Harleyshipbuilding.org + 7 more domains

The timeline behind harleyshipbuilding.org

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

How each disputed name was decided in this proceeding.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

DECISION Harley Shipbuilding Corporation et al v Fast Cat Boat Works Claim Number: FA0102000096669 PARTIES The Complainants are Harley Shipbuilding Corporation ("Harley Shipbuilding"), Fiberfloat Corporation d/b/a Harley Boat Company ("Harley Boat") and Howard D. Harley ("Harley") Bartow, FL, USA ("Complainant") represented by Ronald D. Cook, of Cook & Koch P.A., One Tampa City Center, Suite 3010, 201 North Franklin Street, Tampa, FL 33602. The Respondent is Fast Cat BoatWorks, LLC, 560 Spinnaker DriveLongboat Key, FL, USA ("Respondent") represented by Melinda Delpech, of 2180 Main Street, Sarasota, FL 34237 REGISTRAR AND DISPUTED DOMAIN NAMES The domain names at issue are "harleyshipbuilding.org", "harleyshipbuilding.com", "harleyshipbuilding.net", "harleyboat.com", "harleyboat.org", "harleyboat.net", "harleyboats.net", "harleyboats.org", registered with Network Solutions. 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 a panelist in this proceeding. The Panelist is Richard DiSalle. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on February 15, 2001; the Forum received a hard copy of the Complaint on February 16, 2001. An Amended Complaint was filed on February 26, 2001. On February 20, 2001, Network Solutions confirmed by e-mail to the Forum that the domain names "harleyshipbuilding.org", "harleyshipbuilding.com", "harleyshipbuilding.net", "harleyboat.com", "harleyboat.org", "harleyboat.net", "harleyboats.net", "harleyboats.org" are registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 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 February 21, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 13, 2001 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@harleyshipbuilding.org, postmaster@harleyshipbuilding.com, postmaster@harleyshipbuilding.net, postmaster@harleyboat.com, postmaster@harleyboat.org, postmaster@harleyboat.net, postmaster@harleyboats.net, postmaster@harleyboats.org by e-mail. A timely response was received and determined to be complete on March 12, 2001. On March 23, 2001, pursuant to Complainant’s request to have the dispute decided by a One Member Panel, the Forum appointed Richard DiSalle as Panelist. RELIEF SOUGHT The Complainant requests that the domain names be transferred from the Respondent to the Complainant. PARTIES’ CONTENTIONS A. Complainant The trademark/service marks held by the Complainants are "Harley Boat", "Harley Shipbuilding", the personal name "Harley" and all derivations and variations of the above which are used and are famous in the boat/ship building and marine services industry. Harley Boats and Harley Shipbuilding are both Florida corporations engaged in the business of boat and shipbuilding. Harley Boats has been continuously engaged in the boat building and marine services industry since at least 1976. Harley, through Harley Shipbuilding, expanded into the business of producing Surface Effect Ships ("SES"), a specialized form of marine vessel, in 1997. Complainant claims that Respondent’s domain names are identical or confusingly similar to Complainant’s trademarks/service marks and that Respondent has no right or legitimate interest with respect to any of the domain names. It claims that Respondent has registered the domain names in order to prevent the Complainant from reflecting their marks in a corresponding domain name; has registered those names primarily for the purpose of disrupting the business of the Complainant; and by using the domain names, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainants’ marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s web sites. Complainant further states that Respondent is a competitor in the boat/ship building and marine services industry, with its principal office in Bradenton, Florida. B. Respondent The Respondent’s response is rather perfunctory. It says either that it is without knowledge regarding certain of the averments of the Complaint and, with respect to the other issues offers a one-word general denial of each averment, without any explanation or any reference to evidence to the contrary. In the section headed "Defenses", it says only that Respondent is utilizing the domain names to disseminate "public records to the public", which is a legitimate use of the names; that "Harley" is a common name and is not unique or famous to the extent that the Complainant/Petitioner has any greater right to the name than the Respondent; and Complainant does not have any trademark or service mark rights in the disputed names. FINDINGS (1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) the 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. DISCUSSION Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) the 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. Identical