Polaris Industries Inc. v. SILENX CORPORATION
Claim Number: FA1710001752319
Complainant is Polaris Industries Inc. (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is SILENX CORPORATION (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <polarisadventures.com>, registered with eNom, LLC.
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.
Francine Siew Ling Tan as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 5, 2017; the Forum received payment on October 5, 2017.
On Oct 06, 2017, eNom, LLC confirmed by e-mail to the Forum that the <polarisadventures.com> domain name is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, 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 October 9, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 30, 2017 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 firstname.lastname@example.org. Also on October 9, 2017, 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.
A timely Response was received and determined to be complete on October 9, 2017.
On October 13, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Francine Siew Ling Tan 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant is a well-known manufacturer of recreational sport vehicles including ATVs, snowmobiles and motorcycles. It began selling snowmobiles since the 1950s and ATVs in 1984 under the brand POLARIS. Complainant is the registered owner of the trade mark POLARIS, used in connection with a variety of goods and services. Complainant has numerous registrations and applications for the POLARIS mark in the United States including Registration Serial Nos. 0767029, 1403054 and 2383434. Complainant operates its website at www.polaris.com, from which Internet users may see POLARIS products and obtain online brochures and online catalogues for POLARIS-branded products and accessories.
A significant amount of money has been invested by Complainant to promote its products under the POLARIS mark. Over the past 22 years, millions of dollars’ worth of POLARIS products have been sold. The POLARIS brand is also actively licensed in connection with a wide range of products. As a result of the extensive use and promotions, the POLARIS mark is famous and substantial goodwill has been built up in relation to Complainant’s business.
Respondent registered the disputed domain name on February 17, 2016. The domain name resolves to a page of sponsored links, on which advertisements and product offerings (e.g. “ATV dealers”, “Polaris ATV parts” and “Polaris parts”) are the same as those which Complainant sells and lists on its website. Respondent thereby diverts Internet traffic away from Complainant’s websites to third party websites, including those of Complainant’s competitors, an example of which is Honda (“Honda ATVs Parts Accessories”). Respondent does not use the disputed domain name in relation to a website with legitimate content. As of March 5, 2016 and October 7, 2016, the disputed domain name pointed to a site with no content other than a statement that the disputed domain name may be for sale. Respondent is thus not using the disputed domain name for legitimate noncommercial or fair use.
Respondent employs Google AdSense for Domains, a domain parking service, to place advertisements on its website. This is not the first instance Respondent has registered a domain name containing a trademark owner’s mark; it has a pattern of purchasing domain names that include the brands of third parties to attract consumers to its sites.
Respondent has no statutory or common law trademark rights or any other right or legitimate interest in the disputed domain name. Complainant has never authorized or licensed Respondent to use the POLARIS trade mark or any derivative mark for any purpose. The disputed domain name is confusingly similar to the POLARIS trade mark. The addition of the word “adventures” in the domain name merely adds to the likelihood of confusion. The disputed domain name was registered primarily for the purpose of commercial gain.
Use of the disputed domain name to trick consumers into visiting Respondent’s website which offers sponsored links is not a bona fide offering of goods or services under the Policy. Respondent’s registration of the disputed domain name was in bad faith since it knew of Complainant and its POLARIS marks and registered the domain name to prevent Complainant from doing so. Respondent’s website at www.miraipower.com also reflects that Respondent was aware of Complainant and its POLARIS mark way back in 2010. There has therefore been a pattern of conduct on Respondent’s part.
The registration and use of the disputed domain name are also disruptive to Complainant’s business as the goods and services of Complainant’s competitors are offered on Respondent’s sponsored links site.
Respondent filed a Response prepared by a Mr Peter Kim (“Kim”) on its behalf. Kim states the disputed domain name was registered for an astrophotography outreach adventure workshop Kim and his friends had been working on, but still in the conceptual stage. The domain was registered as a reference to the Celestial North Star, named Polaris, to which astrophotographers must align their equipment. Complainant, therefore, does not have exclusive rights to the word “POLARIS” as it relates to astronomy.
The <polarisadventures.com> domain name resolves to a generic space filler website for which Respondent has not and will not receive profit. Respondent did not choose the links displayed on the parked page, and once the lock is lifted, Respondent will change the resolving website to a blank, under construction page.
