Michelin North America, Inc. v. Gerald Lotter / Bonfire
Claim Number: FA1512001654787
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 Gerald Lotter / Bonfire (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <michelintirepricespalmbeachfl.com>, registered with Launchpad.com 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 31, 2015; the Forum received payment on January 4, 2016.
On January 4, 2016, Launchpad.com Inc. confirmed by e-mail to the Forum that the <michelintirepricespalmbeachfl.com> domain name is registered with Launchpad.com Inc. and that Respondent is the current registrant of the name. Launchpad.com Inc. has verified that Respondent is bound by the Launchpad.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 January 4, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 25, 2016 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@michelintirepricespalmbeachfl.com. Also on January 4, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On January 29, 2016, 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 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 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 uses the MICHELIN mark in connection with its business as a tire manufacturer. Complainant has rights in the MICHELIN mark through registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,399,361, registered July 6, 1986). Respondent’s disputed domain <michelintirepricespalmbeachfl.com> is confusingly similar to Complainant’s MICHELIN mark as the domain includes the entire mark and adds the generic top-level domain (“gTLD”) “.com,” the generic term “prices,” and the geographic terms, “palm beach” and “FL.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent’s WHOIS information identifies Respondent as, “Gerald Lotter,” which indicates that Respondent is not commonly known by the disputed domain name. Complainant attempted to reach out to Respondent through correspondence and Respondent failed to respond which demonstrates a lack of rights and legitimate interests in the domain name.
Respondent registered and is using the disputed domain name in bad faith. Respondent’s use of the confusingly similar domain, to advertise tires, demonstrates bad faith. Due to the fame of Complainant’s mark Respondent must have had actual knowledge of the mark at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Michelin North America, Inc. of 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 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 in cyberspace through utilization of its official website at <michelin.com>.
Respondent is Gerald Lotter / Bonfire of Huntington Beach, CA, USA. Respondent’s registrar’s address is listed as Houston, TX, USA. The Panel notes that the disputed domain was created on or about August 7, 2015.
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(f), 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 uses the MICHELIN mark in its business as a tire manufacturer and publisher of the MICHELIN guide, which assigns restaurants a “MICHELIN STAR” rating. Complainant asserts its rights in the MICHELIN mark through registration of the mark with the USPTO (e.g., Reg. No. 1,399,361, registered July 6, 1986). Past panels have found that a complainant’s registration of a mark with the USPTO is sufficient to demonstrate rights in the registered mark. See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)). The Panel here finds that Complainant has established rights in the MICHELIN mark through registration with the USPTO pursuant to Policy ¶ 4(a)(i).
Complainant asserts Respondent’s domain <michelintirepricespalmbeachfl.com> is confusingly similar to the MICHELIN mark in which Complainant claims to have rights. The disputed domain includes the whole MICHELIN mark and adds the gTLD “.com,” the generic term “prices,” and the geographic terms, “Palm Beach” and “FL.” Prior panels have held that the inclusion of the gTLD “.com” is not relevant to an analysis of confusing similarity. See Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to the complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference"). Panels have also found that the addition of generic terms does not differentiate a domain from a mark to which the term or terms are attached. See Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end). Similarly, prior panels have found geographic terms are not distinguishing features in a disputed domain. See Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that the respondent’s domain name <net2phone-europe.com> is confusingly similar to the complainant’s mark because “the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar"). The Panel here finds that Respondent’s <michelintirepricespalmbeachfl.com> is confusingly similar to the MICHELIN mark in which Complainant asserts rights.
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
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), 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). Complainant has met this burden.
Complainant argues that Respondent has not been commonly known by the disputed domain name. In support of this argument Complainant points to WHOIS information where Respondent registered the domain using the name “Gerald Lotter.” Respondent has not provided any information. Previous panels have found a respondent is not commonly known by a disputed domain name where WHOIS information did not resemble the domain and there was no information in the record to the contrary. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). The Panel here finds that Respondent is not commonly known by the disputed domain.
Complainant argues that Respondent uses the disputed domain name to host links to competing websites. Complainant provides various documents in support of its claim. The Panel finds that such behavior by Respondent further supports Complainant’s assertion that Respondent lacks rights or legitimate interests in the disputed domain name. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
Complainant has proven this element.
Complainant contends that Respondent’s use of the confusingly similar domain, to advertise and sell tires, demonstrates bad faith. Respondent’s disputed <michelintirepricespalmbeachfl.com> domain resolves to a website for the business, “J.R’s New and Used Tires, West Palm Beach, FL.” That business claims to sell new and used tires in the state of Florida. Past panels have found bad faith where a respondent used a domain that is confusingly similar to another’s mark to host services or sell products that compete with a complainant. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). The Panel here finds that Respondent’s use of the domain demonstrates bad faith registration and use under Policy ¶ 4(b)(iv).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
As 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 <michelintirepricespalmbeachfl.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: February 12, 2016
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