DECISION
KTM Sportmotorcycle USA, Inc. v. Cycle
Hutt, Inc. a/k/a Justin Bohn and Tammy Bohn a/k/a Tammy Bohn
Claim Number: FA0304000155894
PARTIES
Complainant
is KTM Sportmotorcycle USA, Inc., Amherst, OH (“Complainant”)
represented by Gordon D. Kinder of Renner, Otto, Boisselle &
Sklar, LLP. Respondent is Cycle Hutt, Inc. a/k/a Justin
Bohn and Tammy Bohn a/k/a Tammy Bohn, Bismark, ND
(“Respondent”) represented by Jonathan P. Sanstead of Pearce &
Durick.
REGISTRAR AND
DISPUTED DOMAIN NAMES
The
domain names at issue are <ktmpowersports.com>, <ktmtech.com>,
<oldktm.com>, <vintagektm.com>, <teamktm.com>
and <ridektm.com>, registered with Register.com; <racektm.com>,
<ktmunderground.com>, <ktmsportmotorcycles.com>, <ktmsportminicycles.com>,
<ktmsales.com>, <ktmroadbikes.com>, <ktmpowerwear.com>,
<ktmowners.com>, <ktmonline.com>, <ktmnews.com>,
<ktmmotorcycles.com>, <ktmmagazine.com>, <ktmhardequipment.com>,
<ktmdirect.com>, <ktmbikes.com>, <ktmagazin.com>
and <ktmadventuretours.com>, registered with and Go Daddy
Software, Inc.; and <ktm.com>, registered with Network
Solutions, Inc.
PANEL
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.
Terry
F. Peppard, Houston Putnam Lowry and David P. Miranda, Chair, as Panelists.
PROCEDURAL
HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on April 25, 2003; the Forum received a hard copy of the
Complaint on April 28, 2003.
On
April 28, 2003, Register.com confirmed by e-mail to the Forum that the domain
names <ktmpowersports.com>, <ktmtech.com>, <oldktm.com>,
<vintagektm.com>, <teamktm.com> and
<ridektm.com> are registered with Register.com and that the
Respondent is the current registrant of the names. On April 28, 2003, Go Daddy
Software, Inc. confirmed by e-mail to the Forum that the domain names <racektm.com>,
<ktmunderground.com>, <ktmsportmotorcycles.com>, <ktmsportminicycles.com>,
<ktmsales.com>, <ktmroadbikes.com>, <ktmpowerwear.com>,
<ktmowners.com>, <ktmonline.com>, <ktmnews.com>,
<ktmmotorcycles.com>, <ktmmagazine.com>, <ktmhardequipment.com>,
<ktmdirect.com>, <ktmbikes.com>, <ktmagazin.com>
and <ktmadventuretours.com> are registered with Go Daddy Software,
Inc. and that the Respondent is the current registrant of the names. On April
29, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the
domain name <ktm.com> is registered with Network Solutions, Inc.
and that the Respondent is the current registrant of the name. Register.com, Go
Daddy Software, Inc. and Network Solutions, Inc. have each verified that
Respondent is bound by their respective registration agreements 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
May 9, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 29,
2003 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@ktm.com, postmaster@ktmadventuretours.com,
postmaster@ktmagazin.com, postmaster@ktmbikes.com, postmaster@ktmdirect.com,
postmaster@ktmhardequipment.com, postmaster@ktmmagazine.com,
postmaster@ktmmotorcycles.com, postmaster@ktmnews.com,
postmaster@ktmpowersports.com, postmaster@ktmonline.com,
postmaster@ktmowners.com, postmaster@ktmpowerwear.com,
postmaster@ktmroadbikes.com, postmaster@ktmsales.com,
postmaster@ktmsportminicycles.com, postmaster@ktmsportmotorcycles.com,
postmaster@ktmtech.com, postmaster@ktmunderground.com, postmaster@oldktm.com,
postmaster@racektm.com, postmaster@ridektm.com, postmaster@teamktm.com and
postmaster@vintagektm.com by e-mail.
