Michelin North America, Inc. v. Onik Filipian
Claim Number: FA1110001410373
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 Onik Filipian (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <michelintyre.com>, registered with GoDaddy.com, Inc.
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 electronically on October 5, 2011; the National Arbitration Forum received payment on October 6, 2011.
On October 5, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <michelintyre.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 7, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 27, 2011 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@michelintyre.com. Also on October 7, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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 2, 2011, 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 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 makes the following assertions:
Complainant is the owner of the MICHELIN trademark, on file with the United States Patent and Trademark Office (“USPTO”) as Reg. No. 892,045, registered June 2, 1970.
The MICHELIN mark is used by Complainant in connection with the design, manufacture and marketing of tires, as well as of goods and services relating to vehicle races and rallies.
Respondent registered the disputed <michelintyre.com> domain name on February 20, 2005.
The disputed domain name previously resolved to a website which displayed links to websites that offered goods and services similar to those of Complainant.
The disputed domain name currently resolves to an inactive website.
Respondent’s <michelintyre.com> domain name is confusingly similar to Complainant’s MICHELIN mark.
Respondent is not commonly known by the disputed domain name.
Respondent does not have any rights to or legitimate interests in the domain name <michelintyre.com>.
Respondent both registered and uses the <michelintyre.com> domain name in bad faith.
B. 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."
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 a respondent’s failure to respond allows all reasonable 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.”
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.
Complainant has rights in the MICHELIN trademark under Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that a complainant had established rights to the MILLER TIME mark through its national trademark registrations); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
The <michelintyre.com> domain name is confusingly similar to Complainant’s MICHELIN trademark under Policy ¶ 4(a)(i). The domain name consists of Complainant’s entire mark, plus the British English spelling of the descriptive term “tyre,” which relates to Complainant’s business, and the generic top-level domain (“gTLD”) “.com.” These additions to the mark made in forming the contested domain name fail to distinguish the domain name from the mark under the standards of the Policy. See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that domain names incorporating a complainant’s entire EXPERIAN mark, and adding the term “credit,” rendered the resulting domain names confusingly similar to that complainant’s mark); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described a complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish a respondent’s <duracellbatteries.com> from that complainant’s DURACELL mark). Finally, see Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), and Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007), in each of which the addition of a gTLD to the mark of another in forming a domain name was found not to avoid a finding of confusing similarity.
The Panel therefore finds that Complainant has established its rights in the MICHELIN trademark and the confusing similarity of the <michelintyre.com> domain name to that mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks both rights to and legitimate interests in the disputed domain name. Once Complainant makes out a prima facie showing in support of this claim, the burden shifts to Respondent to prove that it has 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 first make out a prima facie case that a respondent lacks rights and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii), whereupon the burden shifts to that respondent to show that it does have rights to or legitimate interests in that domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if a complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”).
Complainant has satisfied its prima facie burden under this head of the Policy. Therefore, and because Respondent has failed to submit a response to the Complaint filed in this proceeding, we are entitled to conclude that Respondent lacks rights to and legitimate interests in the <michelintyre.com> domain name. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for a panel to draw adverse inferences from a respondent’s failure to reply to a UDRP complaint); see also Wild West Domains, Inc. v. Jung, D2004-0243 (WIPO May 18, 2004):
It can be inferred that by defaulting Respondent showed nothing else but an absolute lack of interest in the Domain Name . . . .
Nonetheless we will examine 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 Respondent has rights to or legitimate interests in the <michelintyre.com> domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny, that Respondent is not commonly known by the disputed domain name. Moreover, the WHOIS record for the <michelintyre.com> domain name lists the domain name registrant only as “Onik Filipian,” which does not resemble the contested domain name. On this record, we conclude that Respondent has not been commonly known by the contested domain name so as to have demonstrated that it has rights to or legitimate interests in the domain within the meaning of Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), and Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), both finding from the record that a respondent was not commonly known by a disputed domain name so as to have rights to or legitimate interests in the domain within the meaning of Policy ¶ 4(c)(ii).
We next observe that Complainant asserts, without objection from Respondent, that Respondent’s prior use of the disputed domain name, which involved the display of links resolving to the websites of businesses competing with that of Complainant, was neither a bona fide offering of goods or services under Policy ¶4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). We concur. See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005), and TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002), both panels holding that the use of a domain name, which was confusingly similar to the mark of a complainant, to display links to the websites of businesses competing with that of such complainant did not demonstrate that a respondent had rights to or legitimate interests in the disputed domain.
Similarly, Complainant contends, again without objection from Respondent, that Respondent’s current, inactive use of the <michelintyre.com> domain name is likewise not a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii). Again we concur. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004):
Respondent is wholly appropriating Complainant’s mark and is not using the … domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).
See also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that a respondent had no rights to or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name).
The Panel thus finds that Policy ¶ 4(a)(ii) is satisfied.
Respondent’s registration and previous use of the disputed <michelintyre.com> domain name, which is confusingly similar to Complainant’s MICHELIN trademark, to divert Internet users to the websites of Complainant’s business competitors was by its nature disruptive to Complainant’s business. This conduct by Respondent thus stands as evidence of bad faith registration and use of the domain under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a domain name confusingly similar to the mark of another to attract Internet users to a website containing links to the websites of a complainant’s commercial competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used a disputed domain name to operate a commercial search engine with links to the websites of a complainant’s business competitors).
And, Respondent’s current inactive use of the disputed domain name also demonstrates bad faith under Policy ¶ 4(a)(i). See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000):
[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.
See also 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 a disputed domain name satisfies the requirements of ¶ 4(a)(iii) of the Policy).
For these reasons, the Panel finds that Complainant has satisfied its obligations of proof under Policy ¶ 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 <michelintyre.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 3, 2011
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