H-D Michigan, Inc. v. Chip Kastelnik
Claim Number: FA0601000622012
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 Chip Kastelnik (“Respondent”), 10812 Penara St., Diego, CA 92126.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <sandiegohd.com>, registered with Go Daddy Software, Inc.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 9, 2006; the National Arbitration Forum received a hard copy of the Complaint on January 10, 2006.
On January 09, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <sandiegohd.com> domain name is registered with Go Daddy Software, Inc. and that 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 January 11, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 31, 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@sandiegohd.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 6, 2006 , pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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." 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 makes the following assertions:
1. Respondent’s <sandiegohd.com> domain name is confusingly similar to Complainant’s HD mark.
2. Respondent does not have any rights or legitimate interests in the <sandiegohd.com> domain name.
3. Respondent registered and used the <sandiegohd.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, H-D Michigan, Inc., owns several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the HD mark. Complainant first registered the HD mark with the USPTO on February 8, 2000 (Reg. No. 2,315,877).
Respondent registered the <sandiegohd.com>
domain name on June 10, 2004.
Respondent is using the disputed domain name for a commercial website
providing an online marketplace for motorcycles and motorcycle parts, promoting
motorcycles manufactured by Complainant’s competitors, and displaying
adult-oriented material.
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."
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.”).
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.
The Panel finds
that Complainant’s registrations of its HD mark with the USPTO sufficiently
establish Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA
198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark
registrations establish Complainant's rights in the BLIZZARD mark.”); see also Innomed Techs., Inc. v. DRP Servs.,
FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark
with the USPTO establishes Complainant's rights in the mark.”).
The <sandiegohd.com> domain name combines Complainant’s HD mark in its entirety with the geographic term “San Diego.” The addition of a geographic term to Complainant’s registered mark renders the disputed domain name confusingly similar to the mark. See Hewlett-Packard Co. v. Collazo, FA 144628 (Nat. Arb. Forum Mar. 5, 2003) (“Respondent’s <hpcanada.com> domain name is confusingly similar to Complainant’s HP mark. Respondent’s domain name contains Complainant’s HP mark in its entirety (even though the mark is admittedly short), and only deviates by the addition of a non-distinctive geographic term.”); see also Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding that the domain name, <walmartcanada.com> is confusingly similar to the complainant’s famous mark).
The Panel finds that Policy ¶ 4(a)(i) has been
satisfied.
Complainant possesses the initial burden under Policy ¶ 4(a)(ii) to establish that Respondent does not have rights or legitimate interests in the disputed domain name. In this instance, once Complainant demonstrates a prima facie case, the burden shifts to Respondent to prove that it does have rights or legitimate interests in the disputed domain name. However, Respondent has failed to respond to the Complaint. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) ( “Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. 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 finds that Complainant has presented a prima facie case, and will consider whether the evaluation of the evidence on record demonstrates that Respondent does have rights or legitimate interests under Policy ¶ 4(c).
The Panel finds that there is no evidence in the record, including Respondent’s WHOIS information, suggesting that Respondent is commonly known by the <sandiegohd.com> domain name. Thus, the Panel finds that Respondent has not established rights or legitimate interets pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Furthermore, the evidence in the record demonstrates that Respondent is using the confusingly similar <sandiegohd.com> domain name for a commercial website that serves as an online marketplace for motorcycles, including the motorcycles manufactured by Complainant’s competitors. Such commercial use of Complainant’s mark does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i). See Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (finding no rights or legitimate interests in the <pitneybowe.com> domain name where the respondent purports to resell original Pitney Bowes equipment on its website, as well as goods of other competitors of the complainant); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not bona fide use). Additionally, Respondent’s use of the HD mark in the disputed domain name to operate a website displaying adult-oriented material tarnishes Complainant’s mark and does not constitute a legitimate noncommercial or fair use in accord with Policy ¶ 4(c)(iii). See Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”); see also Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding that the respondent’s use of its domain name to link unsuspecting Internet traffic to an adult orientated website, containing images of scantily clad women in provocative poses, did not constitute a connection with a bona fide offering of goods or services or a noncommercial or fair use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s use of Complainant’s HD mark in the <sandiegohd.com>
domain name to promote competing motorcycles evidences Respondent’s use of the
disputed domain name for the purpose of disrupting Complainant’s business. Such use by Respondent constitutes bad faith
under Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant's mark to divert
Internet users to a competitor's website. It is a reasonable inference that
Respondent's purpose of registration and use was to either disrupt or create
confusion for Complainant's business in bad faith pursuant to Policy ¶¶
4(b)(iii) [and] (iv).”); see also S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad
faith by attracting Internet users to a website that competes with the
complainant’s business).
Moreover, Respondent uses Complainant’s mark in bad faith pursuant to Policy ¶ 4(b)(iv), because Respondent is using Complainant’s mark to attract Internet users to a website that offers Complainant’s products and the products of Complainant’s competitors. This is evidence that Respondent is attempting to profit by creating a likelihood of confusion between Complainant’s mark and Respondent’s competing website. See Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) because the respondent admittedly used the complainant’s well-known mark to attract users to the respondent's website); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sandiegohd.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: February 16, 2006
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