A
timely Response was received and determined to be complete on May 29, 2003.
An
untimely Additional Submission was received from Complainant on June 5, 2003.
An
untimely Additional Submission was received from Respondent on June 12, 2003.
On
June 25, 2003, pursuant to Complainant’s request to have the dispute decided by
a three-member Panel, the Forum appointed Terry F. Peppard, Houston Putnam
Lowry and David P. Miranda, Chair, as Panelists.
RELIEF SOUGHT
Complainant requests that the domain names be transferred
from Respondent to Complainant.
PARTIES’
CONTENTIONS
A.
Complainant
Complainant KTM Sportmotorcycle USA, Inc. (“KTM” or
“Complainant”) is the owner of registered trademark KTM for motorcycles (Reg.
No. 1,664,945 registered on November 19, 1991). Complainant sells its KTM
products through a network of dealers who in turn sell to retail
customers. Complainant contends that its products are widely known within
the community of motorcycle riders, dealers and manufacturers.
On or about June 19, 2000 KTM entered into a dealer
agreement with the Respondent Cycle Hutt (“Respondent”). KTM contends
that Respondent has registered and used the domain name <ktm.com>
and other domain names listed above, that begin with or include KTM’s
registered mark, KTM. KTM contends that customers and dealers are likely
to be confused about the sponsorship of the <ktm.com> website and
other domain names at issue. KTM contends that the Respondent has no
right or legitimate interest in the domain names which are the subject of this
Complaint because Justin and Tammy Bohn (owners of Cycle Hutt) never had any
right or permission as individuals to use the KTM mark and Respondent Cycle
Hutt is no longer a dealer authorized by KTM to sell Complainant’s motorcycles,
parts or accessories or use the KTM mark. KTM contends that the domain
name should be considered as having been registered and used in bad faith
because the dealership agreement between the parties has been terminated and
use of the domain names after such determination is for the purpose of
disrupting KTM’s business. KTM also contends that Respondent’s bad faith
is exhibited by the multiple domain names registered by Respondents,
demonstrating an attempt to prevent Complainant KTM from registering its mark
as a domain name and blocking alternate names.
B.
Respondent
Respondent does not dispute that its domains are identical
or confusingly similar to Complainant’s KTM mark. Respondent contends
that it has rights to and legitimate interest in the disputed domain names
because each of the domain names was registered and used to promote its KTM
dealership activities. Respondent contends that the dealer agreement
between the parties was wrongfully terminated by KTM in an attempt to acquire
the <ktm.com> domain name and other domain names. Respondent
contends that its registration and use of the disputed domain names are for the
bona fide business purpose of offering goods and services prior to notice of
the present dispute. Respondent contends that while negotiating the
dealer agreement with KTM, it notified KTM that it intended to use the domain
names <ktmsales.com> and <ktmonline.com> for sales
and information pertaining to its KTM dealership. Respondent contends
that before purchasing the domain name ktm.com it contacted a KTM
representative about its intent to purchase the domain name and received
encouragement from KTM regarding its purchase of the domain name.
Respondent contends that it purchased the domain name <ktm.com>
for $80,000 and continued its efforts to sell KTM goods via the Internet
through its various KTM related websites.
C.
Additional Submissions
Complainant
submitted an additional response that was considered by the Panel.
Complainant’s additional response included reference to exhibits that were not
originally provided to the Panel and Complainant was provided with an opportunity
to supplement its additional response to include said exhibits, all of which
were considered by the Panel. Complainant’s additional response contends
that certain Respondent domain names were registered prior to execution of the
dealership agreement, thus prior to Respondents having any interest in those
domains, and as such, the registrations are presumptively in bad faith.
