Michelin North America, Inc. v. Charles Bienvenu / Got Domains 4 Sale, LLC
Claim Number: FA1602001661808
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 Charles Bienvenu / Got Domains 4 Sale, LLC (“Respondent”), Louisiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gotmichelin.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 19, 2016; the Forum received payment on February 22, 2016.
On February 19, 2016, Godaddy.Com, Llc confirmed by e-mail to the Forum that the <gotmichelin.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 February 22, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 14, 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@gotmichelin.com. Also on February 22, 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.
A timely Response was received and determined to be complete on March 8, 2016.
On March 10, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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.
A. Complainant
1. Complainant uses the MICHELIN mark in connection with the design, manufacture, and marketing of tires for several vehicle industries. Complainant has registered the MICHELIN mark with the likes of the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 892,045, registered June 2, 1970), establishing rights in the mark.
2. Respondent’s <gotmichelin.com> domain name is confusingly similar as it incorporate the MICHELIN mark fully, while adding the descriptive term “got” along with the generic top-level domain (“gTLD”) “.com.”
3. Respondent has no rights or legitimate interests in the <gotmichelin.com> domain name. Respondent is not commonly known by the disputed domain name, nor is Respondent affiliated with Complainant as a licensee or otherwise.
4. Additionally, Respondent has failed to make any active use of the domain since registering it, there has been no evidence of any bona fide offering of goods or services or any legitimate noncommercial or fair use.
5. Respondent registered the <gotmichelin.com> domain name in bad faith. Respondent’s inactive holding of the domain name and actual or constructive knowledge of the MICHELIN mark demonstrates registration and use in bad faith.
B. Respondent
Respondent concedes that Complainant has rights in the MICHELIN mark.
Complainant’s rights to MICHELIN mark are limited to its business in the automotive tire and racing and rally industries. Respondent intends to use the domain name once awarded a Michelin star for its restaurant business.
Complainant’s allegations do not rise above bald assertions, therefore, Complainant has failed to establish that Respondent has registered the disputed domain name in bad faith.
C. Additional Submissions
Complainant has filed an Additional Submission in which it points out that its MICHELIN mark is not used just with respect to tire sales, but also with respect to its well know Michelin Guide.
Respondent states he is not using the domain name presently and would only do so if his restaurant is awarded a Michelin star.
Complainant holds trademark rights for the MICHELIN mark. Respondent’s domain name is confusingly similar to Complainant’s MICHELIN mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <gotmichelin.com> domain name, and that Respondent registered and uses the domain name 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.
Complainant uses the MICHELIN mark in connection with the design, manufacture, and market of tires for several vehicle industries and to promote the Michelin Guide. Complainant has registered the MICHELIN mark with the USPTO (e.g., Reg. No. 892,045, registered June 2, 1970) which is evidence of Policy ¶ 4(a)(i) rights in the mark. See Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that the complainant had sufficiently established rights in the SKUNK WORKS mark through its registration of the mark with the USPTO).
Next, Complainant argues that Respondent’s <gotmichelin.com> domain name is confusingly similar to its MICHELIN mark as it incorporate the mark fully, while adding the generic/descriptive term “got” along with the gTLD suffix “.com.” Where a generic/descriptive term is added to a mark, confusing similarity exists where the domain name in question retains the salient feature of the mark. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”). Further, the addition of a gTLD does not overcome a finding of confusing similarity as gTLDs are required when registering domains. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Accordingly, this Panel agrees that Respondent’s <gotmichelin.com> domain name is confusingly similar to the MICHELIN mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <gotmichelin.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <gotmichelin.com> domain name. Complainant urges that Respondent is not commonly known by the <gotmichelin.com> domain name, nor is Respondent affiliated with Complainant as a licensee or otherwise. Respondent does not dispute these assertions. Thus, the Panel concludes Respondent is not commonly known by the <gotmichelin.com> domain name within the meaning of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Additionally, Complainant argues that Respondent has failed to make any active use of the domain since registering it, and there has been no evidence of any bona fide offering of goods or services or any legitimate noncommercial or fair use associated with the domain name. Indeed, Respondent concedes he is not making an active use of the domain name, waiting until some indeterminate point in the future when he might receive a Michelin star. A failure to make an active use of a domain name has been found to be insufficient to establish rights under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Therefore, the Panel holds that Respondent has not demonstrated any bona fide offering of goods or services under Policy ¶ 4(c)(i) or any legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and is using the <gotmichelin.com> domain name in bad faith. Complainant maintains that Respondent has not made an active use of the <gotmichelin.com> domain name and has made no demonstrable preparations to use it. This is undisputed and has been found to constitute bad faith. See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith).
Complainant asserts that its trademark registrations for the MICHELIN mark existed well before the registration of the <gotmichelin.com> domain name. Due to the fame of Complainant's mark, it is apparent to the Panel that Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the <gotmichelin.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant's mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration").
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gotmichelin.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: March 14, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page