ¶ 4(a)(ii) has been satisfied.
The
character of the disputed domain names alone, due to the use of the
HARLEY-DAVIDSON mark in connection with a suffix signifying 100 years of
business, evidences an intent to profit off of the HARLEY-DAVIDSON mark. Respondent’s actual use of the disputed
domain names supports such an inference, as Respondent sought to auction the
disputed domain names on eBay and when Complainant terminated that effort Respondent
attempted to sell Complainant the registration rights. Prior to eBay withdrawing Respondent’s
auction efforts, there was a bid as high as $7,600 for one of the disputed
domain names. Thus, it is clear that
Respondent intended to sell the registration rights in the domain names for a
price well in excess of out-of-pocket costs associated with the domain
names. Therefore, the Panel finds that
Respondent registered and used the domain names in bad faith pursuant to Policy
¶ 4(b)(i). See Pocatello Idaho
Auditorium Dist. v. CES Marketing Group, Inc., FA 103186 (Nat. Arb. Forum
Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith
is some accompanying evidence that the domain name was registered because of
its value that is in some way dependent on the trademark of another, and then
an offer to sell it to the trademark owner or a competitor of the trademark
owner"); see also Dynojet
Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding
that the Respondent demonstrated bad faith when he requested monetary
compensation beyond out of pocket costs in exchange for the registered domain
name).
Furthermore,
Respondent registered a total of seven domain names that all relate to
Complainant’s 100year anniversary.
Since it is Respondent’s 100th year of operation under the
HARLEY-DAVIDSON mark, it is evident that Respondent was aware of Complainant’s
interests in said mark. In addition,
as previously mentioned, the evidence shows that Respondent intended to
capitalize off of the HARLEY-DAVIDSON mark’s associated goodwill. Therefore, the Panel finds Respondent’s
knowledge of Complainant’s interest in the HARLEY-DAVIDSON mark warrants a
finding of bad faith under Policy ¶ 4(a)(iii).
See Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000)
(finding that the fame of the YAHOO! mark negated any plausible explanation for
Respondent’s registration of the <yahooventures.com> domain name); see
also Samsonite Corp. v. Colony
Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of
bad faith includes actual or constructive knowledge of a commonly known mark at
the time of registration).
The
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <harleydavidsons100thanniversary.com>, <harleydavidson1903-2003.com>, <harleydavidson100years.com>, <harley-davidsons100thanniversary.com>, <harley-davidson100years.com>, <harleydavidsons100years.com> and <harley-davidson1903-2003.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: February 13, 2003
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