Michelin North America, Inc. v. William Pools
Claim Number: FA1210001466132
Complainant is Michelin North America, Inc. (“Complainant”), represented by Neil M. Batavia of Dority & Manning, Attorneys at Law, P.A., South Carolina, USA. Respondent is William Pools (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name here at issue is <michelinmarketing.com>, registered with MONIKER.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on October 7, 2012; the National Arbitration Forum received payment on October 9, 2012.
On October 8, 2012, MONIKER confirmed by e-mail message addressed to the National Arbitration Forum that the <michelinmarketing.com> domain name is registered with MONIKER and that Respondent is the current registrant of the name. MONIKER has verified that Respondent is bound by the MONIKER registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 10, 2012, the Forum served the Complaint and all Annexes, in-cluding a Written Notice of the Complaint, setting a deadline of October 30, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, adminis-trative, and billing contacts, and to postmaster@michelinmarketing.com. Also on October 10, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 12, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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" through submission of Electronic and Written Not-ices, as defined in Rule 1 and Rule 2. 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
Complainant holds registrations for the MICHELIN trademark, on file with the United States Patent and Trademark Office (“USPTO”), (including Reg. No. 892,045, registered June 2, 1970).
Respondent registered the <michelinmarketing.com> domain name on February 9, 2012.
Respondent’s domain name is confusingly similar to Complainant’s MICHELIN trademark.
Respondent is passively holding the domain name in that the domain name does not resolve to an active website.
Respondent has not been commonly known by the <michelinmarketing.com> domain name.
Respondent’s use of the disputed domain name does not constitute a legitimate noncommercial or fair use.
Respondent has neither any rights to nor any legitimate interests in the disputed domain name.
Respondent registered and uses the <michelinmarketing.com> domain name in bad faith.
Respondent knew of Complainant’s rights in the MICHELIN mark when it regis-tered the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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."
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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.”
Complainant has rights in the MICHELIN trademark under Policy ¶ 4(a)(i) owing to its registration of the mark with a national trademark authority, the USPTO. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003):
Complainant's … trademark registrations [with the USPTO] establish Complainant's rights in the … mark.
See also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights in the mark pursuant to Policy ¶ 4(a)(i)).
Moreover, in order to establish rights in a mark pursuant to Policy ¶ 4(a)(i), a UDRP complainant need not register the mark in the country in which a respond-ent resides or operates. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant for purposes of the Policy whether a complainant has registered its trademark in the country of a respond-ent’s residence).
Turning then to the central question arising under Policy ¶ 4(a)(i), we conclude from our review of the record that Respondent’s <michelinmarketing.com> domain name is confusingly similar to Complainant’s MICHELIN mark. The domain name includes the entire mark, adding only the term “marketing,” which reflects an aspect of Complainant’s business, and the generic top-level domain (“gTLD”) “.com.” These alterations of the mark, made in creating the domain name, do not avoid a finding of confusing similarity under the standards of the Policy. See Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007):
Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.
See also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that, because a contested domain name incorporated the mark of another in its en-tirety, and deviated only by the addition of the generic word “bomb,” the domain name was confusingly similar to that mark).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie case that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to a re-spondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will ex-amine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respond-ent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny,
that Respondent has not been commonly known by the contested domain name <michelinmarketing.com>. In addition, the pertinent WHOIS information lists the registrant of the disputed domain name only as “William Pools,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have demon-strated that it has rights to or legitimate in the domain name within the contem-plation of Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that a respondent did not have rights in a domain name under Policy ¶ 4(c)(ii) where that respondent was not commonly known by the domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding that a respondent had no rights to or legitimate interests in a disputed domain name under Policy ¶ 4(c)(ii) where there was no evidence in the record indicating that that respondent was commonly known by the domain name).
We next observe that Complainant contends, without objection from Respondent, that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <michelinmarketing.com> domain name in that the domain name does not resolve to an active website so that Re-spondent is passively holding the disputed domain name. We concur. Re-spondent’s employment of the domain name as alleged in the Complaint is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in a domain name where there is no proof that a respondent made preparations to use the domain name in connection with a bona fide offering of goods and services before notice of a domain name dispute); see also Am. Home Prods. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where a respondent passively held the domain name).
Therefore, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
We take note of the fact that the examples of bad faith registration and use of a domain name set out in Policy ¶ 4(b) are intended to be illustrative and not ex-haustive. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets out circumstances, without limitation, that give evidence of registration and use of a domain name in bad faith). Ac-cordingly, we may find bad faith in facts and circumstances outside the para-meters of Policy ¶ 4(b). See, for example, CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000):
[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith.
With this in mind, we conclude that Respondent’s passive holding of the disputed <michelinmarketing.com> domain name is evidence of bad faith registration and use of the domain name. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that a respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (find-ing that the respondent made no use of the domain name or of the website that connected with the domain name, and that such failure to make an active use of a domain name permits an inference of registration and use in bad faith).
We are also persuaded from the evidence that Respondent knew of Complain-ant's rights in the MICHELIN mark prior to registration of the domain name. This too is evidence of bad faith registration of the domain name. See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that a respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii), having concluded that that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
For these reasons, the Panel finds that Complainant has met its obligations of proof under ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <michelinmarketing.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 23, 2012
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