Michelin North America, Inc. v. Janice Liburs
Claim Number: FA1307001511305
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 Janice Liburs (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <michelinproject.com>, registered with Domaintimemachine.com LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 23, 2013; the National Arbitration Forum received payment on July 25, 2013.
On July 29, 2013, Domaintimemachine.com LLC confirmed by e-mail to the National Arbitration Forum that the <michelinproject.com> domain name is registered with Domaintimemachine.com LLC and that Respondent is the current registrant of the name. Domaintimemachine.com LLC has verified that Respondent is bound by the Domaintimemachine.com LLC 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 July 30, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 19, 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@michelinproject.com. Also on July 30, 2013, 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 August 26, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, as Panelist.
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 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.
A. Complainant
Policy ¶ 4(a)(i)
Policy ¶ 4(a)(ii)
Policy ¶ 4(a)(iii)
Respondent registered the <michelinproject.com> domain name on March 3, 2013.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Michelin North America, Inc. which list its address as Greenville, SC, USA. Complainant is the owner of the mark MICHELIN which it claims to have first used in 1907 and which it has held a USA registration for since at least 1970. Complainant has continuously used its MICHELIN mark since at least that that time for goods and services relating to pneumatic tires and inner tubes for vehicles. Complainant conducts business domestically and internationally from real space locations and also through cyberspace through utilization of its official website at <michelin.com>.
Respondent is Janice Liburs whose address is reflected as Panama. Respondent’s registrar’s address is reflected as Portland, OR, USA. Respondent registered the disputed domain name on or about March 3, 2013.
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:
(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.
In view of 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 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 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.”).
Complainant claims that it uses the MICHELIN mark in connection with the sale of tires. Complainant notes that it registered the MICHELIN mark with the USPTO under registration number 892,045, with registration issued on June 2, 1970. In Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) the panel agreed that it was unnecessary to illustrate rights in any particular jurisdiction merely because the respondent and the complainant live in different countries. The Panel finds that Complainant’s USPTO registration satisfies Policy ¶ 4(a)(i)’s requirement of rights. See Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that the complainant had sufficiently established rights in the SKUNK WORKS mark through its registration of the mark with the USPTO).
Complainant also argues that Respondent has registered the confusingly similar <michelinproject.com> domain name. Complainant notes that the domain name merely appends the term “project” to Complainant’s registered trademark. The Panel notes that the domain name also includes the generic top-level domain (“gTLD”) “.com,” but the Panel finds this addition to be irrelevant for purposes of this UDRP proceeding. 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.”). In Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) the panel found that the addition of a singular and generic term to an otherwise distinct and registered trademark illustrated a confusing similarity between the domain name and the mark. The Panel finds that the <michelinproject.com> domain name is confusingly similar to the MICHELIN mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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 shifts to Respondent to show it does have 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). The Complainant has met this burden.
Complainant argues that Respondent is not commonly known by this domain name in any way. Complainant claims that Respondent uses a proxy registration company to mask its identity, thus there is no grounds for finding that Respondent is known by this name. The Panel notes that the WHOIS information lists “Janice Liburs / Porchesterpartners@gmail.com” as the registrant of the <michelinproject.com> domain name. The Panel finds that there is nothing in this record to show that Respondent has been commonly known by the <michelinproject.com> domain name under Policy ¶ 4(c)(ii). See, e.g., Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Complainant next alleges that Respondent is using the <michelinproject.com> domain name to host a hyperlink directory to an array of unrelated services, as well as hyperlinks to the same types of tire products that Complainant sells under the MICHELIN mark. Complainant argues that Respondent most likely generates advertising revenue each time an Internet user clicks on one of the hyperlinks posted on the <michelinproject.com> domain name. The Panel notes that the <michelinproject.com> domain name resolves to a generic landing page that features a list of hyperlinks to generic services such as “human resource management” as well as related and potentially competitive links such as “cheap tires,” “motorcycle tires,” and the directly competing “Pirelli” tires. See Complainant’s Ex. A. The Panel finds that Respondent’s decision to host hyperlinks to related products that are competitive with the MICHELIN mark is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (the use of a disputed domain name to host links to products that compete with a complainant is not a bona fide offering, or legitimate noncommercial use, as intended by the Policy.).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant asserts that Respondent is disrupting Complainant’s business through its hosting of misleading hyperlinks that promote the same kinds of goods sold by Complainant under the MICHELIN mark. The Panel notes that some of the hyperlinks on the disputed domain name promote “Pirelli”—a competing tire selling company. See Complainant’s Ex. A. The Panel finds that Respondent’s decision to host competing hyperlinks for the purposes of disrupting Complainant’s MICHELIN business serves as evidence of a Policy ¶ 4(b)(iii) bad faith use and registration of the domain name. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Complainant next argues that Respondent’s use of the <michelinproject.com> domain name to host a hyperlink directory is in itself evidence of Respondent’s intent to confuse Internet users into associating these revenue-generating hyperlinks with Complainant’s MICHELIN business. The Panel notes that in addition to the above referenced “Pirelli” hyperlink, there is an array of unrelated hyperlinks to various third-party websites displayed at Respondent’s website. In AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) the panel found that the existence of competing and unrelated hyperlinks on a disputed domain name’s website gave rise to an inference that the respondent had to be hosting these hyperlinks on its domain name in exchange for some kind of consideration—there would be no purpose to put the domain name to such a use otherwise. The Panel finds that the use of the confusingly similar domain name for purposes of sending Internet users through various hyperlinks evidences a Policy ¶ 4(b)(iv) bad faith attempt to misinform Internet users based on the likelihood of confusion between the <michelinproject.com> domain name’s website and the MICHELIN mark.
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <michelinproject.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: September 9, 2013
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