Michelin North America, Inc. v. Ed Brewmaker
Claim Number: FA1212001475767
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 Ed Brewmaker (“Respondent”), Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <michelintiresreviews.com>, registered with GODADDY.COM, LLC.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically December 12, 2012; the National Arbitration Forum received payment December 14, 2012.
On December 13, 2012, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <michelintiresreviews.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC verified that Respondent is bound by the GODADDY.COM, LLC registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 17, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 7, 2013 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, administrative, and billing contacts, and to postmaster@michelintiresreviews.com. Also on December 17, 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 January 17, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 Notices, 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.
1. Complainant holds registrations with the United States Patent and Trademark Office (“USPTO”) for its MICHELIN mark (Reg. No. 892,045 registered June 2, 1970).
2. Respondent’s <michelintiresreviews.com> domain name is confusingly similar to Complainant’s MICHELIN mark.
3. Respondent adds the terms “tires” and “reviews” to Complainant’s MICHELIN mark.
4. Respondent has no rights to or legitimate interests in the <michelintiresreviews.com> domain name.
5. Respondent’s domain name previously resolved to a website that featured links to tires and other products in which Respondent received compensation through the click-through fees.
6. Currently, Respondent passively holds the <michelintiresreviews.com> disputed domain.
7. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
8. Respondent lacks rights and legitimate interests in the <michelintiresreviews.com> domain name and is not commonly known by it.
9. Respondent’s use of the disputed domain name does not constitute a legitimate noncommercial or fair use of a domain name.
10. Respondent registered and is using the <michelintiresreviews.com> domain name in bad faith.
11. Respondent had actual or constructive knowledge of Complainant’s rights in the MICHELIN mark.
12. Respondent’s initial use of the <michelintiresreviews.com> domain name disrupted Complainant’s business by misleading Internet users in search of Complainant’s business.
13. Additional factors can be used to support a finding of bad faith.
1. The Panel notes that Respondent registered the <michelintiresreviews.com> domain name April 12, 2012, some 42 years after Complainant’s registration of its mark.
Complainant established that it has protected rights in the mark contained in its entirety within the disputed domain name.
The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered, used, and now passively holds the disputed domain name 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 Complainant to 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Given Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel 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 Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the 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.”).
Identical to or Confusingly Similar
Complainant claims it has rights in the MICHELIN mark pursuant to Policy ¶ 4(a)(i). Complainant provides evidence of its registration for the MICHELIN mark with the USPTO (Reg. No. 892,045 registered June 2, 1970). See Annex B. of a Registration with a recognized trademark authority such as the USPTO is sufficient to establish rights in a given mark under the Policy. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). The Panel finds that Complainant has rights in the MICHELIN mark under Policy ¶ 4(a)(i) based on its registration with the USPTO.
Complainant contends that Respondent’s <michelintiresreviews.com> domain name is confusingly similar to Complainant’s MICHELIN mark. Complainant argues that Respondent added the words “tires” and “reviews” onto Complainant’s full MICHELIN mark. Further, Complainant argues that adding the “.com” generic top-level domain (“gTLD”) does not negate a finding of confusing similarity. Adding additional words and a gTLD to a Complainant’s registered mark does not differentiate a disputed domain name from a registered mark under Policy ¶ 4(a)(i). See Metro-Goldwyn-Mayer Studios Inc. v. Antigua Domains, FA 1073020 (Nat. Arb. Forum Oct. 17, 2007) (“[T]he inclusion of the generic top-level domain ‘.com’ is inconsequential to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names.”); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business). The Panel finds that Respondent’s <michelintiresreviews.com> domain name is confusingly similar to Complainant’s MICHELIN mark pursuant to Policy ¶ 4(a)(i); it is not sufficiently different from Complainant’s registered mark.
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protective mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden of proof shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent 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 argues that Respondent does not have any rights or legitimate interests in the <michelintiresreviews.com> domain name because it is not commonly known by the disputed domain name. Complainant points to Respondent’s WHOIS information as evidence. See Annex A. The Panel notes that the registrant for the <michelintiresreviews.com> domain name is listed as “Ed Brewmaker” on Respondent’s WHOIS information. A Respondent is not commonly known by a disputed domain name when the WHOIS information fails to show a nominal similarity to the claimed mark. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). Based on the WHOIS information here and Respondent’s failure to provide any further evidence, the Panel finds that Respondent is not commonly known by the <michelintiresreviews.com> domain name under Policy ¶ 4(c)(ii).
Complainant explains that Respondent was originally using the <michelintiresreviews.com> domain name to resolve to a website displaying links to tires and other related products. Complainant suggests that Respondent was receiving fees through the pay-per-click links featured on the resolving page. The Panel notes that Respondent’s resolving website featured products sold by Complainant including tires names such as, “4x4 Diamaris,” “4x4 Synchrone,” “Agilis,” “Agility,” “Agility Touring,” “Defender,’ “Destiny,” and “Energy E3A.” See Annex A. Using a confusingly similar domain name to resolve to a page featuring pay-per-click links is not a bona fide offering of goods or services and it is not a legitimate noncommercial fair use. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees). Therefore, the Panel finds that Respondent’s prior use of the disputed domain name did not amount to a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant explains that after Respondent received correspondence from Complainant, Respondent suspended access to the website resolving from the <michelintiresreviews.com> domain name, and now passively holds the disputed domain name. Passive holding of a confusingly similar domain name is not a use in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). The Panel therefore finds that Respondent has no rights or legitimate interests in the <michelintiresreviews.com> domain name because it is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policies ¶¶4(c)(i) or (iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant alleges that Respondent’s <michelintiresreviews.com> domain name previously resolved to a website displaying click-through links, which disrupted Complainant’s business by misleading Internet users searching for Complainant’s online presence. Displaying competing links on a website resolving from a confusingly similar domain name is proof that supports findings of bad faith under Policy ¶ 4(b)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). The Panel therefore finds that Respondent registered, used and is now passively holds the <michelintiresreviews.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant also claims that Respondent’s current use of the <michelintiresreviews.com> domain name to resolve to an inactive webpage evidences bad faith registration and use pursuant to Policy ¶ 4(a)(iii). Failure to make an active use of a website often constitutes bad faith under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy). The Panel therefore finds that Respondent registered and used and is now passively holding the <michelintiresreviews.com> disputed domain name in bad faith pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent must have had constructive and/or actual notice of Complainant's rights in the MICHELIN mark prior to registration of the domain names because of Complainant's widespread use of the mark and its trademark registrations with the USPTO. While constructive notice is generally insufficient to support a finding of bad faith, the Panel here finds that Respondent had actual notice of Complainant's mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <michelintiresreviews.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: January 30, 2013.
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