Michelin North America, Inc. v. binu baby
Claim Number: FA1711001758000
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 binu baby (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <cheapestmichelintires.com>, <cheapestbfgoodrichtires.com>, and <cheapestrikentires.com>, registered with Domain.com, LLC.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 10, 2017; the Forum received payment on November 10, 2017.
On November 10, 2017, Domain.com, LLC confirmed by e-mail to the Forum that the <cheapestmichelintires.com>, <cheapestbfgoodrichtires.com>, and <cheapestrikentires.com> domain names are registered with Domain.com, LLC and that Respondent is the current registrant of the names. Domain.com, LLC has verified that Respondent is bound by the Domain.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 November 14, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 4, 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@cheapestmichelintires.com, postmaster@cheapestbfgoodrichtires.com, postmaster@cheapestrikentires.com. Also on November 14, 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.
A timely Response was received and determined to be complete on November 15, 2017. Respondent also sent e-mails to the Forum, see below.
On November16 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it designs, manufactures and markets tires for several vehicle industries and is involved in vehicle racing and rallies. Complainant and its related entities have a business presence in more than 170 countries worldwide and supply a range of thousands of products. For example, Complainant has sold hundreds of millions of the famous MICHELIN, BFGOODRICH, and RIKEN tires throughout the world. Complainant’s tire production in 2014 totaled 178 million tires. The MICHELIN mark is famous. Complainant registered the MICHELIN, BFGOODRICH, and RIKEN marks in the United States in, respectively, 1970, 1978, and 1986.
According to complainant, the disputed domain names <cheapestmichelintires.com>, <cheapestbfgoodrichtires.com>, and <cheapestrikentires.com> are confusingly similar to Complainant’s marks as each domain name includes one of Complainant’s full marks, the descriptive words “cheapest” and “tires,” and the “.com” generic top-level-domain (“gTLD”). Complainant cites UDRP precedents to support its position.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use its marks. Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent inactively holds the <cheapestmichelintires.com> domain name, displays Complainant’s trademark using the <cheapestbfgoodrichtires.com> domain name, and offers tires from Complainant’s competitors using the <cheapestrikentires.com> domain name. Prior to Complainant’s cease and desist, each disputed domain name resolved to a webpage advertising the sale of “THE CHEAPEST TIRE.” Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and uses the disputed domain names in bad faith. Respondent disrupts Complainant’s business through the sales of products in direct competition with Complainant’s’ business. Respondent failed to respond to Complainant’s cease and desist. Respondent had actual knowledge of Complainant’s rights in the MICHELIN, BFGOODRICH, and RIKEN marks prior to registration of the disputed domain names. Complainant cites UDRP precedents to support its position.
B. Respondent
It is Response, Respondent states:
All the above URLs are owned by us and they are "Parked" they do not "Point" to any of the sites we own. We do not receive any internet traffic, monetary benefits from those "Parked Sites".
However we are willing to sell (Transfer ownership) of all those URLs to any interested parties. Please make us a reasonable offer and we will expedite the Transfer with in 24-48 hours. I believe we are in compliance of the ICANN rules. But if we are non-compliant in any form please let us know and we will comply. We are attaching screen shots from today (11/15/2017) clearly showing that they are "Parked".
In its e-mails to the Forum, Respondent reiterates the above statement and requests that its name be redacted from the proceedings. Since there are no provisions in the Rules that would allow redacting the Complaint or the Response, the Panel will not further discuss that request.
Complainant owns the marks MICHELIN, BFGOODRICH, RIKEN, with rights dating back to, respectively, 1970, 1978, and 1986. It uses those marks to market tires for motor vehicles.
The disputed domain names were registered on the same day in 2017.
Complainant has not licensed or otherwise authorized Respondent to use its marks.
The disputed domain names were used to resolve to websites offering products that compete with those of Complainant. Respondent had actual knowledge of Complainant’s marks.
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.
The disputed domain names <cheapestmichelintires.com>, <cheapestbfgoodrichtires.com>, and <cheapestrikentires.com> are confusingly similar to Complainant’s marks, as each domain name includes one of Complainant’s full marks, the descriptive words “cheapest” and “tires,” and the “.com” gTLD. Similar additions to a complainant’s marks have been found insufficient to defeat a test for confusingly similar pursuant to Policy ¶ 4(a)(i). See Eastman Chem. Co. v. Patel, FA 524752 (Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”). Accordingly, the Pane finds that the disputed domain names are confusingly similar to Complainant’s marks per Policy ¶ 4(a)(i).
