Michelin North America, Inc. v. REGISTRARADS, INC.
Claim Number: FA1507001628283
Complainant is Michelin North America, Inc. (“Complainant”), represented by James M. Bagarazzi of Dority & Manning, Attorneys at Law, P.A., South Carolina, USA. Respondent is REGISTRARADS, INC. (“Respondent”), represented by Erik S. Zilinek of The Endurance International Group, Inc., Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <michelin-group.com>, registered with FastDomain Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Natalia Stetsenko as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 10, 2015; the Forum received payment on July 16, 2015.
On July 10, 2015, FastDomain Inc. confirmed by e-mail to the Forum that the <michelin-group.com> domain name is registered with FastDomain Inc. and that Respondent is the current registrant of the name. FastDomain Inc. has verified that Respondent is bound by the FastDomain 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 July 16, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 5, 2015 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 firstname.lastname@example.org. Also on July 16, 2015, 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.
A timely Response was received and determined to be complete on August 5, 2015.
On August 10, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Natalia Stetsenko as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant uses the MICHELIN mark in connection with its business as a designer and manufacturer of tires. Complainant has rights in the MICHELIN mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 892,045, registered June 2, 1970). Respondent’s <michelin-group.com> domain name is confusingly similar to Complainant’s MICHELIN mark. The addition of the generic term “group” and the generic top-level domain (“gTLD”) “.com” are not sufficient to differentiate the disputed domain from the mark.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not a licensee of Complainant, nor has Respondent been commonly known by the <michelin-group.com> domain name. Further, Respondent’s use of the domain name, to resolve to a website that displays click-through advertisements, some of which compete with Complainant or are for Complainant’s products, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has registered and is using the disputed domain name in bad faith. Respondent’s display of click-through advertisements for Complainant and Complainant’s competitors’ products is evidence of Respondent’s disruption of Complainant’s business. Respondent also had actual or constructive knowledge of Complainant’s rights in the MICHELIN mark when it registered the disputed domain name.
Respondent did not act in bad faith when registering the disputed <michelin-group.com> domain name. Regardless of bad faith, Respondent consents to transfer the disputed domain name to Complainant.
Complainant holds registration of the MICHELIN mark with the United States Patent and Trademark Office (Reg. No. 0892045, issued June 2, 1970 for tires in International Сlass 012.
Complainant holds registration of the MICHELIN mark with the United States Patent and Trademark Office (Reg. No. 1,399,361, issued July 1, 1986) for printed travel guides, maps and calendars in International Class 016.
Complainant holds registration of the MICHELIN mark with the United States Patent and Trademark Office (Reg. No. 3,329,924, issued November 6, 2007) for the travel information services of providing driving directions and addresses in International Class 039.
Complainant holds registration of the MICHELIN mark with the United States Patent and Trademark Office (Reg. No. 3,313,055, issued October 16, 2007) for personal digital assistants and databases and software relating to maps and addresses in International Class 009.
Complainant also utilizes the domain name <michelin.com> registered December 1, 1993 and directing browsers to a website for The Michelin Group.
Complainant has established trademark rights under the Policy¶ 4(a)(i) based on valid registrations and extensive use, which predate the registration of the disputed domain name. Previous panels have consistently held that registration of a mark with the USPTO is sufficient to demonstrate a complainant’s rights in a mark. See UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (finding “no difficulty” in holding that the complainant had established rights in its asserted marks for the purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO).
Respondent’s domain name previously resolved to a website that displayed Complainant’s MICHELIN trademarks, accompanied by click-through links as evidenced by Annex [E] to Complaint relating to tire offers that are not MICHELIN tires and are in fact competitors of MICHELIN® tires (such as, e.g., GOODYEAR® tires and CONTINENTAL® tires). The click-through links accessed via the website resolved by Respondent’s domain also relate to maps, travel itineraries, travel guides and directions (as may be seen in the mentioned Annex [E]).
Preliminary issue: Consent to transfer
Respondent has unilaterally consented to the transfer of the disputed domain name.
Therefore, before assessing the elements of paragraph 4(a) of the Policy the Panel must first determine whether or not it is necessary to proceed to a decision on the merits in light of Respondent’s consent to transfer.
In Shiseido Company, Limited v. BuyDomains.com, D2013-1695 (WIPO, November 14, 2013), the panel summarized the practice of previous panels in reviewing this issue as follows:
“In previous cases where the respondent unilaterally consented to transfer of the disputed domain name, the UDRP panels have approached the issue depending on the specific circumstances of the dispute. As analyzed by the panel in The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132, the UDRP panels, when faced with a ‘unilateral consent to transfer’, have taken three different approaches. Some UDRP panels have ordered transfer of the disputed domain name on the basis of a unilateral consent to transfer of the respondent alone, without reviewing the facts supporting the claim (see Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207; The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132); in some cases, the panel found that consent to transfer means that the three elements of paragraph 4 (a) of the Policy are deemed to be satisfied, so that transfer should be ordered on that basis (Qosina Corporation v. Qosmedix Group, WIPO Case No. D2003-0620; DESOTEC N.V. v. JACOBI CARBONS AB, WIPO Case No. D2000-1398). Still other UDRP panels have proceeded to analyze whether the evidence submitted satisfies the three elements of the Policy (e.g. Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320; Ticketmaster Corporation v. Global Access, WIPO Case No. D2007-1921; Brownells, Inc. v. Texas International Property Associates, WIPO Case No. D2007-1211; Sassybax, L.L.C. v. Texas International Property Associates, WIPO Case No. D2007-1190; see also Citigroup Inc. v. Texas Int’l Prop. Assocs., NAF Claim No. 1210904).”
