Michelin North America, Inc. v. RONI YOUSEFI
Claim Number: FA1408001575873
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 RONI YOUSEFI (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <michelinrunflattires.com>, registered with ENOM, INC.
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.
Paul M. DeCicco, 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 21, 2014, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <michelinrunflattires.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, 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 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 e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@michelinrunflattires.com. Also on August 21, 2014, 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 September 16, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant holds registration of the MICHELIN mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 892,045 registered June 2, 1970). Complainant uses the mark in connection with tire manufacturing and related products and services.
The <michelinrunflattires.com> domain name is confusingly similar to the MICHELIN mark as the added terms “run,” “flat,” and “tires” all relate to Complainant’s business.
Respondent lacks rights in the <michelinrunflattires.com> domain name. First, Respondent is not commonly known by the disputed domain name as demonstrated by the WHOIS information. Further, Respondent uses the disputed domain name to promote its own website offering competing services and links. Such use is not protected by Policy ¶¶ 4(c)(i) or (iii).
Respondent is in violation of Policy ¶ 4(b)(iii) bad faith as Respondent’s efforts as a competing tire distributor disrupts Complainant’s own efforts. In addition, Respondent’s registration of the disputed domain name with actual or constructive knowledge of Complainant rights in the mark is further evidence of bad faith under Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the MICHELIN mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the MICHELIN trademark.
Respondent uses the at-issue domain name to address a website that advertises “Four Wheel Alignment Special only $65,” links to tires for sale, and provides users with a store overview including hours and location..
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO trademark registration for MICHELIN demonstrates its rights in such mark for the purposes of Policy ¶4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”)
In forming the at-issue domain name Respondent adds the terms “run,” “flat,” and “tires” to Complainant’s MICHELIN trademark and then appends the top-level domain name “.com” to the resulting string. These alterations to Complainant’s MICHELIN trademark are insufficient to distinguish the at-issue domain name from the trademark for the purposes of the Policy. Therefore, the Panel finds that the <michelinrunflattires.com> domain name is identical to Complainant’s MICHELIN mark. See Cargill, Incorporated v. Domain Privacy Grp., FA 1501652 (Nat. Arb. Forum Jul. 5, 2013) (determining that the disputed domain name, which contains the complainant’s mark, along with two generic terms and a generic top-level domain, is the equivalent of the mark itself for the purposes of Policy ¶ 4(a)(i)).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and as discussed below there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “RONI YOUSEFI” and the record before the Panel contains no evidence that tends to prove that Respondent is otherwise commonly known by the <michelinrunflattires.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain names pursuant for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the at-issue domain name).
Furthermore, Respondent uses the at-issue domain name to address a website advertising a tire business and offering products competing with those of Complainant. Using the domain name in this way is neither a bona fide offering of goods and services under Policy ¶4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶4(c)(iii). See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name); see also United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”)
Given the forgoing, Complainant satisfies its initial burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The domain name was registered and used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above Respondent uses the at-issue domain name to address a website concerning services and products which compete with those of Complainant. The at-issue domain name redirects users to <usedrunflattires.com> where a tire business is promoted and there are links to tires for sale, including links to competitor tire manufacturers. Such use of the at-issue domain name is surely disruptive to Complainant’s business and demonstrates Respondent’s bad faith pursuant to Policy ¶4(b)(iii). See Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005)(“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii).”)
Additionally, Respondent registered the <michelinrunflattires.com> domain name knowing that Complainant had trademark rights in the MICHELIN mark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s addition of suggestive terms to the MICHELIN mark in forming the at-issue domain name. Given the forgoing, it is clear that Respondent registered the at-issue domain name precisely to improperly exploit the goodwill associated with Complainant’s trademark, rather than for some benign reason. Respondent’s prior knowledge of Complainant's MICHELIN trademark further indicates that Respondent registered and used the <michelinrunflattires.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <michelinrunflattires.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: September 17, 2014
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