Indian Motorcycle International, LLC v. Robert Stankowicz
Claim Number: FA1312001534189
Complainant is Indian Motorcycle International, LLC (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is Robert Stankowicz (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <indianmotorcycleschicago.com>, registered with GoDaddy.com, LLC.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 11, 2013; the National Arbitration Forum received payment on December 11, 2013.
On December 12, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <indianmotorcycleschicago.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 December 12, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 2, 2014 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@indianmotorcycleschicago.com. Also on December 12, 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 January 7, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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
a. Complainant is the owner of the famous INDIAN brand in connection with motorcycles and related accessories and promotional items therefore. Originally launched in 1901 and now America’s oldest motorcycle brand, the INDIAN motorcycle brand has been heavily promoted, immensely successful, and a valuable asset.
b. Complainant holds registrations with the United States Patent and Trademark Office (“USPTO”) for a number of trademarks, including INDIAN (e.g., Reg. No. 921,459 registered October 5, 1971) and INDIAN MOTORCYCLE (e.g., Reg. No. 2,927,365 registered February 22, 2005).
c. Respondent’s <indianmotorcycleschicago.com> domain name is confusingly similar to Complainant’s INDIAN MOTORCYCLE mark.
d. Respondent, an individual, is not commonly known by the name INDIAN MOTORCYCLE.
e. The WHOIS report shows that Respondent is “Robert Stankowicz.”
f. Respondent has no statutory or common law trademark rights in the INDIAN MOTORCYCLE mark, and has no license to use the mark in connection with the sale of any products or in the disputed domain name.
g. Respondent is using the disputed domain name to attract consumers seeking Complainant to a commercial website that appears to be an authorized INDIAN motorcycle dealer, but is not. Respondent’s website markets and sells competing third-party motorcycle products, including Buell, Ducati, Honda, Harkey-Davidson, Kawasaki, Suzuki, and Yamaha motorcycles.
h. Because Respondent is not an authorized dealer, he also competes against Complainant with respect to the sale of INDIAN motorcycles.
i. Respondent’s website serves to confuse consumers into thinking that Respondent is an authorized dealer of Complainant’s products, when in fact that is not the case.
j. Respondent’s website associated with the disputed domain name is aimed at taking customers away from Complainant, thereby disrupting Complainant’s business and diminishing its sales.
k. Respondent’s website mimics Complainant’s site by using Complainant’s logos and by including content that provides the appearance that Respondent is an authorized dealer of Complainant’s products, when in fact it is not. Respondent’s conduct causes consumer confusion by passing itself off as an authorized dealer of Complainant in an attempt to profit from the sale of products on its site.
l. Respondent knew of Complainant and its marks at the time the <indianmotorcycleschicago.com> domain name was registered.
m. Respondent actually knew of the INDIAN brand at the time he registered the domain name based on the since-terminated agreement between Complainant’s predecessor-in-interest and Motorcycle Remarketing Company, of which Respondent is an agent.
n. Respondent registered the INDIAN domain name on February 16, 2011.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the INDIAN and INDIAN MOTORCYCLE marks. Respondent’s domain name is confusingly similar to Complainant’s INDIAN MOTORCYCLE mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <indianmotorcycleschicago.com> domain name, and that Respondent registered and uses the domain name in bad faith.
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.”).
