DECISION

 

Indian Motorcycle International, LLC v. Male Male

Claim Number: FA2501002134222

PARTIES

Complainant is Indian Motorcycle International, LLC ("Complainant"), represented by Lindsay M.R. Jones of Merchant & Gould, P.C., Minnesota, USA. Respondent is Male Male ("Respondent"), Alaska, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <us-indianmotorcycle.com>, registered with Gname.com Pte. Ltd.

 

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.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 8, 2025; Forum received payment on January 8, 2025.

 

On January 9, 2025, Gname.com Pte. Ltd. confirmed by e-mail to Forum that the <us-indianmotorcycle.com> domain name is registered with Gname.com Pte. Ltd. and that Respondent is the current registrant of the name. Gname.com Pte. Ltd. has verified that Respondent is bound by the Gname.com Pte. Ltd. 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 9, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 30, 2025 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@us-indianmotorcycle.com. Also on January 9, 2025, 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, Forum transmitted to the parties a Notification of Respondent Default.

 

On January 31, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco, as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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

Complainant contends in part as follows:

 

Complainant Indian Motorcycle International, LLC is a manufacturer and distributor of premium, American-made motorcycles and is among the largest and most well-known motorcycle manufacturers and distributors in the world. The INDIAN MOTORCYCLE brand is America's oldest motorcycle brand first used in 1901,

 

Complainant and its predecessors in interest have used the INDIAN MOTORCYCLE mark since at least as early as the 1950's. Complainant continues to use the INDIAN MOTORCYCLE marks in connection with the sale of motorcycles, accessories, and component parts therefor, among other goods and services, including, specifically, clothing, goods and motorcycle riding accessories.

 

Complainant's INDIAN and INDIAN MOTORCYCLE registrations and use of the same marks at common law serve as evidence of Complainant's ownership of the marks and exclusive right to use the marks in connection with numerous goods and services.

 

Respondent has no statutory or common law trademark rights or any other right or legitimate interest in or to Complainant's INDIAN MOTORCYCLE mark or in the at-issue domain name. Complainant has not authorized or licensed Respondent to use the INDIAN MOTORCYCLE or any derivative mark for any purpose. Complainant registered its INDIAN MOTORCYCLE mark long before Respondent registered the <us-indianmotorcycle.com> domain name.

 

Respondent's at-issue domain name is confusingly similar to a trademark in which Complainant has rights. The at-issue domain name contains the entirety of Complainant's INDIAN MOTORCYCLE mark – the terms INDIAN and MOTORCYCLE and is confusingly similar to INDIAN MOTORCYCLE pursuant to Policy ¶ 4(a)(i) as the domain name is identical in root part to Complainant's INDIAN MOTORCYCLE mark and fully incorporates the distinctive INDIAN element of such mark. The website at <us-indianmotorcycle.com> uses Complainant's precise logo marks and the goods listed on the website are identical to the goods offered by Complainant on its genuine website throughout the world. The goods offered in connection with Respondent's website appear to be inauthentic goods that prominently, and unlawfully, display Complainant's INDIAN MOTORCYCLE mark. Respondent's addition of the top-level domain ".com" is immaterial under the Policy.

 

Respondent lacks rights and legitimate interests in respect of the at-issue domain name. The registration of a domain name for the purpose of diverting online traffic premised on consumer confusion is not a bona fide offering of goods pursuant to Policy ¶ 4(c)(i). Respondent also has no legitimate right to the domain name pursuant to Policy ¶ 4(c)(ii) in that Respondent has not received permission to use the INDIAN MOTORCYCLE mark. Furthermore, Respondent does not use Complainant's mark for legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) because Respondent uses <us-indianmotorcycle.com> to perpetuate a scheme that involves deceiving consumers into believing its website offers legitimate INDIAN MOTORCYCLE goods when that is not the case.

 

Respondent registered and used the at-issue domain name in bad faith. Respondent's registration of <us-indianmotorcycle.com> with the actual knowledge of Complainant's trademark rights in that name shows bad faith pursuant to Policy ¶ 4(b)(ii). Because the domain name acts to divert Complainant's customers to Respondent's website, Respondent has also acted in bad faith pursuant to Policy ¶ 4(b)(iii) and Respondent's bad faith intent pursuant to Policy ¶ 4(b)(iv) can be inferred from Respondent's choosing to use a designation that it knows to be similar to another's registered trademark in order to attract consumers to its website. Bad faith is shown because Respondent registered the at-issue domain name in order to trade on Complainant's goodwill associated with its INDIAN MOTORCYCLE mark by creating a likelihood of confusion as to the source of the website. Consumers who encounter the site are likely to reasonably, though incorrectly, believe that the goods offered by Respondent are authentic INDIAN MOTORCYCLE brand goods offered by Complainant when in actuality the goods are likely counterfeit goods offered by an unrelated third party. As a result, the registration and use of the domain name is nothing more than an attempt to profit from the goodwill and fame of Complainant's INDIAN MOTORCYCLE mark by using a confusingly similar domain name to attract Internet users to Respondent's commercial website.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has trademark rights in the INDIAN MOTORCYCLE mark.

 

Respondent registered the at-issue domain name after Complainant acquired rights in INDIAN MOTORCYCLE.

 

Respondent uses the at-issue domain name to mimic Complainant's genuine website and offer unauthorized products under Complainant's INDIAN MOTORCYCLE trademark.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint").