KTM contends that the language of the dealer agreement permits the Respondent
to use “the trade names and trademarks of KTM Sportmotorcycle, KTM
Sportminicycle and K-style Trademarks (alone)… during the term of this
agreement for promotion of KTM products.” KTM contends Respondent is
limited to use only the three trademarks mentioned in the agreement and not
permitted to otherwise use the KTM mark. KTM does not submit any proof
disputing the contention by Respondent that KTM encouraged Respondent to
register the domain name <ktm.com>.
The
Panel also considered Respondent’s additional response in which it contends
that pursuant to an addendum to the dealer agreement, it was permitted to use
“the trade names and trademarks of KTM”. Respondent also contends that
the disputed domain names which were registered prior to the execution of the
dealer agreement were based upon a good faith intention to become a KTM
dealer. Respondent contends that its good faith efforts are evidenced by
its subsequent negotiation and consummation of a dealer agreement with KTM and
the fact that it disclosed to KTM in Respondent’s business plan that it had
registered and had intended to use certain KTM related domain names with
respect to its intended business of selling KTM goods.
FINDINGS
Based upon its review of all the evidence of record, the
panel finds that: (1) The disputed domain names are confusingly similar to the
trademark KTM to which Complainant has rights; (2) Complainant has failed to
establish that Respondent has no rights or legitimate interest in the domain
names at issue; and (3) Complainant has failed to establish that the domain names
were registered and are 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:
the domain name registered by the
Respondent is identical or confusingly similar to a trademark or service mark
in which the Complainant has rights;
the Respondent has no rights or
legitimate interests in respect of the domain name; and
the domain name has been registered and
is being used in bad faith.
Identical and/or Confusingly
Similar
Complainant
has produced evidence that it holds a trademark registration with the United
States Patent and Trademark Office (“USPTO”) for the KTM mark (Reg. No.
1,664,945 registered on November 19, 1991) related to motorcycles. The Panel
concludes that this evidence supports Complainant’s assertion that it has
rights in the KTM mark pursuant to Policy ¶ 4(a)(i). See The Men’s
Wearhouse, Inc. v. Brian Wick, FA 117861 (Nat. Arb. Forum Sept. 16 2002)
(“Under U.S. trademark law, registered marks hold a presumption that they are
inherently distinctive and have acquired secondary meaning”).
Complainant
contends that Respondent’s <ktm.com>, <ktmadventuretours.com>,
<ktmagazin.com>, <ktmbikes.com>, <ktmdirect.com>,
<ktmhardequipment.com>, <ktmmagazine.com>, <ktmmotorcycles.com>,
<ktmnews.com>, <ktmpowersports.com>, <ktmonline.com>,
<ktmowners.com>, <ktmpowerwear.com>, <ktmroadbikes.com>,
<ktmsales.com>, <ktmsportminicycles.com>, <ktmsportmotorcycles.com>,
<ktmtech.com>, <ktmunderground.com>, <oldktm.com>,
<racektm.com>, <ridektm.com>, <teamktm.com> and
<vintagektm.com> domain names (hereinafter “disputed domain
names”) are identical or confusingly similar to Complainant’s KTM mark because
each of them appropriates the mark and all but one add a generic term or
generic terms to the end of Complainant’s mark.
Respondent
does not dispute that its domain names are identical or confusingly similar to
Complainant’s mark. Complainant has established that the domain names
registered by the Respondent are identical or confusingly similar to the
trademark in which the Complainant has rights.
Rights or Legitimate Interests
Respondent
contends that it has rights to and legitimate interests in the disputed domain
names because each of the domain names was registered and used to promote its
KTM dealership. Respondent argues that the dealer agreement between the present
parties was wrongfully terminated by Complainant in bad faith. The Panel
finds that before any notice of this dispute Respondent was making a bona fide
offering of goods and services with regard to Policy ¶ 4(c)(i) because
Respondent was a distributor of Complainant’s goods. See K&N Eng'g.,
Inc. v. Kinnor Serv., D2000-1077 (WIPO Jan. 19, 2001) (finding legitimate
interest because “Respondent has been an authorized distributor of the
Complainant's goods for many years. The Respondent is in the business of
selling the Complainant's products and is using the Domain Name in connection
with that business”); see also Draw-Tite, Inc. v. Plattsburgh Spring Inc.,
D2000-0017 (WIPO Mar. 14, 2000) (finding a bona fide sale of goods under the
domain name <drawtite.com> where Respondent used the website to sell
Complainant’s towing equipment and trailer accessories).
