Michelin North America, Inc. v. Austin Fleming
Claim Number: FA1408001575871
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 Austin Fleming (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <michelinaoliveoil.com>, registered with GODADDY.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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 19, 2014; the National Arbitration Forum received payment on August 21, 2014.
On August 20, 2014, GODADDY.COM, LLC confirmed by email to the National Arbitration Forum that the <michelinaoliveoil.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.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 August 21, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 10, 2014 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@michelinaoliveoil.com. Also on August 21, 2014, 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 September 16, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin 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
Complainant manufactures tires and publishes travel guides, both using the MICHELIN trademark. Complainant has used its mark for many years, and its MICHELIN rating system for restaurants is known throughout the world. Complainant’s MICHELIN mark is registered with the U.S. Patent & Trademark Office. Complainant contends that the disputed domain name <michelinaoliveoil.com> is confusingly similar to its MICHELIN mark, appending the generic words “a”, “olive”, and “oil” thereto, presumably to associate the domain name with Complainant’s business of restaurant ratings.
Complainant contends further that Respondent has no rights or legitimate interests in the disputed domain name. In support thereof, Complainant states that the domain name resolves to a website that states merely “Sorry! This site is not currently available.” Complainant asserts that Respondent is not using the domain name in connection with a bona fide offering of goods or services, nor for a legitimate noncommercial or fair use, and that Respondent is not commonly known by the domain name.
Finally, Complainant contends that the domain name was registered and is being used in bad faith. Complainant asks the Panel to infer that Respondent knew of Complainant’s rights because the mark is registered in the United States and is recognized worldwide, and because Respondent must have intended for users to associate the domain name with Complainant. Complainant also points to Respondent’s passive holding of the domain name as evidence of bad faith registration and use.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights, and that Respondent lacks rights or legitimate interests in respect of the disputed domain name. The Panel further finds that Complainant has failed to prove that the disputed domain name was registered and is being used 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:
(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.”).
The disputed domain name incorporates Complainant’s registered mark MICHELIN, together with the words “a olive oil” and the “.com” top-level domain. It can also be read as “Michelina olive oil,” which in the Panel’s view is a more logical and likely reading. The word “olive” would normally be preceded by “an” rather than “a”. Furthermore, while Michelin is a French name, Michelina is Italian, and olive oil is more closely associated with Italy than France. Yet the Panel is mindful of the fame of the MICHELIN mark and the plausible connection between olive oil, a product often associated with gourmet cooking, and Complainant’s well-known rating system for fine restaurants.
Where a domain name incorporates a trademark in its entirety, adding only common, descriptive or non-distinctive elements, it normally will be found to be confusingly similar to the mark. See, e.g., Compagnie Générale des Etablissements Michelin v. Christian Viola, D2012-2102 (WIPO Dec. 24, 2012) (finding <michelinfoodguide.com> confusingly similar to MICHELIN). The Panel so finds.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant’s mark in its entirety, and Respondent does not appear to have made any active use of the name. Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain names were registered and have been used in bad faith. The Policy generally requires that Respondent’s bad faith must be targeted at Complainant or its mark in some way. See, e.g., Kanal, Inc. v. Domain Admin, FA 1478238 (Nat. Arb. Forum Feb. 12, 2013); InnoGames GmbH v. Buydomains.com, Inventory Management, D2011-0085 (WIPO Mar. 28, 2011). Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, including the requirement of registration and use in bad faith. See, e.g., Castlemaine Perkins Pty Limited v. Jean Romain Colombani, Colombani Web Holding, D2007-1038 (WIPO Sept. 25, 2007).
Targeting may be inferred where a domain name is so closely connected with a well-known trademark that its very use suggests opportunistic bad faith. See, e.g., Chevron Intellectual Property LLC v. Tim Bruce, FA 1544867 (Nat. Arb. Forum Mar. 26, 2014) (finding opportunistic bad faith in registration of <texaco-oil-us.com>). But while the MICHELIN trademark is certainly sufficiently famous, the connection between the <michelinaoliveoil.com> domain name and the MICHELIN trademark (as described above in the context of confusing similarity) is not so close that the Panel is willing to infer, without more, that the registration must have been targeted at Complainant or its mark. See, e.g., KERING v. c/o WHOIStrustee.com Limited / Registrant of ppr.xn--fiq228c5hs, FA 1570401 (Nat. Arb. Forum Aug. 22, 2014) (declining to infer that registration of <ppr.中文网> was targeted at Complainant or its PPR mark).
There is no evidence here that Respondent has sought to sell or profit from the domain name or to create confusion with Complainant or its mark, nor any evidence that Respondent has targeted Complainant or its mark. In short, there is no evidence of Respondent’s intentions, good or bad. The burden of proving bad faith falls upon Complainant, and the Panel finds that this burden has not been met.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <michelinaoliveoil.com> domain name REMAIN WITH Respondent.
David E. Sorkin, Panelist
Dated: September 17, 2014
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