Merchant & Gould Wins Domain Name Battle on Behalf of Polaris Industries

Polaris is a well-known manufacturer of recreational sport vehicles, including ATVs, snowmobiles and motorcycles. Its products are distributed through more than 400 independent dealers throughout the United States, and are also distributed internationally through more than 750 dealers around the world. Polaris Industries used the domain name Polarisind.com in connection with its business, but desired to acquire the name Polaris.com. Merchant & Gould and Polaris monitored the activity of the Polaris.com domain name. In 2010, an outside entity in France (“Respondent”) acquired the domain Polaris.com and began to use the domain in bad faith and for its own commercial gain by placing advertisements on the domain that drive traffic away from Polaris’ websites and to the sites of competitors and third-party vendors. Merchant & Gould was retained to protect the POLARIS brand by seeking transfer of the domain into the custody of Polaris Industries, Inc.

Case Summary

Merchant & Gould filed a complaint in October 2010, and sought to prove that the Respondent had no right to the Polaris.com domain, that the domain is similar to the point of confusion, and that it was registered in bad faith. Adding a small wrinkle to the situation, because the registrar was in France and the registration agreement was filed in France, the language of the proceedings was also required to be in French. Merchant & Gould translated the initial Complaint to comply with the rules. The domain name holder responded to the Complaint in French, which required Merchant & Gould had to translate that into English, prepare a response, and then translate the response from English to French within 5 days.

Solution

Merchant & Gould established that the Respondent acted in bad faith, sought commercial gain by establishing the likelihood of confusion, and did not have a right to the domain Polaris.com. On November 25, 2010, the National Arbitration Forum ruled in favor of Merchant & Gould client Polaris, and ordered the transfer of Polaris.com to Polaris Industries, Inc.

Merchant & Gould Team

Andrew S. Ehard

William D. Schultz