Polaris Industries Inc. v. ICS INC.
Claim Number: FA1301001481679
Complainant is Polaris Industries Inc. (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is ICS INC. (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <victory-motorcycles.com>, registered with PDR LTD. d/b/a PUBLICDOMAINREGISTRY.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 23, 2013; the National Arbitration Forum received payment on January 23, 2013.
On January 24, 2013, PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <victory-motorcycles.com> domain name is registered with PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the name. PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 25, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 14, 2013 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@victory-motorcycles.com. Also on January 25, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
On February 19, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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
Complainant contends as follows:
Complainant, Polaris Industries Inc., is a well-known manufacturer of recreational sport vehicles, including ATVs, snowmobiles, and motorcycles. Complainant’s products are distributed through more than 400 independent dealers throughout the United States, and are also distributed internationally through more than 750 dealers around the world.
Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the VICTORY MOTORCYCLES mark (Reg. No. 2,207,376, registered December 1, 1998). Complainant is also the owner of a trademark registration with the USPTO for the VICTORY mark (Reg. No. 2,209,340, registered December 8, 1998).
Respondent’s <victory-motorcycles.com> domain name is confusingly similar to Complainant’s VICTORY MOTORCYCLES mark as the sole distinction between Respondent’s domain name and Complainant’s mark is the addition of “.com” and a hyphen.
Respondent does not have any right or legitimate interest in the domain name <victory-motorcycles.com>.
Respondent is not commonly known by the at-issue domain name and has not received Complainant’s permission to use the mark.
Respondent is using the domain name to trick consumers into visiting its website and offering advertising links for profit.
Respondent’s domain name has been registered and used in bad faith.
Respondent’s offer to sell the domain name constitutes bad faith.
Respondent acted in bad faith when it diverted customers to Complainant’s competitors.
Respondent acted in bad faith by intentionally attempting to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the VICTORY marks.
Respondent had actual knowledge of Complainant’s rights in the VICTORY mark prior to the registration of the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns trademark registrations with the USPTO for the VICTORY and VICTORY MOTORCYCLES marks.
Respondent registered the at-issue domain name after Complainant acquired rights in the VICTORY and VICTORY MOTORCYCLES trademark.
Respondent is not affiliated with Complainant or authorized to use Complainant’s trademarks.
Respondent has listed the at-issue domain name “for sale.”
Respondent’s <victory-motorcycles.com> domain name addresses a website offering unauthorized click through links and advertising to Complainant and to third parties including some third parties that compete with Complainant.
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.
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of USPTO trademark registrations for the VICTORY and VICTORY MOTORCYCLES marks conclusively demonstrates that Complainant has rights in those marks for the purposes of Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO). Such is the case regardless of whether or not Respondent’s location (here Cayman Islands) is outside the jurisdiction of the domain name’s registrant. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Respondent’s <victory-motorcycles.com> domain name is, pursuant to Policy ¶ 4(a)(i), confusingly similar to Complainant’s VICTORY MOTORCYCLES mark. The difference between Respondent’s domain name and Complainant’s mark is the mere addition of “.com” and placement of a hyphen between the elements of the VICTORY MOTORCYCLES mark. The resulting slight variance between the at-issue domain name and Complainant’s trademark is irrelevant to Policy ¶ 4(a)(i) analysis. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond and as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in respect of the at-issue domain name, Complainant’s prima facie showing acts conclusively.
Respondent is using the at-issue domain name to trick consumers into visiting its website so that they may utilize the pay-per-click advertising links found there. Respondent’s intent in registering the <victory-motorcycles.com> domain name was thus to divert traffic away from Complainant and to itself. It goes without saying that unsuspecting consumers attempting to visit Complainant’s website may inadvertently visit Respondent’s site and while there may use one or more of Respondent’s pay-per-click links. Notably, Respondent’s website includes advertisements links related to both Complainant and third parties including but not limited to such links titled “VICTORY OFFICIAL SITE,” “USED MOTORCYCLE FOR SALE,” “MOTORCYCLE PARTS,” and others. Complainant is likely to be harmed and its mark tarnished when potential customers click on third-party ads. Respondent, in turn, profits from the pay-per-click advertising. Using the at-issue domain name in this manner is neither a bona fide offering of services or goods under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
The at-issue domain name was registered is being used in bad faith. As discussed below, multiple Policy ¶4(b) bad faith circumstance are present and there is additional non-Policy ¶4(b) evidence from which the Panel may independently conclude under Policy ¶4(a)(iii) that Respondent acted in bad faith in registering and using the at-issue domain name.
Respondent lists the <victory-motorcycles.com> domain name for sale on multiple third-party sites. Respondent’s general offer to sell the at-issue domain name constitutes bad faith under Policy ¶ 4(b)(i). See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).
As mentioned above, Respondent’s <victory-motorcycles.com> website is designed to divert customers from Complaint to Respondent. Respondent lists click-through links and advertisements for Complainant’s competitors on the <victory-motorcycles.com> website. Using the domain name in this manner is likely to disrupt Complainant’s business and therefore Respondent acts in bad faith pursuant to Policy ¶4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Furthermore, Respondent acted in bad faith under Policy ¶4(b)(iv) by intentionally attempting to attract Internet users searching for VICTORY or VICTORY MOTORCYCLE-branded products to its <victory-motorcycles.com> website for commercial gain. By design, Respondent created a likelihood of confusion between the at-issue domain name and Complainant’s VICTORY and VICTORY MOTORCYCLES trademarks and, as noted elsewhere herein, listed numerous pay-per-click links on the <victory-motorcycles.com> website including, but not limited to, “VICTORY OFFICIAL SITE,” “USED MOTORCYCLE FOR SALE,” “MOTORCYCLE PARTS,” and others. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Finally, Respondent had actual knowledge of Complainant’s rights in the VICTORY and VICTORY MOTORCYCLE marks prior to the registration of the at-issue domain name. Respondent’s actual knowledge of Complainant’s rights in the marks is inferred from the fact that Respondent’s domain name was registered to provide links relating to motorcycles. Registering and using an at-issue domain name with knowledge of a complainant’s rights in such domain name indicates bad faith registration and use pursuant to Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge” of Complainant's mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <victory-motorcycles.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: February 19, 2013
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