In respect of the third approach providing for analyzing whether the three elements of the Policy have been met, previous UDRP panels have also noted that where a respondent consents to transfer a panel may decide that Complainant has not implicitly consented to the transfer unless a panel issues a decision based on the merits. This approach recognizes that “consenting-to-transfer” may be but one way for cybersquatters to avoid adverse findings against them. In Graebel Van Lines, Inc. v. Texas Int’l Prop. Assocs., FA 1195954 (Nat. Arb. Forum July 17, 2008), the panel stated:
Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.
Thus, in view of the circumstances of the present case, the Panel sees several reasons to proceed with the review of the case on the merits. First of all, Respondent’s unilateral consent to transfer of the Domain Name does not mean that the three elements of paragraph 4(a) of the Policy are deemed satisfied. Respondent expressly denied that it registered the Domain Name in bad faith, which follows from his denial of bad faith in response. Thus, the consent was not unconditional in this respect.
Furthermore, Complainant has not implicitly consented to the transfer unless a panel issues a decision based on the merits.
Finally, the Panelist agrees with previous UDRP Panels that “consenting-to-transfer” may be but one way for cybersquatters to avoid adverse findings against them. See Graebel Van Lines, Inc. v. Texas Int’l Prop. Assocs., FA 1195954 (Nat. Arb. Forum July 17, 2008). The latter is particularly relevant for cases involving well-known trademarks.
Therefore, in light of the above, the Panel finds that in this case it is appropriate to address the merits.
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.
Respondent’s <michelin-group.com> domain fully incorporates Complainant’s registered MICHELIN trademark and adds the generic word “group,” a hyphen, and the gTLD “.com” to the MICHELIN mark. Previous panels have found confusing similarity where a generic term is added to a mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Panels have also found that hyphens and top level domains do not affect an analysis of confusing similarity. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy).
The Panel thus finds that Respondent’s disputed domain name is confusingly similar to the MICHELIN mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that Respondent has not been commonly known by the disputed domain name. Complainant also claims that Respondent is not Complainant’s licensee and WHOIS information lists Respondent as “REGISTRARADS, INC.” Taking into account decisions of previous UDRP panels, it is held that Respondent is not commonly known by a disputed domain name per Policy ¶ 4(c)(ii) based on WHOIS and other information, such as a lack of licensee - licensor relationship. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Furthermore, Respondent appears to be using the <michelin-group.com> to host a website that displays advertisements for Complainant’s products and products of Complainant’s competitors (see Annex E).
The Panel finds that this use of the disputed domain name does not constitute 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), since displaying of competing and non-competing advertisements is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and 4(c)(iii). This approach has been followed consistently by previous panels holding that a respondent’s use of a confusingly similar domain name to host a website displaying competing advertisements is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products.)
Respectively, Complainant has met a prima facie case that Respondent does not have rights and legitimate interests in the disputed domain name and has satisfied the second element of the Policy.
According to Complainant, Respondent had actual and/or constructive knowledge of Complainant's rights in the MICHELIN mark. Complainant also argues that Respondent's offering of Complainant's own products and competing products at the resolving website indicates that Respondent had actual knowledge of Complainant's mark and rights.
Complainant has brought sufficient evidence that its MICHELIN trademarks have been registered long before Respondent registered the Domain Name. Complainant’s MICHELIN trademark has been known to consumers worldwide for a long period of time, and the Panel agrees with the Complainant’s contention that the MICHELIN trademark is among the most famous trademarks in the industry and enjoys international recognition.
Despite of Respondent’s denial of bad faith, it is not possible to believe that Respondent was unaware of the MICHELIN trademark when it registered the Domain Name, despite of its allegation that it did not know that Complainant held any rights to the Michelin Group name (see Heineken Brouwerijen B.V. v. Mark Lott, WIPO Case No. D2000-1487, where finding of bad faith was given in light of the Complainant’s international fame precluding innocent registration of a confusingly similar domain name).
The Panel therefore finds that Respondent had actual knowledge of Complainant's trademark rights, and therefore determines that Respondent registered the disputed domain name in bad faith under 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 "actual knowledge of Complainant's mark when registering the disputed domain name").
Furthermore, Respondent’s display of click through advertisements can disrupt Complainant’s business by diverting customers to products and services provided by Complainant’s competitors, since apparently Internet users would associate the domain name and search results with the Michelin Group of companies. Respectively, the Panel finds the registration and use of the disputed domain name to advertise competitors goods and/or services to constitutes bad faith. See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
The Panel thus finds that Complainant has satisfied the requirement of paragraph 4(a)(iii) of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <michelin-group.com> domain name be TRANSFERRED from Respondent to Complainant.
Natalia Stetsenko, Panelist
Dated: August 24, 2015
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