KTM contends that the dealer agreement between the parties
no longer provides Respondent with the right or legitimate interest in the
domain names because the dealer agreement has been terminated. Respondent
contends that KTM terminated the agreement in bad faith in an effort to acquire
the domain names at issue. The dispute between the parties thus also
includes an issue based in contract which is beyond the scope of the UDRP and
cannot be the basis for the transfer of the disputed domain names. See
Discover New England v. The Avanti Group, Inc. FA 123886 (Nat. Arb. Forum
Nov. 6, 2002) (finding the dispute outside the scope of the UDRP because the
dispute centered on interpretation of contract language and whether or not a
breach existed); see also Thread.com, LLC v. Poploff, D2000-1470 (WIPO
Jan. 5, 2001) (refusing to transfer the domain name and stating that the ICANN
Policy does not apply because attempting “to shoehorn what is essentially a
business dispute between former partners into a proceeding to adjudicate
cybersquatting is, at its core, misguided, if not a misuse of the Policy”).
Registration and Use in Bad
Faith
Respondent’s
registration and use of the disputed domain names does not amount to bad faith
because Respondent was making a bona fide offering of goods and services prior
to notice of the present dispute. See DJF Assocs., Inc. v. AIB
Communications, FA 95612 (Nat. Arb. Forum Nov. 1, 2000) (finding Respondent
has shown that it has a legitimate interest in the domain name because
Respondent selected the name in good faith for its website, and was offering
services under the domain name prior to the initiation of the dispute); see
also Gorstew Ltd., Jamaica & Unique Vacations v. Twinsburg Travel, No.
FA 94944 (NAF July 7, 2000) (finding no bad faith where Respondent used
<sandalsoutlet.com> and other domain names incorporating the SANDALS
mark, as an agent, in good faith, on behalf of Sandals Resorts).
In
addition, both prior to and during the dealer agreement, Respondent notified Complainant
that it intended to and was in fact using domain names that included the KTM
mark for the purposes of offering KTM related goods online. KTM entered
into the dealer agreement with the knowledge of Respondent’s intentions, did
not object to this use by Respondent and there is evidence that Complainant
encouraged Respondent to register at least one of the domain names, <ktm.com>,
for the purpose of promoting and selling KTM goods online. A trademark
owner may not actively encourage a third party to expend substantial money and
effort to purchase and promote a domain name containing its trademark and then
use the UDRP arbitration process to obtain a transfer of that domain name.
DECISION
Having
failed to establish the second and third elements required under ICANN Policy,
the Panel concludes that relief requested shall be DENIED.
Accordingly,
it is Ordered that the <ktm.com>, <ktmadventuretours.com>,
<ktmagazin.com>, <ktmbikes.com>, <ktmdirect.com>,
<ktmhardequipment.com>, <ktmmagazine.com>, <ktmmotorcycles.com>,
<ktmnews.com>, <ktmpowersports.com>, <ktmonline.com>,
<ktmowners.com>, <ktmpowerwear.com>, <ktmroadbikes.com>,
<ktmsales.com>, <ktmsportminicycles.com>, <ktmsportmotorcycles.com>,
<ktmtech.com>, <ktmunderground.com>, <oldktm.com>,
<racektm.com>, <ridektm.com>, <teamktm.com> and
<vintagektm.com> domain names are not transferred.
Dated: July 10, 2003
Terry F. Peppard, Panelist