Complainant has not given Respondent permission to use its marks in any way. There is no evidence in the file to suggest that Respondent has been legitimately affiliated with Complainant, or that it has been known by the disputed domain names prior to their registration. Relevant information in a check for rights and legitimate interests includes the WHOIS and any other information in the record regarding the nature of a complainant’s relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (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). The WHOIS identifies “binu baby / binu baby” as Respondent. Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Respondent inactively holds the <cheapestmichelintires.com> domain name. Inactively holding a disputed domain name does not evince a finding of rights and legitimate interests pursuant to Policy ¶¶ 4(c)(i) & (iii). See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Forum Apr. 12, 2007) (finding that the respondent lacked rights or legitimate interests in a confusingly similar domain name that it had not made demonstrable preparations to use since its registration seven months prior to the complaint). Further, the domain name was previously used to advertise the sale of “THE CHEAPEST TIRE”. This does not establish rights in the domain name, see below. Accordingly, the Panel finds that Respondent lacks rights and legitimate interests in the <cheapestmichelintires.com> domain name.
Respondent uses the <cheapestbfgoodrichtires.com> and <cheapestrikentires.com> domain names to host parked webpages with links to Complainant’s competitors. Use of a disputed domain name to host competing hyperlinks does not constitute rights and legitimate interests per Policy ¶¶ 4(c)(i) & (iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Further, prior to Complainant’s cease and desist, each disputed domain name resolved to a webpage advertising the sale of “THE CHEAPEST TIRE.” This does not establish rights in the disputed domain names, see below. The Panel therefore finds that Respondent lacks rights and legitimate interests in the <cheapestbfgoodrichtires.com> and <cheapestrikentires.com> domain names per Policy ¶¶ 4(c)(i) & (iii).
It its Response, Respondent has not presented any plausible explanation for its use of Complainant’s marks. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain names.
Indeed, as already noted, Respondent disrupts Complainant’s business through the sales of products in direct competition with Complainant’s’ business. The appropriation of a complainant’s mark to divert internet users to Respondent’s competing website evinces bad faith registration and use. See Fitness International, LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA1506001623644 (Forum July 9, 2015) (“Respondent uses the at-issue domain name to operate a website that purports to offer health club related services such as fitness experts, fitness models, fitness venues, exercise programs, and personal training, all of which are the exact services offered by Complainant. Doing so causes customer confusion, disrupts Complainant’s business, and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii).”). The fact that one of the disputed domain names is no longer used does not suffice to avoid a finding of bad faith use. Therefore, the Panel finds that Respondent registered and is using the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii).
Respondent makes much of the fact that it does not control the content on the parked sites and does not derive revenue from them. But this is not sufficient to prevent a finding of bad faith registration and use. According to paragraph 3.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition:
Particularly with respect to “automatically” generated pay-per-click links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (nor would such links ipso facto vest the respondent with rights or legitimate interests).
Neither the fact that such links are generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith.
In addition, Respondent registered the three disputed domain names on the same day. Each includes one of Complainant’s marks. This sort of conduct is not likely to be a mere coincidence and constitutes evidence that Respondent knew of the trademarks when it registered the dispute domain names. See Compagnie Generale des Etablissements Michelin et Michelin Recherche et Technique S.A. v. PrivacyDotLink Customer 1220239/Alex Hvorost, D2016-1991 (WIPO, Dec. 5, 2016) (finding bad faith use and registration of three domain names using three of complainant’s trademarks). Indeed, Registration of three domain names that were confusingly similar to a mark has been found to constitute a pattern of conduct indicative of bad faith registration and use pursuant to Policy ¶ 4(b)(ii), see Revlon Consumer Products Corporation v. Domain Manager, PageUp Communications, D2003-0602 (WIPO, Sept. 29, 2003).
Further, Respondent likely had actual knowledge of Complainant’s rights in the MICHELIN, BFGOODRICH, and RIKEN marks prior to registration of the disputed domain names. “[A]lthough the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith,” panels have found “actual knowledge through the name used for the domain and the use made of it.” Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014). In light of the fame and notoriety of Complainant's MICHELIN, BFGOODRICH, and RIKEN marks, the Panel does not find it plausible that Respondent could have registered the disputed domain names without actual knowledge of Complainant's rights in the mark. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). Therefore, since the circumstances or this case indicate that Respondent had actual knowledge of Complainant's marks when it registered the disputed domain names, the Panel finds bad faith also for this reason. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cheapestmichelintires.com>, <cheapestbfgoodrichtires.com>, and <cheapestrikentires.com> domain names be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: November 16, 2017
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