Complainant is the owner of the INDIAN brand in connection with motorcycles and related accessories and promotional items. Complainant states that it is the oldest motorcycle brand in the United States, having been launched in 1901. Complainant presents evidence of its registration of a number of trademarks with the USPTO, including the INDIAN mark (e.g., Reg. No. 921,459 registered October 5, 1971) and INDIAN MOTORCYCLE mark (e.g., Reg. No. 2,927,365 registered February 22, 2005). Complainant’s USPTO registrations confer rights in the INDIAN and INDIAN MOTORCYCLE marks for the purposes of Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Complainant argues that Respondent’s <indianmotorcycleschicago.com> domain name is confusingly similar to Complainant’s INDIAN MOTORCYCLE mark. The additions of the geographically-descriptive term “chicago” and the generic top-level domain (“gTLD”) “.com” do not serve to distinguish the domain name from Complainant’s mark. The disputed domain name also adds a single letter “s” to the mark, while also removing the space between words. Removal of spaces and affixation of gTLDs do not affect comparisons under Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Moreover, adding single letters and geographic terms does not create a unique, non-infringing domain name. See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”). Accordingly, Respondent’s <indianmotorcycleschicago.com> domain name is confusingly similar to Complainant’s INDIAN MOTORCYCLE mark within the meaning of Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends that Respondent, an individual, is not commonly known by the name INDIAN MOTORCYCLE. Complainant notes that the WHOIS report shows that Respondent is “Robert Stankowicz.” Complainant asserts that Respondent has no statutory or common law trademark rights in the INDIAN MOTORCYCLE mark, and has no license to use the mark in connection with the sale of any products or in the disputed domain name. In light of Complainant’s contentions, coupled with the fact that Respondent has failed to present any evidence to refute these contentions, the Panel concludes that Respondent is not commonly known by the <indianmotorcycleschicago.com> domain name pursuant to Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
Complainant next contends that Respondent’s use of the disputed domain name to feature Complainant’s trademark and content related to third-party competing products does not constitute 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). Complainant asserts that Respondent is using the <indianmotorcycleschicago.com> domain name to attract consumers seeking Complainant to a commercial website that appears to be an authorized INDIAN motorcycle dealer, but is not. Complainant claims that Respondent’s website markets and sells competing third-party motorcycle products, including Buell, Ducati, Honda, Harkey-Davidson, Kawasaki, Suzuki, and Yamaha motorcycles. Complainant reasons that because Respondent is not an authorized dealer, it also competes against Complainant with respect to the sale of INDIAN motorcycles. The panel in Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) held that a respondent’s capitalization on the well-known marks of a complainant by attracting Internet users to the respondent’s disputed domain names, where the respondent sold competing products of the complainant, was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). The Panel similarly holds that Respondent’s use of the <indianmotorcycleschicago.com> domain name to sell competing products constitutes neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Complainant further contends that Respondent’s resolving website serves to confuse consumers into thinking that Respondent is an authorized dealer of Complainant’s products, when in fact that is not the case. Complainant argues that Respondent is trying to pass himself off as Complainant online by using a contact page that gives the appearance that consumers will be contacting Complainant, based on Respondent’s use of an “Indian Motorcycles Contact form.” Complainant also notes that Respondent set up a Facebook page for its business, which was subsequently removed by Facebook administrators for violating Complainant’s trademark rights. Because the Panel agrees that Respondent is using the <indianmotorcycleschicago.com> domain name and his resolving website in an improper attempt to pass itself off as Complainant, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name on this basis. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent has acted in bad faith pursuant to Policy ¶ 4(b)(iii) through its registration and use of the disputed domain name. Complainant claims that Respondent’s website associated with the disputed domain name is aimed at taking customers away from Complainant, thereby disrupting Complainant’s business and diminishing its sales. Respondent’s website appears to offer for sale both Complainant’s products and those of its competitors. The panel in DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) found evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where the respondent was appropriating the complainant’s mark to divert complainant’s customers to respondent’s competing business. Respondent’s operation of a competing business at the <indianmotorcycleschicago.com> domain name evidences bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
Complainant also alleges that Respondent has intentionally attempted to attract Internet users to its commercial website by using a domain name that is confusingly similar to the INDIAN MOTORCYCLE mark, in violation of Policy ¶ 4(b)(iv). Complainant argues that Respondent has attempted to create confusion with Complainant by operating a website that mimics Complainant’s site through using Complainant’s logos and content that provides the appearance that Respondent is an authorized dealer of Complainant’s products, when in fact Respondent is not. Complainant contends that Respondent has acted in bad faith by attempting to pass himself off as an authorized dealer of Complainant in an attempt to profit from the sale of products on its site. Because the Panel agrees with Complainant’s characterization of Respondent’s conduct, the Panel finds that Respondent registered and uses the <indianmotorcycleschicago.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
Finally, Complainant alleges that Respondent knew of Complainant and its marks at the time the <indianmotorcycleschicago.com> domain name was registered. Complainant’s trademark rights long predate Respondent’s registration of the disputed domain name. Complainant adds that Respondent had actual knowledge of the INDIAN brand at the time the disputed domain was registered based on the since-terminated agreement between Complainant’s predecessor-in-interest and Motorcycle Remarketing Company, of which Respondent is an agent. On this record, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also 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 had "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <indianmotorcycleschicago.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
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