Michelin North America, Inc. v. Ross Blankenship
Claim Number: FA1705001730937
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 Ross Blankenship (“Respondent”), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <michelintiresforsale.com>, <bfgoodrichtiresforsale.com>, and <uniroyaltiresforsale.com>, registered with 1&1 Internet SE.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 10, 2017; the Forum received payment on May 10, 2017.
On May 12, 2017, 1&1 Internet SE confirmed by e-mail to the Forum that the <michelintiresforsale.com>, <bfgoodrichtiresforsale.com>, and <uniroyaltiresforsale.com> domain names are registered with 1&1 Internet SE and that Respondent is the current registrant of the names. 1&1 Internet SE has verified that Respondent is bound by the 1&1 Internet SE 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 May 17, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 6, 2017 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@michelintiresforsale.com, postmaster@bfgoodrichtiresforsale.com, postmaster@uniroyaltiresforsale.com. Also on May 17, 2017, 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 June 8, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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 names be transferred from Respondent to Complainant.
A. Complainant
i) Complainant, Michelin North America Inc., is a tire manufacturer and retailer with headquarters based in Greenville, South Carolina, USA. In connection with this business, Complainant uses the MICHELIN, BFGOODRICH, and UNIROYAL marks to promote its goods and services. Complainant has rights in the marks based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. MICHELIN—Reg. No. 892,045, registered June 2, 1970; BFGOODRICH—Reg. No. 1,087,694, registered Mar. 21, 1978; UNIROYAL—Reg. No. 756,434, registered Sept. 10, 1963). The disputed domain names are confusingly similar to Complainant’s marks as each contains a mark in its entirety and merely appends the descriptive phrase “tiresforsale” and the generic top-level-domain (“gTLD”) “.com.”
ii) Respondent lacks rights and legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names and Complainant has not authorized Respondent to register domain names reflecting its marks. Further, Respondent failed to use <michelintiresforsale.com>, <bfgoodrichtiresforsale.com>, and <uniroyaltiresforsale.com> in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, the domains collectively redirect users to a third-party website that sells products in competition with Complainant’s business.
iii) Respondent registered and uses the <michelintiresforsale.com>, <bfgoodrichtiresforsale.com>, and <uniroyaltiresforsale.com> domain names in bad faith. Respondent attracts Internet users seeking Complainant and diverts them to Respondent’s own website for commercial gain through the use of Complainant’s marks. Respondent uses this unfair attraction to sell competing tire products. Finally, Respondent had actual or constructive knowledge of Complainant’s rights in the marks at the time Respondent registered the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that <michelintiresforsale.com>, <bfgoodrichtiresforsale.com>, and <uniroyaltiresforsale.com> were collectively registered on July 26, 2008.
Complainant established that it had rights in the mark contained in the disputed domain names. Each of the disputed domain names is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain names.
Respondent registered and used the disputed domain names 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(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 (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 asserts rights in the marks based upon registration with the USPTO (e.g. MICHELIN—Reg. No. 0,892,045, registered June 2, 1970; BFGOODRICH—Reg. No. 1,087,694, registered Mar. 21, 1978; UNIROYAL—Reg. No. 0,756,434, registered Sept. 10, 1963). Registration with the USPTO is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). As such, the Panel finds Complainant has rights in the MICHELIN, BFGOODRICH, and UNIROYAL marks for the purposes of Policy ¶ 4(a)(i).
Respondent’s domain names are confusingly similar to Complainant’s marks as each contains a mark in its entirety and merely appends the descriptive phrase “tiresforsale” and the gTLD “.com.” Past panels have found the addition of descriptive phrases relevant to a complainant’s business coupled with a gTLD do not adequately distinguish the domain name per Policy 4(a)(i). See Gillette Co. v. RFK Assocs., FA 492867 (Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). The Panel therefore finds Respondent’s domain names to be confusingly similar to Complainant’s marks per Policy ¶ 4(a)(i).
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), and 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 (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); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006)
(“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain
names.”).
Complainant contends Respondent is not commonly known by the <michelintiresforsale.com>, <bfgoodrichtiresforsale.com>, and <uniroyaltiresforsale.com> domain names. Where a Response is lacking, WHOIS information can substantiate a finding that a respondent is not commonly known by a disputed domain name. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name); see also Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information of the record lists the Registrant for all of the disputed domain names as “Ross Blankenship.” Complainant states that it has not authorized Respondent to use the marks for any purpose, and Respondent is not licensed to use the marks. As such, the Panel finds that Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).
Next, Complainant argues Respondent failed to use the <michelintiresforsale.com>, <bfgoodrichtiresforsale.com>, and <uniroyaltiresforsale.com> domain names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, the domains collectively resolve to a third-party website that sells products in competition with Complainant’s business (Screenshots of the <statestreettire.com> webpage that the disputed domain names resolve to). Use of a disputed domain name to compete with a complainant indicates a lack of rights and legitimate interests per Policy ¶¶ 4(c)(i) & (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Here, Complainant argues, Respondent uses domain names that are confusingly similar to Complainant’s marks to resolve to a webpage that offers various brands of tires for sale, including Complainant’s (Screenshots of the resolving website for the disputed domain names). Complainant states that it has not authorized Respondent to engage in the sale of its products. The Panel therefore finds Respondent lacks rights and legitimate interests in <michelintiresforsale.com>, <bfgoodrichtiresforsale.com>, and <uniroyaltiresforsale.com>.
Complainant argues Respondent registered and uses the <michelintiresforsale.com>, <bfgoodrichtiresforsale.com>, and <uniroyaltiresforsale.com> domain names in bad faith. Respondent uses the disputed domain names to redirect users to a third-party website that contains products of both Complainant and Complainant’s competition. Complainants can evince bad faith where disputed domain names are used to sell the products of, and compete with, a complainant’s business for a respondent’s commercial gain. See Fanuc Ltd v. Mach. Control Servs., FA 93667 (Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Complainant contends that Respondent trades on the goodwill associated with Complainant’s marks. The Panel agrees and finds that Respondent’s use of the disputed domain names to redirect users for its own commercial gain provides sufficient evidence of bad faith per Policy ¶ 4(b)(iv).
Last, Complainant contends Respondent had actual or constructive knowledge of Complainant’s rights in the marks at the time it registered the disputed domain names. Past panels have found bad faith per Policy ¶ 4(a)(iii) where a respondent’s use of a disputed domain name demonstrates actual, but not constructive, notice of a complainant’s rights in a mark. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Here, Complainant contends, Respondent purchased domains containing three of Complainant’s distinct marks and used them to resolve to a webpage offering Complainant’s goods as well as the goods of Complainant’s customers. As such, the Panel agrees with Complainant and finds further evidence of Respondent’s bad faith per 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 <michelintiresforsale.com>, <bfgoodrichtiresforsale.com>, and <uniroyaltiresforsale.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: June 12, 2017
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