The Complainant is H-D Michigan, Inc., Michigan, United States of America, represented by Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, United States of America.
The Respondent is Metal Horse Motorcycles, C/O Dave Brims, Kent, United Kingdom of Great Britain and Northern Ireland.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 3, 2003. On October 6, 2003, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain names at issue. On October 8 Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 8, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was October 28, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 30, 2003.
The Center appointed Knud Wallberg, M. Scott Donahey and James McNeish Innes as panelists in this matter on November 17, 2003. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Since 1903, Harley-Davidson has been engaged in the manufacture, advertising, and sale of motorcycles under the HARLEY-DAVIDSON trademark and trade name. In addition, Harley-Davidson has offered for decades motorcycle parts, motorcycle accessories, motorcycle clothing, motorcycle services including motorcycle rental and tour services, and a wide variety of other products and services under the HARLEY-DAVIDSON mark and trade name. These other products and services include clothing, sunglasses, toys, books, calendars, posters, jewelry, novelties, and restaurant and bar services. Harley-Davidson is celebrating its 100th anniversary this year.
Harley-Davidson markets its motorcycles (both new and used), motorcycle parts and accessories, and other products including clothing globally through a network of authorized dealers. Harley-Davidson has more than 1,500 authorized dealers throughout the world.
Harley-Davidson has long had a major presence in the U.K., having sold motorcycles under the Harley-Davidson Marks in the U.K. since 1927. Harley-Davidson formed its U.K. affiliate – Harley-Davidson UK – in 1990, and currently has approximately 40authorized dealers in the U.K.
Harley-Davidson over the years has advertised and promoted its products and services under the Harley-Davidson Marks. Harley-Davidson also publishes every year its MOTORCLOTHESTM Apparel, Accessories, Gifts & Collectibles Catalogs ("MOTORCLOTHESTM & Collectibles Catalog") featuring a wide variety of clothing items, clothing accessories, collectibles, and other memorabilia, and many other related products of interest to enthusiasts of Harley-Davidson products.
In addition, Harley-Davidson publishes every year its Genuine Motor Accessories and Genuine Motor Parts Catalogs ("Parts & Accessories Catalog") featuring a wide variety of motorcycle parts and related products.
Harley-Davidson also extensively promotes its products and services under the Harley-Davidson Marks on the Internet. Harley-Davidson’s main website is located at the domain name <harley-davidson.com>. Since 1996, Harley-Davidson has used its website as a worldwide information and distribution channel for its business. Harley-Davidson’s website features special versions for different countries, including the U.S. and the U.K. Harley-Davidson’s website receives tens of millions of hits each month.
In addition to offering new motorcycles, Harley-Davidson dealers throughout the world, including in the U.K., have purchased and sold used HARLEY-DAVIDSON motorcycles.
Harley-Davidson’s website also advertises and promotes the rental of its motorcycles via Harley-Davidson Authorized Rentals. Harley-Davidson’s authorized dealers also offer motorcycle rental services as part of its permitted dealership activities separate from the Harley-Davidson Authorized Rentals Program. Harley-Davidson also offers travel/tour packages through Harley-Davidson Authorized Tour operators.
Harley-Davidson promotes and offers its motorcycle rental and tour services throughout the world, including in the U.K. and other European countries
Harley-Davidson owns almost 850 trademark and service mark registrations in more than 75 countries around the world, including the U.S. and the U.K., for the Harley-Davidson Marks.
Harley-Davidson owns numerous U.S. and UK trademark registrations for the mark HARLEY-DAVIDSON and HARLEY in different classes.
Harley-Davidson also owns the domain name <harley-davidson.com>, which was registered in 1994, and which has been used to identify Complainant's website since on or about July 1996.
5. Parties’ Contentions
A. Complainant
The domain names are confusingly similar to complainant’s marks
Each of the Domain Names is confusingly similar to Complainant’s Harley-Davidson Marks because each Domain Name is comprised of the HARLEY and HARLEY-DAVIDSON marks in their entirety and a geographical term ("UK" or "London") and/or generic or descriptive wording ("rent and ride").
Combining Complainant’s Harley-Davidson Marks with generic or descriptive wording is not sufficient to distinguish the Domain Names from Complainant’s marks
Similarly, combining the Harley-Davidson Marks with a country ("UK") or city ("London") or other geographical term is not sufficient to distinguish the Domain Names from Complainant’s Harley-Davidson Marks. Indeed, a domain name comprised of a trademark and a geographical term actually increases the likelihood of confusion and association between the domain name holder and the trademark owner.
Respondent has no rights or legitimate interest in the domain names
Because Respondent registered and uses the Domain Names to sell competing products and services, to infringe Complainant’s rights in its Harley-Davidson Marks, and to trade off of Complainant’s goodwill, Respondent’s registration and use/intended use of the Domain Names do not and cannot constitute a bona fide offering of goods or services pursuant to Section 4(c)(i) of the UDRP
Respondent was not commonly known by the Domain Names prior to Respondent’s registration of those names.
Respondent is not making legitimate noncommercial or fair use of the Domain Names, without intending to mislead and divert consumers or to tarnish Complainant’s Harley-Davidson Marks for commercial gain.
Respondent’s registration and use of the Domain Names is not a fair use of the Harley-Davidson Marks. Because a domain name communicates information as to the source of the website, not the source of the products being sold on the site, Respondent’s Domain Names communicate that Harley-Davidson is somehow connected with Respondent. In other words, the use of a domain name to identify an online business constitutes a trade name use, i.e. a domain name is equivalent to a sign on a bricks and mortar business
Courts have consistently enjoined unauthorized resellers and repair shops of trademarked products from using the trademark in its trade name
Similarly, Respondent in this case should not be permitted to trade on the goodwill of Complainant’s famous Harley-Davidson Marks by using them in its Domain Names, i.e. its online trade names, to attract traffic to its own website.
