National Arbitration Forum

 

DECISION

 

H-D Michigan, Inc. v. Chris and Luann Kunze-Harmon d/b/a Panospheric

Claim Number: FA0608000777789

 

PARTIES

Complainant is H-D Michigan, Inc. (“Complainant”), represented by David M. Kelly, of Finnegan, Henderson, Farabow, Garrett & Dunner L.L.P., 901 New York Avenue NW, Washington, DC 20001.  Respondent is Chris and Luann Kunze-Harmon d/b/a Panospheric (“Respondent”), 363 Thompson Creek Rd., Dillard, OR 97432.

 

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <360harleydavidson.com>, <360harley-davidson.com>, <harleydavidson360.com> and <harley-davidson360.com>, registered with Go Daddy Software, Inc.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Judge Irving H. Perluss (Retired) is the Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 15, 2006; the National Arbitration Forum received a hard copy of the Complaint on August 16, 2006.

 

On August 15, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <360harleydavidson.com>, <360harley-davidson.com>, <harleydavidson360.com> and <harley-davidson360.com> domain names are registered with Go Daddy Software, Inc. and that the Respondent is the current registrant of the name.  Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 August 17, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 6, 2006 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@360harleydavidson.com, postmaster@360harley-davidson.com, postmaster@harleydavidson360.com and postmater@harley-davidson360.com by e-mail.

 

A timely Response was received and determined to be incomplete on September 6, 2006 because Respondent failed ot submit a hardcopy as required by the Rules.

 

An Additional Submission was received from Complainant and determined to be timely and complete on September 11, 2006.

 

On September 14, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Irving H. Perluss (Retired) as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

INTRODUCTION

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.

 

PRELIMINARY PROCEDURAL ISSUE

Although Respondent’s electronic submission was received in a timely manner by the National Arbitration Forum, Respondent failed to submit a hard copy of its Response.  Accordingly, the Panel has sole discretion as to whether to accept the Response as well as the amount of weight given to it.  See Telstra Corp. v. Chu, D2000-0423 (WIPO June 21, 2000).  In J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003), the panel found that where the respondent submitted a timely response electronically, but failed to submit a hard copy of the response on time, “[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that the submission should be allowed and given due weight.”  The panel in Strum v. Nordic Net Exch. AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002), suggested leniency in situations involving procedural deficiencies, stating that, “[R]uling a Response inadmissible because of formal deficiencies would be an extreme remedy not consistent with the basic principles of due process…”

 

The alleged deficient Response will be accepted and considered.

 

PRELIMINARY SUBSTANTIVE ISSUE

Respondent here has specifically agreed to the cancellations of the disputed domain names.  Moreover, it does not deny and does admit the following:

 

1.      That it registered the disputed domain names on November 16, 2005 with actual knowledge of H-D’s rights in its HARLEY and HARLEY-DAVIDSON marks, and without H-D’s authorization.  (Complaint ¶ 7b, 22; Response ¶ 2.)

2.      That the disputed domain names are confusingly similar to Complainant’s HARLEY and HARLEY-DAVIDSON marks.

3.      It admits that if offered to sell the disputed domain names directly to Complainant for more than its out-of-pocket expenses (specifically for $1,500 each) on two occasions, and that it also offered to sell them for $1,500 each on its VRTECHDOMAINS.COM website.  (Complaint ¶ 24-25; Response ¶ 15, 17, Exhibits B and C.)

4.      It admits that it has registered numerous additional domain names that incorporate numerous third-party trademarks, and that it also offers to sell those trademark-related domain names on its VRTECHDOMAINS.COM website.  (Complaint ¶ 26; Response ¶ 25.)

 

Thus, Complainant, because of the evidence presented and Respondent’s admissions, has established a prima facie case entitling it to the disputed domain names because of confusing similarity, legitimate interest and rights, and registration and use in bad faith.  It follows that, under the circumstances here presented, it is not necessary to have an elaborate discussion of the Policy formulae.

 

Although Respondent has indicated that it is willing to “cancel” the disputed domain names and not “transfer” them, nevertheless the Panelist may order transfer.  In State Farm Mutual Auto. Ins. Co. v. Malain, FA 705262 (Nat. Arb. Forum June 19, 2006), the panel found that the respondent’s agreement to cancel the domain name was tantamount to an agreement to transfer the disputed domain name to the complainant.  Based on finding confusing similarity between the disputed domain name and the complainant’s mark, the panel felt that transfer of the domain name was justified instead of canceling the domain name.[1] 

 

In any event, the Panelist believes that cancellation might lead to re-registration by a third party and, in his discretion, therefore, finds that “transfer” rather than “cancellation” is the appropriate remedy.

 

DECISION

The Panel concludes that relief by transfer shall be GRANTED.

 

Accordingly, it is Ordered that the <360harleydavidson.com>, <360harley-davidson.com>, <harleydavidson360.com> and <harley-davidson360.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Judge Irving H. Perluss (Retired), Panelist
Dated: September 28, 2006

 

 

 

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