 

Identical and/or Confusingly Similar

The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.

 

Complainant demonstrates rights in the INDIAN MOTORCYCLE mark per Policy ¶ 4(a)(i) through its registration of such mark with the USPTO. See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum  Dec. 24, 2018) ("Complainant's ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant's rights in such mark for the purposes of Policy ¶ 4(a)(i).").

 

Respondent's <us-indianmotorcycle.com> domain name contains Complainant's INDIAN MOTORCYCLE trademark less its domain name impermissible space, prefixed by the geographic term "us" (United States) and an insignificant hyphen, with all followed by the ".com" top-level domain name. The differences between Complainant's trademark and Respondent's domain name are insufficient to distinguish one from the other for the purposes of the Policy. Therefore, the Panel finds that Respondent's <us-indianmotorcycle.com> domain name is confusingly similar to Complainant's INDIAN MOTORCYCLE trademark under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum  Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)).

 

Rights or Legitimate Interests

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 (Forum  Aug. 18, 2006). Since Respondent failed to respond, Complainant's prima facie showing acts conclusively.

 

Respondent lacks both rights and legitimate interests in respect of the <us-indianmotorcycle.com> 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 legitimate interests in respect of the at‑issue domain name. See Navistar International Corporation v. N Rahmany, FA 1620789 (Forum  Jun. 8, 2015) (finding that the respondent was not commonly known by the at-issue domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark into any domain name).

 

The WHOIS information for the at-issue domain name identifies the registrant of <us-indianmotorcycle.com> as "Male Male" and the record before the Panel contains no evidence that tends to show that Respondent is commonly known by <us-indianmotorcycle.com>. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum  July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).

 

Respondent attempts to pass itself off as Complainant. Respondent uses the at-issue domain name to address a website that mimics multiple aspects of Complainant's official website while offering likely counterfeit versions of Complainant's products for sale. Respondent's <us-indianmotorcycle.com> website thus deceives consumers into falsely believing that Respondent is somehow affiliated with Complainant. Respondent's use of the <us-indianmotorcycle.com> domain name in this manner constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a noncommercial or fair use under Policy ¶ 4(c)(iii). See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum  July 15, 2017) (refusing to find rights and legitimate interests in a domain name on the part of a respondent when the disputed domain name "resolves to a website that Respondent has designed to mimic Complainant's own in an attempt to pass itself off as Complainant")

 

Given the forgoing, Respondent lacks rights and lacks legitimate interests in respect of <us-indianmotorcycle.com>.

 

Registration and Use in Bad Faith

As discussed below without being exhaustive, there is evidence from which the Panel may conclude that Respondent acted in bad faith pursuant to the Policy.

 

As mentioned above, Respondent uses the at-issue domain name to address a website mimicking Complainant's genuine website. Respondent's use of <us-indianmotorcycle.com> to attempt to pass itself off as being related to Complainant is disruptive to Complainant's business and is intent on attracting internet users looking for Complainant to Respondent's website so that Respondent may capitalize on the confusion Respondent created between its <us-indianmotorcycle.com> domain name and Complainant's INDIAN MOTORCYCLE trademark. Respondent's use of <us-indianmotorcycle.com> demonstrates Respondent's bad faith registration and use under Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv) . See Allianz of Am. Corp. v. Bond, FA 680624 (Forum  June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting internet users searching for the complainant to its own website and likely profiting); see also, Guess? IP Holding L.P. and Guess?, Inc. v. Linan / linanbangongshi and hu sugor / sugorguoguo, FA 1587466 (Forum  Dec. 13, 2014) ("The Panel finds that Respondent's use of the disputed domain names to compete with Complainant by offering counterfeit products and thereby misdirecting Internet users constitutes disruption to Complainant's business which demonstrates bad faith registration and use under Policy ¶ 4(b)(iii)."); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA 1612750 (Forum  May 13, 2015) ("The Panel agrees that Respondent's use of the website to display products similar to Complainant's, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv)."); see also, ShipCarsNow, Inc. v. Wet Web Design LLC, FA 1601260 (Forum  Feb. 26, 2015) ("Respondent's use of the domain name to sell competing services shows that Respondent is attempting to commercially benefit from a likelihood of confusion. Therefore the Panel finds that a likelihood of confusion exists, that Respondent is attempting to commercially benefit from Complainant's mark, and that Complainant has rights that predate any rights of the Respondent, all of which constitutes bad faith under Policy ¶ 4(b)(iv).")

 

Moreover, Respondent registered the <us-indianmotorcycle.com> domain name with actual knowledge of Complainant's trademark rights in INDIAN MOTORCYCLE. Respondent's prior knowledge of Complainant's rights is apparent from the notoriety of Complainant's trademark and from Respondent's use of the domain name to pose as Complainant using the at-issue domain name and its related website. Respondent's registration of <us-indianmotorcycle.com> with knowledge of Complainant's trademark rights in INDIAN MOTORCYCLE further indicates Respondent's bad faith pursuant to Policy ¶ 4(a)(iii). See Lemon Inc. v. Sumer Singh, FA 2110519 (Forum  September 5, 2024 ("registration of a disputed domain name with actual knowledge of another's trademark rights is sufficient to establish bad faith, and can be shown by the notoriety of the mark and the use the Respondent makes of the disputed domain name"); see also, Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (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); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum  Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <us-indianmotorcycle.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Paul M. DeCicco, Panelist

Dated: February 1, 2025