In this case, the presence of the famous Harley-Davidson Marks in the Domain Names sends a message to Internet users that the source of Respondent’s websites is Complainant or that Respondent’s sites are associated with or sponsored by Complainant
Consistent with this established precedent, most UDRP Panels have held that resellers of trademarked goods have no right to register and use domain names containing the trademark, even when the trademark is combined with generic or descriptive terms
Respondent’s bad faith under section 4(b) of the UDRP
Respondent’s registration and use of the Domain Names meet the bad faith element set forth in Section 4(b)(iv) of the UDRP. Specifically, Respondent uses and/or intends to use the Domain Names to intentionally divert, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant and its Harley-Davidson Marks as to the source, sponsorship, affiliation, and endorsement of Respondent’s website, its goods and services, and/or the goods of Complainant’s competitors that are advertised at Respondent’s website.
Internet users searching for Complainant’s website will mistakenly access Respondent’s website because the Domain Names are comprised of Complainant’s Harley-Davidson Marks. Although consumers’ presumed goal of locating a website that offers HARLEY-DAVIDSON products and services may ostensibly be met when arriving at Respondent’s website, the initial interest confusion caused by Respondent’s unauthorized use of Complainant’s Harley-Davidson Marks damages Complainant because users can stay at Respondent’s websites and conduct some or all of the business they intended to conduct at Complainant’s website. Thus, Respondent’s use of the Domain Names results in actionable initial interest confusion.
Respondent’s registration and use of the Domain Names meets the bad faith element set forth in Section 4(b)(iii) of the UDRP, because Respondent is using and/or intends to use the Domain Names to unfairly compete with Complainant by advertising the products of Complainant’s competitors, including competitors’ motorcycles and motorcycle parts, and clothing.
Respondent’s registration of the six Domain Names that are the subject of this Complaint itself constitutes a pattern of registering trademark-related domain names in bad faith pursuant to Section 4(b)(ii) of the UDRP
Respondent’s registration and nonuse, i.e. "passive holding," of the domain name <harley-davidson-uk.net> is in bad faith because (1) that Domain Name incorporates the famous Harley-Davidson Marks in entirety, (2) it corresponds directly to the name of Harley-Davidson’s U.K. affiliate, (3) there is no conceivable use of the Domain Name by Respondent that would be legitimate, and (4) the most likely use of that Domain Name would be for Respondent’s <metalhorse.com> website, which would infringe Complainant’s rights
Respondent acted in bad faith because it was on notice of Complainant’s rights in its Harley-Davidson Marks when Respondent registered the Domain Names.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to Paragraph 15(a) of the Rules the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
2) that the Respondent has no legitimate interests in respects of the domain name; and
3) the domain name has been registered and used in bad faith.
A. Identical or Confusingly Similar
The contested domain names all contain the Complainant's trademark Harley-Davidson in full, with the addition of the non-distinctive terms "london", "uk" or "rent-and-ride" and the addition of the top level domain. For the purpose of these proceedings the domain names must be considered confusingly similar to Complainants trademark.
The prerequisites in the Policy, Paragraph 4 (a) (i) are therefore fulfilled.
B. Rights or Legitimate Interests
The Complainant has not licensed or otherwise permitted Respondent to use its trademark or to apply for any domain name incorporating the mark. Respondent is not a part of Complainant's authorized dealer network and since no response was filed in the case the Respondent must bear the consequences of not having given an explanation of any possible prior rights or legitimate interests in the domain names.
In addition, on the websites, for which the contested domain names are used (except one of them), Respondent offers not only sale, rental etc of goods bearing the trademark of the Complainant but also offers goods and services of competing products and brands. It is therefore clear that Respondents registration and use of the contested domain names does not fall under the normative fair use doctrine.
The prerequisites in the Policy, Paragraph 4 (a) (ii), cf. 4 (c) are also considered fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4 (a) (iii) of the Policy further provides registration and use in bad faith. Paragraph 4 (b) regulates, by way of example, the kind of evidence that is required.
Complainant’s trademarks are well-known and based on the evidence it is clear to the Panel that Respondent had positive knowledge of the Complainant's rights when registering the contested domain names. Respondent has registered six domain names incorporating Complainant's trademark and can thus be said to have shown a pattern of such conduct
Five of the six domain names, namely <harley-davidson-london.com>, <harley-davidson-london.net>, <harley-davidson-rent-and-ride.com>, <harley-davidson-rent-and-ride.net> and <harley-davidson-uk.com>, are used actively for websites offering not only goods and services that relates to Complainants brand but also goods and services bearing the trademarks of other companies.
The domain name <harley-davidson-uk.net> is presently not used actively
as the above mentioned are. The Panel agrees that in particular circumstances
it is within the scope of the rights conferred to a trademark to regard "passive
use" as "use", cf. Telstra Corporation Limited v. Nuclear
Marshmallows, WIPO Case No. D2000-0003,
and several other subsequent decisions. Based on the particular
circumstances of this case, the Panel finds that this passively used domain
name shall not be treated differently than the others.
Bearing these facts and the facts mentioned above under A) and B) in mind, the Panel finds that the domain names have been registered and are being used in bad faith, cf. Paragraph 4 (a) iii and 4 (b).
Consequently, all the prerequisites for cancellation or transfer of the domain names according to Paragraph 4(a) of the Policy are fulfilled.
The Complainant has requested transfer of the domain names.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names,