and/or Confusingly Similar Complainant, Harley Shipbuilding Corporation, owns the registered marks, HARLEY BOAT, HARLEY SHIPBUILDING and HARLEY, which are used, and are famous, in the boat/ship building and marine services industry. Complainant has continuously engaged in boat building and marine services since 1976. Complainant contends that Respondent’s domain names (harleyshipbuilding.org, harleyshipbuilding.com, harleyshipbuilding.net, harleyboat.com, harleyboat.org, harleyboat.net, harleyboats.net, harleyboats.org) are identical and/or confusingly similar to its famous marks. See Hollywood Network, Inc, v Video Citizen Network, FA 95897 (Nat. Arb. Forum Dec. 20, 2000) (finding that the domain name <hollywoodnetwork.tv> is identical and confusingly similar to Complainant’s HOLLYWOOD NETWORK mark because the "inclusion of the entirety of Complainant’s mark in the domain name at issue makes it confusingly similar"); see also Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that "the addition of an "s" to the end of the Complainant’s mark, "Cream Pie" does not prevent the likelihood of confusion caused by the use of the remaining identical mark. The domain name <creampies.com> is similar in sound, appearance, and connotation"). Rights or Legitimate Interests Complainant asserts that Respondent has no rights or legitimate interest in the disputed domain names because Respondent has registered the domain names primarily for the purpose of disrupting the Complainant’s business. See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights and legitimate interests where the Respondent diverted Complainant’s customers to his web sites). Also, Respondent registered the domain names intentionally to attract Complainant’s customers via a likelihood of confusion with Complainant’s well-established marks. See Household Int’l, Inc. v. Cyntom Enter., FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (inferring that Respondent registered the domain name <householdbank.com>, which incorporates Complainants HOUSEHOLD BANK mark, with hopes of attracting Complainant’s customers and thus finding no rights or legitimate interests); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (finding that "unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services"). It seems clear that the Respondent has no legitimate interest in the domain names. There is no evidence that the names Harley, Harley Boat, or Harley Shipbuilding have any connection or relationship to Fast Cat BoatWorks, and there would appear to be no reason to use them except to cause confusion and/or to trade on Complainants’ names. Registration and Use in Bad Faith Complainant asserts that Respondent registered the disputed domain names to intentionally attract, for commercial gain, Internet users to its web site, or other online location, by creating a likelihood of confusion with Complainant’s well-established mark as to the source, sponsorship, affiliation and endorsement of Respondent ’s web site. See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the Respondent had engaged in bad faith use and registration by linking the domain name to a web site that offers services similar to Complainant’s services, intentionally attempting to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s marks); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the Complainant’s well known marks, thus creating a likelihood of confusion strictly for commercial gain). Further, Complainant alleges Respondent is its competitor, and therefore was aware of its famous mark prior to registering the disputed domain names. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum, Apr.17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration); see also Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that the Respondent demonstrated bad faith where the Respondent was aware of the Complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names). In fact, in June of 1999, Complainant entered into a contract to build and sell a "Harley SES Fast Ferry" to Fast Cats Ferry Service, LLC, which is located at the same address as the Respondent. Finally, Respondent has engaged in a pattern of conduct by registering the disputed domain names, which prevents Complainant (the trademark owner) from reflecting its marks in a corresponding domain name. See Gamesville.com, Inc. v. John Zuccarini, FA 95294 (Nat. Arb. Forum Aug. 30, 200) (finding that Respondent has engaged in a pattern of conduct of registering domain names to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, which is evidence of registration and use in bad faith). DECISION It is hereby ordered that the domain names "harleyshipbuilding.org", "harleyshipbuilding.com", "harleyshipbuilding.net", "harleyboat.com", "harleyboat.org", "harleyboat.net", "harleyboats.net", "harleyboats.org" be transferred from the Respondent to the Complainant. Richard DiSalle Superior Court Judge (Ret.) Arbitrator Dated: April 6, 2001 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.