(a) The disputed domain name is confusingly similar to the trade mark POLARIS in which Complainant has rights.
(b) Respondent has no legitimate rights or interests in respect of the disputed domain name.
(c) The disputed domain name has been registered and is being used 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.
Complainant has established it has rights in the POLARIS mark. The only difference between the disputed domain name and Complainant’s mark lies in the addition of the generic/descriptive word “adventures” and the top-level domain “.com”. The “.com” element is a technical requirement of domain names and does not have any impact on the issue of whether the disputed domain name is identical or confusingly similar to Complainant’s POLARIS mark. It is a well-established principle that the addition of a generic or descriptive term is insufficient to differentiate a domain name from a complainant’s trade mark for the purposes of Policy ¶ 4(a)(i). (See, for example, Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016. See also ¶1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition.)
The Panel therefore finds that the disputed domain name is identical to Complainant’s POLARIS mark.
Policy ¶ 4(a)(i) has therefore been established.
The Panel finds that a prima facie case has indeed been established by Complainant, that Respondent lacks rights or legitimate interests in the disputed domain name. There is no evidence that Respondent is known by the disputed domain name and Complainant did not license or permit Respondent to use its POLARIS trade mark in a domain name or as a trade mark. The burden therefore shifts to Respondent to establish, with evidence, that it has rights or legitimate interests in respect of the disputed domain name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum, August 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006).
Paragraph 4(c) of the Policy provides that a respondent may demonstrate it has rights or legitimate interests in a domain name in dispute by showing any of the following circumstances:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
Respondent made a number of claims in its Response but provided no evidence whatsoever in support; in particular there were no “demonstrable preparations to use” the domain name in connection with a bona fide offering of goods or services. Respondent brought no supporting affidavit or evidence, whether of its own or from Kim’s “friends”, whom Kim claims to have been working with on the “astrophotography outreach adventure workshop”. Respondent failed to show rights or legitimate interests in the disputed domain name also by its failure to use the name for a bona fide offering of goods or services or legitimate noncommercial or fair use. Respondent’s domain name resolves to a page with third-party links, some of which link to competitors of Complainant’s business. Such use does not constitute a bona fide offering of goods or services or a noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015).
Notwithstanding the fact that the domain name in this case is parked, Respondent is responsible for the content appearing on the resolving website. See Park ‘N Fly Service Corporation v Kevin Lanzillo, FA 1554365 (Forum May 13, 2014) in which it was held that ultimately “the Registrant [is] responsible for the content of the material appearing on the webpage associated with the domain name in [a] dispute”). The sponsored links on the webpage to which the disputed domain name resolves include links to the websites of Complainant’s competitors. This cannot constitute a “legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers”.
The Panel therefore concludes that Respondent lacks rights and legitimate interests in the disputed domain name.
Policy ¶ 4(a)(ii) has therefore been established.
Paragraph 4(b) of the Policy provides that the following circumstances, if found to be present, “shall be evidence of the registration and the use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Panel finds that the use of the disputed domain name to resolve to a page of third-party links which include links to Complainant’s competitors indicates bad faith registration and use, per Policy ¶¶ 4(b)(iii) and (iv). In the case of Lenovo (Beijing) Limited Corporation China v. jeonggon seo, FA1411001591638 (Forum Jan. 16, 2015), it was held that where the complainant operated in the computer industry and the respondent used the disputed domain name to offer competing computer related links, the respondent was disrupting the complainant’s business offerings in violation of Policy ¶ 4(b)(iii)). In Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015), it was held that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)).
Respondent did not disclaim any knowledge of Complainant and of its POLARIS trade mark, whereas it appears that Respondent had actual knowledge of Complainant's mark and rights prior to the registration of the disputed domain name.
For the reasons given above and in these circumstances where Respondent failed to bring any supporting or corroborating evidence, whereas the POLARIS trade mark has a strong reputation in the U.S. where Respondent is located, the Panel finds that Respondent registered and has used the disputed domain name in bad faith.
Policy ¶ 4(a)(iii) has therefore been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <polarisadventures.com> domain name be TRANSFERRED from Respondent to Complainant.
Francine Siew Ling Tan, Panelist
Dated: October 16, 2017
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